Brooks Peterson v. Christina Bruning
Claim Number: FA1305001497559
Complainant is Brooks Peterson (“Complainant”), Minnesota, USA. Respondent is Christina Bruning (“Respondent”), represented by Tonya J. Gisselberg, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acrosscultures.org>, registered with GoDaddy.com, LLC.
The undersigned Daniel B. Banks, Jr., certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2013; the National Arbitration Forum received payment on May 1, 2013.
On May 2, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <acrosscultures.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@acrosscultures.org. Also on May 7, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 20, 2013.
A timely Additional Submission was received from Complainant and determined to be complete on May 23, 2013.
A timely Additional Submission was received from Respondent and determined to be complete on May 28, 2013.
On May 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Regarding Respondent’s website at the <acrosscultures.org> domain name:
a. Respondent is using the <acrosscultures.org> domain name to operate a website that ostensibly competes with Complainant's offerings by redirecting Internet users to a competing website.
b. The site lists biographies of collaborators, several of whom tout their international culture backgrounds or experiences.
c. The site’s mission statement on its "About" page states, "The focus of Across Cultures is to introduce participants to various training, philosophies, trends, and practices that enhance the leadership potential of women."
d. The language throughout the website plainly contradicts Respondent's claim that it does not use Complainant's mark to offer a form of teaching and training in cross-cultural activities, and instead suggests to consumers that Respondent does indeed compete with Complainant in offering multicultural programs and services.
i. Respondent's assertion that its use of Complainant's mark is in a distinct category of services because Respondent uses the mark for "a cultural exchange program arranging cultural exchanges between individuals and groups in various countries" does not stand because this fits fully within the type of cultural programs Complainant offers.
2. Policy ¶ 4(a)(i)
a. Complainant owns an active trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ACROSS CULTURES mark (Reg. No. 4,205,098 filed January 7, 2012, registered September 11, 2012) for use in connection with educational services, materials and workshops in the field of multiculturalism for individuals and groups engaged in global business and activities.
b. Complainant has also established common law rights in the ACROSS CULTURES mark.
i. Complainant provides evidence of two additional USPTO registrations that it once held, but inadvertently allowed to lapse (Reg. No. 2,450,733 registered May 15, 2001) for the ACROSS CULTURES mark; (Reg. No. 2,249,464 registered June 1, 1999) for the ACROSS CULTURES mark & design.
ii. Complainant has continuously used the mark in commerce since 1989.
iii. Complainant has continuously operated its business on the Internet at <acrosscultures.com>, <acrosscultures.net>, and other domain names derivative of the ACROSS CULTURES mark starting in 1997.
c. The <acrosscultures.org> domain name is identical to Complainant’s mark, as the mere addition of a generic top-level domain (“gTLD”) is insufficient to distinguish the domain name.
3. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the <acrosscultures.org> domain name, as evidenced by Respondent’s “intentional abandonment” of its website housed there and Respondent’s true name, “Christina Bruning.”
b. Respondent has never sought a license or permission (written or other) to use Complainant's ACROSS CULTURES mark in the <acrosscultures.org> domain name.
c. Complainant has never granted Respondent authorization in writing or otherwise to use Complainant's mark in any way.
d. Respondent has failed to make an active use of the website housed at the disputed domain name since 2006, considering that the content of its site has remained identical over that time.
i. The website at <acrosscultures.org> does not support a claim of fair commercial or noncommercial use in Trademark Class 35, 41 or any other due to the fact that it is abandoned.
e. USPTO records indicate that Respondent (under the name "Christina Bruning" or any other name) holds no trademarks for "ACROSS CULTURES" or any other mark in any class whatsoever (including International Trademark Class 35, which Respondent purports to do business in).
f. Respondent's website contains much language and description that appears to compete with Complainant's business. Such competing use is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
4. Policy ¶ 4(a)(iii)
a. Respondent registered the <acrosscultures.org> domain name with actual or constructive knowledge of Complainant’s rights in the ACROSS CULTURES mark due to Complainant’s registrations of the mark on file with the USPTO at the time of initial registration.
i. Complainant's ACROSS CULTURES trademark also already occupied the two far more popular top-level domains (TLDs) ".com" and ".net."
b. Respondent’s site includes a mailing list registration area which allows users to check a box that says “Yes, please send me reminders about Across Cultures programs.” This disrupts Complainant’s business by diverting customers from Complainant to Respondent.
c. Respondent’s operation at an identical domain name and its offering of obviously similar multicultural program content at its website will inevitably confuse and divert some Internet users, thereby disrupting Complainant’s business in bad faith.
d. Respondent has not made any updates to its site since 2006, and the site now appears to be abandoned.
e. Respondent’s site includes a donation page, claiming its cross-cultural programs “thrive” on “donations.” Respondent’s use of an identical domain name to collect donations represents attraction for commercial in bad faith.
