The Entertainment Industry Foundation v. Caleb Egwuenu / Charis Ville Ministries
Claim Number: FA1710001752192
Complainant is The Entertainment Industry Foundation (“Complainant”), represented by Meaghan H. Kent of Venable LLP, USA Respondent is Caleb Egwuenu / Charis Ville Ministries (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <standuptocancernigeria.org> and <su2c9ja.org>, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2017; the Forum received payment on October 4, 2017.
On October 5, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <standuptocancernigeria.org> and <su2c9ja.org> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@standuptocancernigeria.org, postmaster@su2c9ja.org. Also on October 10, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 a formal response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in the STAND UP TO CANCER and SU2C and submits that the disputed domain names are confusingly similar to its respective trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered the disputed domain names in bad faith and then used the domain name in bad faith.
B. Respondent
Respondent did not submit a formal Response. The Panel notes that several emails, all non-responsive to the Policy, were sent to the Forum. The Panel considers that issue below.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a charitable organization that uses the trademarks STAND UP TO CANCER and SU2C in connection with its activities;
2. the trademark STAND UP TO CANCER is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 3,588,631, filed February 6, 2008, registered March 10, 2009;
3. the trademark SU2C is the subject of USPTO Reg. No. 3,626,956, filed May 12, 2008, registered May 26, 2009;
4. the disputed domain names <standuptocancernigeria.org> and <su2c9ja.org> were registered on December 30, 2014 and September 24, 2013 respectively;
5. the domain name <standuptocancernigeria.org> resolves to a website which appears to be a site either maintained by, or affiliated with, Complainant (but is not);
6. the domain name <su2c9ja.org> redirects Internet users to the website resolving from <standuptocancernigeria.org>;
7. in pre-Complaint correspondence, Respondent admitted knowledge of Complainant and its activities under the trademarks; and
8. there is no relationship between the parties and Complainant has not authorised Respondent to use the trademarks or to register any domain name incorporating the trademark.
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."
Preliminary Issue : Non-responsive submissions
As indicated, Respondent did not submit a formal Response but sent several emails to the Forum. None were responsive to the terms of the Policy but for (i) an unsupported request for further time to submit a Response, and (ii) a claim that Respondent’s “core purpose is to fight cancer in our country Nigeria”. Whilst the Panel has a discretion under the Rules to allow a late Response, having regard to the evidence is described below it has decided not to exercise that discretion in Respondent’s favour in this case.
Primary Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[i] The USPTO registrations noted earlier stand in the name of Complainant. The Panel finds that Complainant has rights in STAND UP TO CANCER and SU2C.
For the purposes of comparison of the disputed domain names with the trademarks the gTLD, “.org”, can be disregarded. The disputed domain names then differ from the respective trademarks by addition of the country name “nigeria” or the shorthand approximation thereof, “9ja”. Those additions are non-distinctive and insufficient to avoid confusion. The Panel finds the disputed domain names confusingly similar to the respective trademarks. [ii]
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iii]
The WhoIs listed name of the domain name holder carries no suggestion that Respondent might be commonly known by either of the disputed domain names. Whilst Respondent claimed in an email that its purpose is to fight cancer in Nigeria, the evidence provided by Complainant is that the disputed domain names resolve to a website which, through use of other indicia associated with Complainant, attempts to pass itself off as a website of Complainant or an enterprise affiliated with Complainant.
The Panel finds that a prima facie case has been made.[iv] In the absence of a reasoned Response that case has not been rebutted and so the Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds registration and use of the domain names in bad faith pursuant to paragraph 4(b)(iv). The Panel has already found the domain names to be confusingly similar to the respective trademarks. The resolving website compounds the confusion by inferring an affiliation or endorsement of that website by Complainant, if not by actually misrepresenting the website as being maintained by Complainant. Had there been a reasoned Response which clearly showed use of the domain name only in connection with charitable activities, there might have a question concerning “commercial gain” but on the evidence before the Panel there is proof of attempted fundraising but nothing else. On the evidence the Panel finds registration and use in bad faith.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <standuptocancernigeria.org> and <su2c9ja.org> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: November 8, 2017
[i] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (FORUM Sept. 25, 2003).
[ii] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Wal-Mart Stores, Inc. v Stork, D2000-0268 (Aug. 11, 2000) finding <wal-mart-eurpoer.com> confusingly similar to complainant’s trademark.
[iii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[iv] See, for example, Am. Int’l Group, Inc. v. Busby, FA 156251 (FORUM May 30, 2003) finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name.
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