The Emily Program, P.C., The Emily Program Foundation v. Dahlia Colangelo
Claim Number: FA1305001500084
Complainant is The Emily Program, P.C., The Emily Program Foundation (“Complainant”), represented by Michael T. Olsen, Minnesota, United States. Respondent is Dahlia Colangelo (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <annawestinfoundation.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2013; the National Arbitration Forum received payment on May 15, 2013.
On May 28, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <annawestinfoundation.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 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 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@annawestinfoundation.org. Also on May 30, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: The Emily Program, P.C. and The Emily Program Foundation. The Complainants assert that they have standing in their cumulative, widespread use of both the ANNA WESTIN FOUNDATION and ANNA WESTIN HOUSE marks. They allege that, since the merger of The Anna Westin Foundation with The Emily Program Foundation, the latter has been the exclusive user of the ANNA WESTIN FOUNDATION service mark. Complainants also state The Emily Program, P.C., began using the ANNA WESTIN HOUSE service mark in 2002 and registered the ANNA WESTIN HOUSE service mark on February 12, 2013.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that a merger of the two Complainants establishes a sufficient nexus between the Complainants, and will treat them all as a single entity in this proceeding, referring to them collectively as “Complainant.”
A. Complainant makes the following assertions:
1. Respondent’s <annawestinfoundation.org> domain name is confusingly similar to Complainant’s ANNA WESTIN FOUNDATION mark.
2. Respondent does not have any rights or legitimate interests in the <annawestinfoundation.org> domain name.
3. Respondent registered and used the <annawestinfoundation.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the trademark ANNA WESTIN HOUSE through registration with the United States Patent and Trademark Office (“USPTO”) of the ANNA WESTIN HOUSE mark (Reg. No. 4,288,256, registered February 12, 2013). Complainant has used the ANNA WESTIN FOUNDATION mark to provide eating disorder-related support services, research, and community outreach since 2000. Complainant establishes common law rights in the mark, through its predecessor, based on extensive and exclusive use dating back to that year.
Complainant owns the following domain names: <annawestin.com>; <annawestin.net>; <annawestin.org>; <annawestinhouse.net>; and <annawestinhouse.org>. Complainant also owned the disputed domain name <annawestinfoundation.org> until March 27, 2009, when registration of the domain name inadvertently expired. Respondent registered the disputed domain name later in 2009, and it resolves to a website that advertises links to services that directly compete with Complainant’s eating disorder-related services. Respondent also offered to sell the domain name to Complainant for $2500.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant’s USPTO registration of the ANNA WESTIN HOUSE mark sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), where the panel similarly held that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i).
Complainant also asserts that it has common law rights in the ANNA WESTIN FOUNDATION mark. The Panel notes that a complainant may establish its common law rights in a mark pursuant to Policy ¶ 4(a)(i) by showing the mark “has gained secondary meaning through extensive commercial use.” See Hiatt v. personal fan & official site builders: we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007). See also AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (stating that “‘[s]econdary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”)
Complainant asserts that it has established common law rights in the ANNA WESTIN FOUNDATION mark through the continuous use of the mark by Complainant and its predecessor, in connection with eating disorder-related services, since 2000. Complainant asserts that as a result of its continuous use of the mark since 2000, the ANNA WESTIN FOUNDATION mark has become widely recognized by the public in connection to the eating disorder-related services provided by Complainant. In Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002), a previous Panel held that a complainant established common law rights in a mark through evidence of its continuous use the mark for seven (7) years. Here, Complainant has established that the ANNA WESTIN FOUNDATION mark has been used continuously by its predecessor and itself for thirteen (13) years. The Panel notes that Complainant was also the previous owner of the <annwestinfoundation.org> domain name, bolstering its association with the mark. See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007), where a previous Panel found that a complainant’s mark had established secondary meaning necessary to establish common law rights in the mark where the complainant had previously held the registration for a domain name identical to the mark. The Panel finds that Complainant has established common law rights in the ANNA WESTIN FOUNDATION mark for purposes of Policy ¶ 4(a)(i), which pre-date Respondent’s registration of the disputed domain name.
Respondent’s <annawestinfoundation.org> domain name is identical to Complainant’s ANNA WESTIN FOUNDATION mark, as it merely adds the generic top-level domain name (“gTLD”), “.org,” and spaces, to the mark. The addition of a gTLD such does not distinguish the the disputed domain name from Complainant’s mark. See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”). The elimination of spaces also does not establish distinctiveness under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel thus finds that the disputed domain name <annawestinfoundation.org> is identical to Complainant’s ANNA WESTIN FOUNDATION mark.