B. Respondent
1. Respondent registered the <acrosscultures.org> domain name on July 31, 2004.
2. The <acrosscultures.org> domain name is not identical or confusingly similar to Complainant’s ACROSS CULTURES trademark, because Respondent uses the resolving website to provide only information about its programs on its site and does not offer any good or services.
a. Respondent cites trademark case law from the U.S. federal courts.
3. Respondent’s use of the disputed domain has created no actual confusion with Complainant’s mark.
a. No one has ever contacted Respondent looking for Complainant or its website.
4. Complainant’s inaction in allowing its trademark registrations to lapse and its lack of awareness of Respondent’s registration of the <acrosscultures.org> domain name indicate Complainant’s failure to monitor its marks.
5. Respondent is making a legitimate noncommercial use of the disputed domain, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
a. Respondent uses the disputed domain to provide information on its Across Cultures program, a nonprofit business and cultural exchange program dedicated to empowering women in the Baltic States and in the Puget Sound Area of Washington State.
b. It is customary in the non-profit circle to host program websites beyond the actual program dates for the delegates, sponsors, and supporters to reference, so Respondent’s non-use of its site since 2006 does not negate Respondent’s rights in the contested domain.
i. Respondent’s website provides credibility to the program, delegates and outcomes, enabling future projects.
ii. Respondent made plans in February 2013 to update its website, but put those plans on hold after being contacted by Complainant.
6. Respondent did not register the <acrosscultures.org> domain name in bad faith and is not using the resolving website in bad faith.
a. Respondent’s website does not contain any sponsored links and Respondent does not receive payment when viewers click on links to external websites.
b. Respondent’s site hosts content and is not a website that simply redirects viewers to a third-party website.
i. Respondent registered the domain for use in connection with a bona fide non-profit program that has been recognized by U.S. Department of State, civic organizations, and local governments in Washington State and in the Baltics.
c. The website housed at the <acrosscultures.org> domain name is the only website Respondent owns.
d. Respondent did not acquire the domain to deprive Complainant of its use and has no pattern of such conduct. Respondent had never heard of Complainant until Complainant first contacted Respondent in March of 2013.
e. Respondent did not acquire the domain for the purpose of disrupting a competitor. Respondent and Complainant are not competitors.
7. Complainant has engaged in reverse domain hijacking by seeking transfer of the contested domain without providing evidence of Respondent’s registration of the domain in bad faith.
C. Additional Submissions
1. Policy ¶ 4(a)(i)
a. Respondent has failed to indicate how its <acrosscultures.org> domain name and Complainant’s ACROSS CULTURES mark are not identical to the letter.
b. As concrete and published evidence of Complainant's continuous use of the ACROSS CULTURES mark over the relevant time period. See Ex. 3 of Complainant’s Additional Submission (showing registration of Complainant's business using the name Across Cultures covering the time period from 1997-2007); see also Ex. 4 of Complainant’s Additional Submission (the "About the Author" page from Complainant's book, published in 2004 and selling continuously since); see also Ex. 5 of Complainant’s Additional Submission (the same book's back jacket); see also Ex. 6 of Complainant’s Additional Submission (Complainant's websites at <acrosscultures.com> and <acrosscultures.net>, in continuous use since 1997).
2. Policy ¶ 4(a)(ii)
a. Respondent’s Response only included one exhibit, which is a brochure essentially restating the contents of Respondent’s site. The contents of Respondent’s site, which is information regarding multicultural training programs, supports Complainant’s assertion that Respondent is offering competing services.
b. Respondent offers no concrete evidence to suggest that it has rights in the ACROSS CULTURES trademark.
c. Respondent provides no credible proof that it is commonly known by the <acrosscultures.org> domain name.
i. The IRS database shows no record of a nonprofit called “Across Cultures.”
ii. Respondent's Exhibit A, a promotional brochure of Respondent’s own creation and currently available nowhere, does not offer proof that Respondent is commonly known by the ACROSS CULTURES mark.
d. Respondent fails to substantiate with concrete or verifiable documentation how her program might have been "recognized" by the U.S. Department of State, any civic organization, or any local government.
