U.S. Environmental Protection Agency v. Domain Admin / Hush Whois Protection Ltd.
Claim Number: FA1703001722962
Complainant is U.S. Environmental Protection Agency (“Complainant”), represented by Scott H. Albright of U.S. EPA, Office of General Counsel, District of Columbia, USA. Respondent is Domain Admin / Hush Whois Protection Ltd. (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <noattacks.org>, registered with PSI-USA, Inc. dba Domain Robot.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 21, 2017; the Forum received payment on March 21, 2017.
On March 24, 2017, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <noattacks.org> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 March 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2017 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@noattacks.org. Also on March 27, 2017, 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 April 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, the U.S. Environmental Protection Agency, is an administrative agency within the United States federal government based in Washington, District of Columbia, USA. Complainant utilizes the NOATTACKS.ORG mark in connection with an anti-asthma campaign run by Complainant’s organization.
Complainant has rights in the NOATTACKS.ORG through its common law use of, and secondary meaning given to, the mark.
Respondent’s domain name, <noattacks.org>, is identical to Complainant’s mark as it is an exact representation of the mark as a domain name.
Respondent has no rights or legitimate interests in the <noattacks.org> domain name. Respondent is not commonly known by the domain name, nor has Respondent utilized the <noattacks.org> domain for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, the disputed domain resolves to a page containing hyperlinks to unrelated websites.
Respondent registered and used <noattacks.org> in bad faith. Respondent registered the domain for the purpose of reselling it in excess of out-of-pocket costs. Further, Respondent profits from the pay-per-click hyperlinks present on the resolving page—further evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has common law rights in the NOATTACKS.ORG mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the NOATTACKS.ORG trademark.
Respondent uses the at-issue domain name to address a website that displays pay-per-click links and offers the domain name for sale.
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.”).
The at-issue domain name is identical to a trademark in which Complainant has rights.
There is no requirement under the UDRP that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). In the instant case Complainant proffers evidence of the NOATTACKS.ORG mark’s having acquired secondary meaning through Complainant’s public use of such mark over a period of 15 years. The mark was used in support of Complainant’s anti-asthma campaigns. Further, Complainant reports that it has invested $450 million in advertising related to the NOATTACKS.ORG brand and for many years continuously managed and used a website in support of the NOATTACKS.ORG mark. That website was addressed by the domain name <noattacks.org> when such domain name was controlled by Complainant. In light of the aforementioned circumstances the Panel finds that Complainant has acquired common law trademark rights in the NOATTACKS.ORG mark. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”); see also Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as March 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.).
Additionally, Respondent’s <noattacks.org> domain name is identical to Complainant’s NOATTACKS.ORG trademark. The domain name perfectly matches the mark and there is thus no need to belabor the obvious.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information can support a finding under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the at-issue domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Domain Admin” and the registration organization as “Hush Whois Protection Ltd.” The record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <noattacks.org> domain name. The Panel therefore concludes that Respondent is not commonly known by the <noattacks.org> domain name for the purposes of Policy ¶ 4(c)(ii). 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).”); see also, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding 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).
Respondent’s <noattacks.org> domain name was previously registered and used by Complainant. Through inadvertence, Complainant’s registration lapsed and the domain name reverted to the available pool being publically offered through any of many domain name registrars worldwide. The <noattacks.org> domain name was then registered by a third party and subsequently transferred from such third party to Respondent. Complainant claims, and Respondent’s silence does not deny, that Respondent registered the at-issue domain name to capitalize on the opportunity to own a domain name having inherent trademark value, albeit such value was from the goodwill associated with the mark of another, here Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Clark v. HiNet, Inc., FA 405057 (Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse). The record also shows that the <noattacks.org> domain name was advertised for sale on a webpage addressed by said domain name for the amount of $25,000; further evidence of Respondent’s lack of rights and interest in the at-issue domain name. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below Policy ¶ 4(b) bad faith circumstances are present from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First and as mentioned above regarding rights and interests, Respondent’s <noattacks.org> website is used to offer the <noattacks.org> domain name for sale in an amount in excess of Respondent’s out of pocket costs. Such use of the domain name suggests Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA 1623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).).
Additionally and as also mentioned above regarding rights and interests, Respondent uses the domain name for commercial gain. The domain name’s website displays pay-per-click hyperlinks to third parties. The links are by and large related to asthma and thus suggestive of Complainant’s asthma related trademark. Such use demonstrates bad faith registration and use of the at-issue domain name per Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <noattacks.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 26, 2017
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