Respondent’s <annawestinfoundation.org> domain name is also confusingly similar to Complainant’s registered ANNA WESTIN HOUSE mark. The disputed domain name contains two of the same words included in Complainant’s mark, “Anna” and “Westin,” and substitutes the word “foundation” for the word “house.” This does not distinguish the disputed domain name from Complainant’s registered mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007), where the Panel held that the addition of “generic words with an obvious relationship to Complainant’s business renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).” Thus, the Panel finds that the disputed domain name is also confusingly similar to Complainant’s ANNA WESTIN HOUSE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden 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.”).
Complainant argues that Respondent is not commonly known by its <annawestinfoundation.org> domain name, because the domain name registrant is listed as “Dahlia Colangelo,” and Respondent has failed to submit any evidence suggesting Respondent is commonly known as “Anna Westin Foundation.” The Panel agrees and finds that Respondent is not commonly known by the disputed domain name, and thus lacks rights in the domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), where the panel concluded that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name.
Complainant further argues that Respondent is not using the disputed domain name to make a bona fide offering of goods or services, or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant contends that the <annawestinfoundation.org> domain name resolves to a website that advertises links to its competitors in the market of eating disorder treatment, including Timberline Knolls, Avalon Hills, and Casa Palmera. Complainant demonstrates that Respondent is using the disputed domain name to obtain “click-through fees” from Complainant’s competitors, as well as from third-party vendors whose unrelated products are also being advertised on the resolving website. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the Panel held that, because the respondent’s disputed domain names resolved to a website featuring a series of advertising links to various third-parties, many of whom offered products and services in direct competition with those offered under the complainant’s mark, the respondent did not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), where the Panel found that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees. The Panel thus finds that Respondent’s use of the disputed domain name is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant further contends that the disputed domain name resolves to a website that contains Complainant’s copyrighted material. Screenshots provided by Complainant show the resolving website displays the personal story of Anna Westin and the Anna Westin House, as well as a disclaimer that these stories are copyrighted by Complainant, suggesting that Respondent is attempting to pass itself off as Complainant. This further demonstrates Respondent’s lack of rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii). See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent offered to sell the disputed domain name for $2,500. The Panel infers that this offer price is in excess of Respondent’s out-of-pocket costs in registering the domain name. Consequently, the Panel finds that Respondent registered the disputed domain name in bad faith. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000), where the panel held that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name.
Respondent’s <annawestinfoundation.org> domain name similarly resolves to a website that links to Complainant’s competitors in the provision of eating disorder-related services. This disrupts Complainant’s business and constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), where the fact that the disputed domain names resolved to websites that listed links to competitors of the complainant was sufficient evidence that the respondent intended to disrupt the complainant’s business, which indicated bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent’s use of the disputed domain name to advertise for Complainant’s competitors and unrelated third-party vendors also constitutes an attempt to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s ANNA WESTIN FOUNDATION mark for Respondent’s commercial gain. This constitutes bad faith under Policy ¶ 4(b)(iv), compounded by Respondent’s inclusion of Complainant’s copyrighted material on the resolving website. In AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000), the resolving website offered links to third-party websites that offered services similar to the complainant’s services. The panel there held that this use of the disputed domain name took advantage of Internet users confusion for Respondent’s commercial gain and thus evidenced bad faith pursuant to Policy ¶ 4(b)(iv). Complainant asserts that Respondent’s notice of Complainant’s copyright does not mitigate bad faith. In Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000), the panel held that the respondent’s use of a disclaimer on its website was insufficient to mitigate bad faith, reasoning that the disclaimer did nothing to dispel confusion that may have resulted from the respondent’s use of the disputed domain name. The Panel agrees with that precedent and finds that Respondent is using the disputed domain name for commercial gain through the likelihood of confusion, which constitutes bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge based on the following facts: the disputed domain name is identical to the mark that Complainant had been using continuously since 2000; Complainant’s mark is well-known; the resolving website contains Complainant’s copyrighted material and a notice acknowledging Complainant’s copyright; and, the resolving website contains links to competitors operating in the same industry as Complainant. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in its mark, a further indication of bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).
Finally, Respondent registered the <annawestinfoundation.org> domain name after Complainant inadvertently allowed its ownership of the disputed domain name to expire in 2009. The Panel finds that this is additional evidence of bad faith of Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <annawestinfoundation.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 3, 2013
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