The International Association of Lions Clubs v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1611001704302
Complainant is The International Association of Lions Clubs (“Complainant”), represented by Alexis Crawford Douglas of K&L Gates LLP, Illinois, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lionsinternational.org>, registered with Internet Domain Service BS Corp.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 22, 2016; the Forum received payment on November 22, 2016.
On November 28, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <lionsinternational.org> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 November 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2016 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@lionsinternational.org. Also on November 29, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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, International Association of Lions Clubs, is a non-profit corporation and worldwide service organization. Complainant owns several trademark registrations for the LIONS INTERNATIONAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,020,231, registered Sept. 9, 1975). See Compl., at Attached Annex 5, p.6. Respondent’s <lionsinternational.org> incorporates the entire mark, less the space, and appends the “.org” generic top-level domain (“gTLD”) —creating confusing similarity.
2. Respondent has no rights or legitimate interests in <lionsinternational.org>. Respondent has not been commonly known by <lionsinternational.org> because Respondent has engaged a privacy service, and Complainant has not authorized Respondent’s incorporation of its mark in a domain name. Further, Respondent uses <lionsinternational.org> as a parked website to collect revenue from “hits.” Specifically, Respondent features hyperlinks such as, “Lions International,” “Lions Clubs,” “Lions Club Membership,” and “Lions Club”—all of which redirect Internet users to pages showing a list of ads purporting to have information on Complainant. See Compl., at Attached Annex 6. This use of competing hyperlinks does not demonstrate a bona fide offering of goods or services or any legitimate noncommercial or fair use.
3. Respondent registered and used <lionsinternational.org> in bad faith. Respondent’s use of Complainant’s mark, prominently displayed on its website, in promotion of competing hyperlinks, imputes bad faith disruption per Policy ¶ 4(b)(iii). Further, such inclusion on its parked, click-through website, shows that it intended to create confusion for the purpose of commercial gain per Policy ¶ 4(b)(iv). Lastly, because Complainant’s rights in the LIONS INTERNATIONAL mark predate the registration of <lionsinternational.org> by many years, Respondent had at least constructive knowledge of the mark and Complainant’s rights when registering and using <lionsinternational.org>—bad faith pursuant to a nonexclusive consideration of Policy ¶ 4(a)(iii).
B. Respondent
1. Respondent did not submit a Response.
1. Respondent’s <lionsinternational.org> domain name is confusingly similar to Complainant’s LIONS INTERNATIONAL mark.
2. Respondent does not have any rights or legitimate interests in the <lionsinternational.org> domain name.
3. Respondent registered or used the <lionsinternational.org> domain name 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.
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(f), 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 (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, International Association of Lions Clubs, is a non-profit corporation and worldwide service organization. Complainant claims it holds several trademark registrations for the LIONS INTERNATIONAL mark with the USPTO (e.g., Reg. No. 1,020,231, registered Sept. 9, 1975). See Compl., at Attached Annex 5, p.6. USPTO registrations confer rights in a mark, even where a respondent resides or operates in a different country than the one in which a complainant has established such a registration. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Accordingly, even though Respondent resides in the Bahamas, the Panel agrees that Complainant’s USPTO registrations for the LIONS INTERNATIONAL mark are sufficient in establishing Policy ¶ 4(a)(i) rights.
Next, Complainant claims that Respondent’s <lionsinternational.org> incorporates the entire mark, less the space, and appends the “.org” gTLD—creating confusing similarity. Such changes have failed to create distinction in domain names. See Int’l Soap Box Derby, Inc. v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1602433 (Forum Mar. 4, 2015) (“The domain name contains the mark in its entirety, merely eliminating the spaces between the terms of the mark 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 identity or confusing similarity under the standards of the Policy.”). Accordingly, the Panel agrees that Respondent’s <lionsinternational.org> is confusingly similar to the LIONS INTERNATIONAL mark under Policy ¶ 4(a)(i).
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 (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 (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 has no rights or legitimate interests in <lionsinternational.org>. Firstly, Complainant argues that Respondent has not been commonly known by <lionsinternational.org> because Respondent has engaged a privacy service, and Complainant has not authorized Respondent’s incorporation of its mark in a domain name. Where a respondent has not submitted any evidence for a panel’s consideration, WHOIS information is looked to for support under Policy ¶ 4(c)(ii), and privacy services bear against a respondent’s rights. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Accordingly, while the WHOIS lists, “Domain Admin / Whois Privacy Corp.” as registrant, the Panel finds that Complainant has established a prima facie case under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent uses <lionsinternational.org> as a parked website to collect revenue from “hits.” Specifically, Respondent features hyperlinks such as, “Lions International,” “Lions Clubs,” “Lions Club Membership,” and “Lions Club”—all of which redirect Internet users to pages showing a list of ads purporting to have information on Complainant. See Compl., at Attached Annex 6. Inclusion of competing hyperlinks has led to findings of a lack of rights and legitimate interests under both Policy ¶¶ 4(c)(i) and (iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). Accordingly, the Panel finds that this use of competing hyperlinks does not demonstrate a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Complainant argues that Respondent registered and used <lionsinternational.org> in bad faith. Complainant contends that Respondent’s use of Complainant’s mark, prominently displayed on its website, in promotion of competing hyperlinks, imputes bad faith disruption per Policy ¶ 4(b)(iii). Further, such inclusion on its parked, click-through website, shows that it intended to create confusion for the purpose of commercial gain per Policy ¶ 4(b)(iv). See Compl., at Attached Annex 6. When competing hyperlinks have been used, both Policy ¶¶ 4(b)(iii) and (iv) have been found in conjunction. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”). Accordingly, the Panel finds that Respondent’s use leads to a finding of both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) bad faith registration and use.
Lastly, because Complainant’s rights in the LIONS INTERNATIONAL mark predate the registration of <lionsinternational.org> by many years, Complainant asserts that Respondent had at least constructive knowledge of the mark and Complainant’s rights when registering and using <lionsinternational.org>—bad faith pursuant to a nonexclusive consideration of Policy ¶ 4(a)(iii). On constructive notice, it has been stated, “[T]here is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.” Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003). While the Panel may thus consider actual knowledge, it may take into account the totality of the circumstances, which include the incorporation of the entire (unaltered) LIONS INTERNATIONAL mark, and the competing use engaged in by Respondent. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Accordingly, the Panel finds that the weight of the evidence bears in favor of the conclusion that Respondent had actual notice of the LIONS INTERNATIONAL mark and Complainant’s rights when registering and subsequently using <lionsinternational.org>—bad faith pursuant to a nonexclusive consideration of 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 <lionsinternational.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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