3. Policy ¶ 4(a)(iii)
a. Respondent claims to have had no knowledge of Complainant until being contacted by Complainant in March 2013, but there is evidence to suggest that this is not true.
i. By 2004, more than 15,000 people had completed Complainant's Peterson Cultural Style Indicator, offered through Complainant’s website as a component of its multicultural training programs. See Ex. 5 of Complainant’s Additional Submission.
ii. Respondent could not have been so willfully ignorant as to ignore Complainant’s <acrosscultures.com> or <acrosscultures.net> domains at the time Respondent registered <acrosscultures.org>. Respondent would have at least looked at the websites, which would have revealed Complainant's federally-registered mark.
iii. In addition to the exact phrase "Across Cultures" appearing on the image header of every page, and in the site title on a browser's top border, Complainant's exact ACROSS CULTURES mark appears at least 50 times on Respondent’s site. See Ex. 5 of Complainant’s Additional Submission.
b. Respondent’s claim that its website merely serves to “provide information on a program” does not negate the fact that Respondent presumably receives donations on its site, which also serves to advertise Respondent’s programs.
4. Complainant has not engaged in reverse domain hijacking, but has rather only sought to protect its rights in the ACROSS CULTURES mark.
D. Respondent’s Additional Submission:
a. Complainant’s lapsed trademarks do not establish an uninterrupted use in commerce and Complainant has not proven the existence of trademark rights during the times that its trademark registrations lapsed.
b. Respondent is not required to have acquired trademark or service mark rights in the ACROSS CULTURES mark in order to be commonly known by that mark under Policy ¶ 4(c)(ii).
c. Respondent is making a legitimate noncommercial use of the domain name under Policy 4(c)(iii).
i. Respondent has used the domain name <acrosscultures.org> for nearly ten years to present information about a business and cultural exchange and volunteer citizen diplomacy, humanitarian program.
ii. Respondent’s program was recognized by the U.S. Embassy in Lithuania. See Ex. A of Respondent’s Additional Submission.
d. The focus of UDRP 4(b)(i)-(iv) is whether Respondent registered the domain name for its own financial gain or to Complainant’s detriment. Respondent has done neither.
i. Aside from not being Complainant’s competitor, Respondent has owned the domain name for nearly ten years, did not know of Complainant’s existence until March 2013, and therefore could not have registered the domain name for the primary purpose of disrupting Complainant’s business.
ii. Internet users cannot donate money to Respondent through Respondent’s website.
1. The “How can I Participate?” donation link Complainant referred to at the resolving website is for a program that concluded in 2005.
2. In its Additional Submission, Complainant misrepresents Respondent’s website to the Panel by stating that “Respondent states on that page that she thrives on such donations.” What Respondent’s page actually says is “Programs like these thrive with the continued generosity of community members and the organizations that want to see a vibrant economy based on equity and cooperation.”
1 - The disputed domain name is identical to Complainant's trademark and/or service mark in which Complainant has rights.
2 - Respondent has no rights or legitimate interests in respect of the domain name.
3 - The domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims to own an active trademark registration with the USPTO for the ACROSS CULTURES mark (Reg. No. 4,205,098 filed January 7, 2012, registered September 11, 2012) for use in connection with educational services, materials and workshops in the field of multiculturalism for individuals and groups engaged in global business and activities. The Panel finds that Complainant’s active USPTO registration confers rights in the mark dating back to the date on which Complainant filed its trademark application. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). The Panel holds that Complainant has established rights in the ACROSS CULTURES mark pursuant to Policy ¶ 4(a)(i) dating back to January 7, 2012.
