The Allen-Lambe House Foundation v. Jaroslaw Matula
Claim Number: FA1412001597664
Complainant is The Allen-Lambe House Foundation (“Complainant”), represented by Shelby Knutson Bruce of Fulbright & Jaworski LLP, Minnesota, USA. Respondent is Jaroslaw Matula (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allenlambe.org>, registered with Register.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2014; the National Arbitration Forum received payment on December 30, 2014.
On December 31, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <allenlambe.org> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 January 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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@allenlambe.org. Also on January 5, 2015, 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 February 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
A. Complainant
Complainant has common law rights in the trademark ALLEN-LAMBE HOUSE FOUNDATION.
Since at least 1990, the mark has been used to facilitate the provision of charitable services and the historic preservation of the Henry J. Allen House in Wichita, Kansas, USA.
The mark has acquired secondary meaning because great amounts of time, effort, and money have been spent by Complainant on advertising the Henry J. Allen House.
The mark has also been featured in local and national media stories.
Respondent’s <allenlambe.org> domain name is confusingly similar to Complainant’s ALLEN-LAMBE HOUSE FOUNDATION mark.
Respondent has not been commonly known by the domain name and has never been licensed or otherwise authorized by Complainant to use the ALLEN-LAMBE HOUSE FOUNDATION mark in a domain name.
The domain name currently resolves to a website hosting hyperlinks to websites featuring adult-oriented material.
The domain name was formerly owned by Complainant, and at one point was being used by Respondent to host a website displaying Complainant’s copyrighted material.
Respondent presumably profits from its use of the domain name by reason of a likelihood of confusion caused among Internet users as to the possibility of Respondent’s affiliation with the ALLEN-LAMBE HOUSE FOUNDATION mark.
Respondent has no rights to or legitimate interests in the <allenlambe.org> domain name.
Respondent knew of Complainant and its rights in the ALLEN-LAMBE HOUSE FOUNDATION mark when it registered the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has demonstrated that it has common law rights in the ALLEN-LAMBE HOUSE FOUNDATION trademark by virtue of its long and continuous use of the mark, together with its extensive investment in the development and marketing of the mark and related publicity. Inasmuch as registration with a governmental authority is not necessary for a UDRP complainant to acquire rights in a mark in order to satisfy the requirements of Policy ¶ 4(a)(i), Complainant’s showing is sufficient. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a UDRP complainant need not own a registration for its mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Poland).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <allenlambe.org> domain name is confusingly similar to Complainant’s ALLEN-LAMBE HOUSE FOUNDATION mark. The domain name contains the dominant elements of the mark, omitting only a hyphen and the generic words “HOUSE” and “FOUNDATION,” and adding the generic Top Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding the <westjets.com> domain name confusingly similar to a UDRP complainant’s WEST JET AIR CENTER mark).
See also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen from the mark of another in forming domain names is not sufficient to differentiate the domain names from the mark under Policy ¶ 4(a)(i)).
Further see Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar [to the mark of a UDRP complainant] under the Policy.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <allenlambe.org> domain name and has never been licensed or otherwise authorized by Complainant to use the ALLEN-LAMBE HOUSE FOUNDATION mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Jaroslaw Matula,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the domain name so as to have acquired rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a UDRP respondent had no rights to or legitimate interests in a disputed domain name as provided in Policy ¶ 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We next observe that Complainant alleges, without objection from Respondent, that the <allenlambe.org> domain name resolves to a website which hosts hyperlinks to adult-oriented websites. This employment of the domain name is neither a bona fide offering of goods or services under Policy¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy¶ 4(c)(iii). See Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003):
Respondent uses …[a contested domain name]… in connection with [adult-oriented] material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).
See also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <allenlambe.org> domain name, which is confusingly similar to Complainant’s ALLEN-LAMBE HOUSE FOUNDATION mark, is an attempt to profit from a likelihood of confusion caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of respondent’s bad faith in the registration and use of the domain name. 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 a respondent used a domain name which was confusingly similar to the mark of a UDRP complainant to divert to its own website Internet users searching for the website of that complainant, likely profiting in the process ).
We are also convinced by the evidence that Respondent’s employment of the disputed domain name to host a website with links to adult-oriented content is independent proof of Respondent’s bad faith in the registration and use of the domain name. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003):
[W]hatever the motivation of Respondent, the diversion of the domain name to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <allenlambe.org> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 9, 2015
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