U.S. Green Building Council v. Donny Satriyo
Claim Number: FA1812001821801
Complainant is U.S. Green Building Council (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Donny Satriyo (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usgbccrc.org>, registered with Crazy Domains FZ-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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 19, 2018; the Forum received payment on December 19, 2018.
On December 23, 2018, Crazy Domains FZ-LLC confirmed by e-mail to the Forum that the <usgbccrc.org> domain name is registered with Crazy Domains FZ-LLC and that Respondent is the current registrant of the name. Crazy Domains FZ-LLC has verified that Respondent is bound by the Crazy Domains FZ-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 December 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2019 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@usgbccrc.org. Also on December 28, 2018, 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 January 21, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 engages in the business of sustainable, green building through its famous LEED certification program. Complainant has rights in the USGBC mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,763,994, registered Sep. 16, 2003). Respondent’s <usgbccrc.org>[i] domain name is confusingly similar to Complainant’s USGBC mark as the domain name is predominately made up of the USGBC mark and adds the generic letters “CRC” and the “.org” generic top-level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <usgbccrc.org> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the USGBC marks in any manner.
3. Respondent’s use of the <usgbccrc.org> domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain is being used to host a series of webpages offering, advertising, promoting, and/or selling architectural plans and possibly other goods and services for commercial gain.
4. Respondent is using the domain name to misdirect users looking for Complainant to Respondent’s website and/or pass off as Complainant.
5. Respondent registered and is using the <usgbccrc.org> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent is using the domain name and Complainant’s USGBC marks to host web pages that advertise, promote, sell, and/or offer to sell similar goods to those offered by Complainant.
6. Further, Respondent’s registration of a domain name incorporating Complainant’s well-known and famous USGBC mark in its entirety in order to falsely associate itself with Complainant despite knowing it has no affiliation with USGBC, is evidence that Respondent registered the domain name with Complainant’s business in mind.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law rights for the USGBC mark. Respondent’s domain name is confusingly similar to Complainant’s USGBC mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <usgbccrc.org> domain name and that Respondent registered and uses the 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 has rights in the USGBC mark based on registration with the USPTO (e.g. Reg. No. 2,763,994, registered Sep. 16, 2003). Registration of a mark with a government authority such as the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017). The Panel holds that Complainant’s registration of the USGBC marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4a(a)(i).
Complainant next argues Respondent’s <usgbccrc.org> domain name is confusingly similar to the USGBC mark as the domain name is predominately made up of the mark while adding the generic letters “CRC” and “.org” gTLD. A respondent’s addition of various letters and a gTLD to a complainant’s mark is not sufficient to overcome a finding of confusingly similar per Policy ¶ 4(a)(i). See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also 3M Company v. Kabir S Rawat, FA 1725079 (Forum May 9, 2017) (”Respondent’s <nexcare.org> domain name incorporates the NEXCARE mark and merely adds “.org.” This addition does not distinguish the disputed domain name from Complainant’s mark… Thus, the Panel finds that Respondent’s <nexcare.org> domain name is confusingly similar to Complainant’s NEXCARE mark.”). Accordingly, the <usgbccrc.org> domain name is confusingly similar to Complainant’s USGBC mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <usgbccrc.org> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <usgbccrc.org> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the USGBC mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark may be evidence that a respondent is not commonly known by a domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the <usgbccrc.org> domain name as “Donny Satriyo” and no information in the record indicates Respondent was authorized to register a domain name with Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <usgbccrc.org> domain name.
Complainant further argues Respondent’s lack of rights and legitimate interests in the <usgbccrc.org> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead has shown that the domain name is being used to host a series of webpages offering, advertising, promoting, and/or selling architectural plans and possibly other goods and services for commercial gain. Use of a domain name incorporating the mark of another to offer competing goods and services to a complainant is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant has provided screenshots of the web page associated with the <usgbccrc.org> domain name, which purports to distribute house floor plans for constructing homes. The Panel holds that Respondent does not have rights or legitimate interests in the <usgbccrc.org> domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s competing website. Using a domain name incorporating the mark of another to trade upon the goodwill of a complainant for commercial gain shows bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant has provided screenshots of the web page associated with the <usgbccrc.org> domain name which shows that it purports to distribute house floor plans for constructing homes. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the USGBC mark at the time of registering the <usgbccrc.org> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name shows bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent’s registration of a domain name incorporating Complainant’s well-known, famous, and distinct USGBC mark despite knowing it has no affiliation with Complainant is evidence that Respondent registered the domain name with Complainant’s business in mind. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <usgbccrc.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 1, 2019
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