Complainant also claims to have established common law rights in the ACROSS CULTURES mark based on its continuous use of the mark in commerce since 1989. Complainant provides evidence of two additional USPTO registrations that it once held, but inadvertently allowed to lapse. See Complainant’s Exhibit A ((Reg. No. 2,450,733 registered May 15, 2001) for the ACROSS CULTURES mark and (Reg. No. 2,249,464 registered June 1, 1999) for the ACROSS CULTURES mark & design). The Panel finds that these lapsed registrations provide evidence of Complainant’s past use of the mark in commerce. Additionally, Complainant claims to have continuously operated its business on the Internet at <acrosscultures.com>, <acrosscultures.net>, and other domain names derivative of the ACROSS CULTURES mark starting in 1997. Complainant’s Additional Submission also purports to provide evidence of Complainant's continuous use of the ACROSS CULTURES mark over the relevant time period. See Ex. 3 of Complainant’s Additional Submission (showing registration of Complainant's business using the name Across Cultures covering the time period from 1997-2007); see also Ex. 4 of Complainant’s Additional Submission (the "About the Author" page from Complainant's book, published in 2004 and selling continuously since); see also Ex. 5 of Complainant’s Additional Submission (the aforementioned book's back jacket); see also Ex. 6 of Complainant’s Additional Submission (Complainant's websites at <acrosscultures.com> and <acrosscultures.net>, in continuous use since 1997). In light of the above, the Panel finds that Complainant has demonstrated continuous and ongoing use of the ACROSS CULTURES mark sufficient to confer common law rights in the mark under Policy ¶ 4(a)(i) that predate Respondent’s July 31, 2004 registration of the <acrosscultures.org> domain name. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark).
Complainant contends that the <acrosscultures.org> domain name is identical to Complainant’s mark, as the mere addition of the gTLD “.org” is insufficient to distinguish the domain name. The Panel also notes the disputed domain also eliminates the space between words in Complainant’s mark. The Panel finds that Respondent’s <acrosscultures.org> domain name is indeed identical to Complainant’s mark for the purposes of Policy ¶ 4(a)(i), as the removal of spaces and affixation of gTLDs do not distinguish domain names from a corresponding mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Finding for the Complainant
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
According to Complainant, Respondent is not commonly known by the <acrosscultures.org> domain name. Complainant notes that the relevant WHOIS information identifies Respondent as “Christina Bruning.” Complainant asserts that Respondent has never sought a license or permission to use Complainant's ACROSS CULTURES mark in the <acrosscultures.org> domain name, and that Complainant has never granted Respondent authorization in writing or otherwise to use Complainant's mark in any way. Complainant charges that USPTO records indicate that Respondent (under the name "Christina Bruning" or any other name) holds no trademarks for ACROSS CULTURES or any other mark in any class whatsoever (including International Trademark Class 35, which Respondent purports to do business in). In its Additional Submission, Complainant argues that Respondent’s Response provides no credible proof that Respondent is commonly known by the <acrosscultures.org> domain name. Complainant notes that although Respondent claims to operate as a nonprofit entity, the IRS database shows no record of a nonprofit called “Across Cultures.” Complainant further claims that Respondent’s Exhibit A, a promotional brochure of Respondent’s own creation and currently available nowhere, does not offer proof that Respondent is commonly known by the ACROSS CULTURES mark. Complainant further urges that Respondent has failed to substantiate with concrete or verifiable documentation how her program might have been "recognized" by the U.S. Department of State, any civic organization, or any local government. Upon consideration of this and other evidence presented in the record, the Panel finds that Respondent is not commonly known by the <acrosscultures.org> domain name within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent is using the <acrosscultures.org> domain name to operate a website that ostensibly competes with Complainant's offerings by redirecting Internet users to a website where Respondent offers competing multicultural programs and services. Complainant avers that the language throughout Respondent’s website plainly contradicts Respondent's claim that it does not use Complainant's mark to offer a form of teaching and training in cross-cultural activities. Complainant asserts that Respondent's website contains much language and description that suggest that Respondent competes with Complainant's business, including a list biographies of collaborators, several of whom tout their international culture backgrounds or experiences, and a mission statement on the site’s "About" page that states, "The focus of Across Cultures is to introduce participants to various training, philosophies, trends, and practices that enhance the leadership potential of women." In its Additional Submission, Complainant claims that Respondent’s Response only included one exhibit, a brochure essentially restating the contents of Respondent’s site, which involves the provision of information regarding multicultural training programs, thereby supporting Complainant’s assertion that Respondent is offering competing services. Complainant urges that such competing use is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel finds that Respondent’s registration of an identical domain name in order to provide competing services does not comport with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Despite making the argument that Respondent’s use of the <acrosscultures.org> domain name competes with Complainant’s use of the ACROSS CULTURES mark, Complainant also argues that Respondent lacks rights and legitimate interests in the domain for failure to make an active use of the domain. Complainant alleges that the content of the website housed at the disputed domain has remained identical since 2006, suggesting that Respondent has abandoned the site. Complainant reasons that Respondent’s website does not support a claim of fair commercial or noncommercial use in Trademark Class 35, 41, or any other use due to the fact that it is abandoned. The Panel notes that past panels have typically found a lack of rights and legitimate interests by way of inactive use in situations where a respondent has failed to display any substantive content on its site since the disputed domain name’s registration. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name). The Panel considers Respondent’s failure to update its site for a prolonged period after the site’s initial development as evidence that the Respondent lacks rights and legitimate interests in a domain. Accordingly, the Panel finds that Respondent’s inactive use of the <acrosscultures.org> domain name since 2006 negates Respondent’s claims of rights and legitimate interests under Policy ¶ 4(a)(ii).
