Lean In Foundation d/b/a LeanIn.Org v. James Miller
Claim Number: FA1403001549875
Complainant is Lean In Foundation d/b/a LeanIn.Org (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington D.C., USA. Respondent is James Miller (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us>, registered with GoDaddy.com, LLC.
The undersigned 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2014; the National Arbitration Forum received a hard copy on March 27, 2014.
On March 20, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 28, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 17, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for the usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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.
A. Complainant
1. Complainant is a global organization that empowers people and helps them achieve their goals. The organization derives its name from the book Lean In: Women, Work and the Will to Lead, written by Sheryl Sandberg. Plans are underway to make a film based on the book, and these plants have been widely publicized.
2. Complainant has rights in the LEAN IN mark, used connection with personal development and leadership development. Complainant owns a registration for the LEAN IN mark with the Officer for the Harmonization in the Internal Markets (“OHIM”) (Reg. No. 11,677,424 registered Oct. 22, 2013).
3. Respondent’s <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names are confusingly similar to Complainant’s LEAN IN mark. All of the disputed domain names incorporate Complainant’s mark in its entirety while adding various generic and descriptive terms, as well as the generic top-level domain (“gTLD”) “.us.”
4. Respondent does not have any rights or legitimate interests in the <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names.
a. Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its LEAN IN mark in any way.
b. The <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names all resolve to parked pages with links to third-party websites.
5. Respondent registered and is using the <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names in bad faith.
a. Respondent has registered several infringing domain names, which is evidence of bad faith.
b. Respondent is trading on the goodwill of Complainant’s LEAN IN mark to obtain pay-per-click revenue from the parked advertisements displayed on the resolving websites.
c. Respondent is creating initial interest confusion by using domain names that are confusingly similar to Complainant’s LEAN IN mark.
d. Respondent had knowledge of Complainant’s LEAN IN mark prior to registering to the <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names because Respondent registered several infringing domain names in the instant case and Complainant’s mark has achieved fame and notoriety.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Lean In Foundation, d/b/a LeanIn.Org, of Palo Alto, CA USA. Complainant is the owner of an international registration for the mark LEAN IN and also claims common law rights in the mark based on extensive use of the mark as well as its registration of the domain name <leanin.org>. Complainant has continuously used the mark since at least as early as 2013 in connection with providing its services of assisting individuals with personal development and leadership assistance.
Respondent is James Miller of Connecticut, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that Respondent registered the <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names on or about January 28, 2014.
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 or 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.”).
Complainant contends it has rights in the LEAN IN mark, used in connection with personal and leadership development. Complainant states it owns a registration for the LEAN IN mark with the OHIM (Reg. No. 11,677,424 registered Oct. 22, 2013). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel here finds that Complainant has rights in the LEAN IN mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns a valid registration for the mark with the OHIM. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant alleges that Respondent’s <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names are confusingly similar to Complainant’s LEAN IN mark. Complainant states that all of the disputed domain names incorporate Complainant’s mark in its entirety while adding various generic and descriptive terms, as well as the gTLD “.us.” The Panel notes that the <lean-in-the-movie.us> domain name adds three hyphens and the terms “the,” and “movies;” the <lean-insucks.us> domain name adds one hyphen and the term “sucks;” the <leaninsucks.us> domain name adds the term “sucks;” and the <leaninthemovie.us> domain name adds the terms “the” and “movie.” The Panel also notes that the <leaninsucks.us>, and <leaninthemovie.us> domain names remove the space that exists between the terms “lean” and “in” in Complainant’s LEAN IN mark. The Panel finds that the addition of generic or descriptive terms to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel further finds that the removal of spaces, the addition of hypens, and the addition of a gTLD are all irrelevant for the purposes of confusing similarity analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel here finds that Respondent’s <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names are confusingly similar to Complainant’s LEAN IN mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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). The Complainant has met this burden.
The Panel notes that there is no evidence that Respondent ever had a service or trademark identical to any of the disputed domain names. As such, the Panel finds that Respondent has no rights pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that Respondent does not have any rights or legitimate interests in the <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names. Complainant states that Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its LEAN IN mark in any way. The Panel notes that the WHOIS record for the disputed domain names all list “James Miller” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Because Respondent was not authorized by Complainant to use the LEAN IN mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel here finds that Respondent is not commonly known by the <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names under Policy ¶ 4(c)(iii).
Complainant claims that the <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names all resolve to parked pages with links to third-party websites. The Panel notes that the <lean-in-the-movie.us> and <leaninthemovie.us> domain names resolve to parked directory pages with various links to unrelated third-party websites, while the <lean-insucks.us> and <leaninsucks.us> domain names resolve to parked pages with links to GoDaddy webpages. Id. Past panels have found that using a confusingly similar domain name to host third-party links unrelated to a complainant fails to demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under UDRP Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). The Panel here finds that Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv) because the disputed domain names all resolve to parked pages containing third-party links unrelated to Complainant.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent registered and is using the <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain name in bad faith. Complainant claims Respondent has registered several infringing domain names, which is evidence of bad faith. Past panels have found that a respondent who has registered multiple domain names in a single UDRP proceeding has acted in bad faith pursuant to Policy ¶ 4(b)(ii) by demonstrating a pattern of domain name registration that attempt to prevent the complainant from reflecting its trademark in a corresponding domain name. See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”). The Panel here finds that Respondent registered or is using the <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain name in bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent registered four domain names in the instant proceeding.
Complainant asserts that Respondent is trading on the goodwill of Complainant’s LEAN IN mark to obtain pay-per-click revenue from the parked advertisements displayed on the resolving websites. Complainant believes that Respondent is creating initial interest confusion by using domain names that are confusingly similar to Complainant’s LEAN IN mark. Past panels have found that such conduct demonstrates bad faith via attraction for commercial gain under Policy ¶ 4(b)(iv). See Osuuspankkikeskus Osk v. RegisterFly.com, WIPO Case No. D2006-0461 (June 13, 2006) (finding that “[p]aragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of internet users. Here, the respondent used the disputed domain names to create “initial interest confusion” on the part of internet users seeking the Complainant and in order to profit from at least some of that traffic.”). The Panel here finds that Respondent registered and is using the <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is trading on the goodwill of Complainant’s LEAN IN mark to obtain pay-per-click revenue from the parked advertisements.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <lean-in-the-movie.us>, <lean-insucks.us>, <leaninsucks.us>, and <leaninthemovie.us> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 5, 2014
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