Finding for the Complainant
Complainant contends that Respondent’s operation at an identical domain name and its offering of similar multicultural program content at its website will inevitably confuse and divert some Internet users, thereby disrupting Complainant’s business in bad faith. Complainant asserts that Respondent’s site includes a mailing list registration area which allows users to check a box that says “Yes, please send me reminders about Across Cultures programs,” arguing that this also disrupts Complainant’s business by diverting customers from Complainant to Respondent. The Panel determines that Respondent’s site competes with Complainant’s business under the ACROSS CULTURES mark, and that Respondent’s website disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant also contends that Respondent’s site includes a donation page, which claims that Respondent’s cross-cultural programs “thrive” on “donations,” and that Respondent’s use of an identical domain name to collect donations represents attraction for commercial in bad faith. In its Additional Submission, Complainant argues that Respondent’s claim that its website merely serves to “provide information on a program” does not negate the fact that Respondent presumably receives donations on its site, which also serves to advertise Respondent’s programs. The Panel finds that Respondent registered the <acrosscultures.org> domain name for the purpose of confusing Internet users as to Complainant’s affiliation with Respondent’s site in order to generate a commercial gain by collecting donations after misleadingly attracting users to its site. The Panel finds that Respondent has registered and used the <acrosscultures.org> domain name in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant believes that Respondent registered the <acrosscultures.org> domain name with actual or constructive knowledge of Complainant’s rights in the ACROSS CULTURES mark. Complainant notes that it had active registrations of the mark on file with the USPTO and had already registered the <acrosscultures.com> and <acrosscultures.net> domains at the time of Respondent’s initial registration of the <acrosscultures.org> domain. In its Additional Submission, Complainant refutes Respondent’s claim that it had no knowledge of Complainant until being contacted by Complainant in March 2013. Complainant again notes its registration of the <acrosscultures.com> and <acrosscultures.net> domains, arguing that Respondent must have noticed these registrations and at least looked at the resolving websites, which would have revealed Complainant’s then-registered mark. Complainant claims that by 2004, more than 15,000 people had completed Complainant's Peterson Cultural Style Indicator, offered through Complainant’s website as a component of its multicultural training programs, and suggests that Respondent should have been aware of that fact. See Ex. 5 of Complainant’s Additional Submission. Finally, Complainant notes that in addition to the exact phrase "Across Cultures" appearing on the image header of every page, and in the site title on a browser's top border, Complainant's exact ACROSS CULTURES mark appears at least 50 times on Respondent’s site. See Ex. 5 of Complainant’s Additional Submission. Although previous panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, this Panel finds that Complainant has successfully demonstrated Respondent’s actual knowledge of Complainant's mark and rights in this case. How else could Respondent select the name "Across Cultures" and offer competing services without knowing of Complainant's trademark and existing domains. This Panel therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Reverse Domain Name Hijacking
Finding for Complainant
Complainant claims that has not engaged in reverse domain hijacking, but rather has merely sought to vigorously protect its intellectual property rights. Since the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acrosscultures.org> domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: June 14, 2013
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