Focus on the Family v. Titan c/o Titan Net
Claim Number: FA0610000830702
Complainant is Focus on the Family (“Complainant”), represented by Cynthia A. Casby, of Holland & Knight LLP, 633 W. Fifth Street, Suite 2100, Los Angeles, CA 90071. Respondent is Titan c/o Titan Net (“Respondent”), Net, Kenyatta Ave., PO Box 4276-30100, Eldoret 30100, KE.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <adventureinodyssey.org>, registered with Intercosmos Media Group Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 31, 2006.
On October 31, 2006, Intercosmos Media Group Inc. confirmed by e-mail to the National Arbitration Forum that the <adventureinodyssey.org> domain name is registered with Intercosmos Media Group Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group Inc. has verified that Respondent is bound by the Intercosmos Media Group Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@adventureinodyssey.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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." 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 makes the following assertions:
1. Respondent’s <adventureinodyssey.org> domain name is confusingly similar to Complainant’s ADVENTURES IN ODYSSEY mark.
2. Respondent does not have any rights or legitimate interests in the <adventureinodyssey.org> domain name.
3. Respondent registered and used the <adventureinodyssey.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Focus on the Family, is a Christian ministry engaged in producing numerous products related to family issues, for example educational seminars, a variety of publications, motion pictures, videos, websites, and television and radio programs. Complainant holds multiple United States Patent and Trademark Office (“USPTO”) for the ADVENTURES IN ODYSSEY mark (Reg. No. 1,732,534 issued November 17, 1992; Reg. No. 1,746,247 issued January 12, 1993; Reg. No. 2,578,493 issued June 11, 2002). Complainant utilizes the ADVENTURES IN ODYSSEY mark in connection with a series of radio and video programs for children. Complainant holds the registration for the <adventuresinodyssey.org> domain name for use in connection with its website offering information and goods in connection with the ADVENTURES IN ODYSSEY series.
Respondent registered the <adventureinodyssey.org> domain name on February 9, 2006. Respondent is using the disputed domain name to operate a website composed entirely of links to third-party websites. Some of the links appear to offer goods similar to those offered by Complainant, while others are unrelated to Complainant. Additionally, Respondent has been involved in numerous other UDRP disputes. Respondent has had twenty-one disputes decided against Respondent by the World Intellectual Property Organization (WIPO) and nine disputes decided against Respondent through the National Arbitration Forum. The details of many of Respondent’s previous disputes are discussed in Dr. Ing. H.c. F. Porsche AG v. Kentech, Inc., D2005-0890 (WIPO Oct. 25, 2005).
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."
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) (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.”).
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.
Complainant holds numerous USPTO registrations for the
ADVENTURES IN ODYSSEY mark. The Panel
finds that Complainant’s USPTO registrations establish Complainant’s rights in
the mark pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive [or] have
acquired secondary meaning.”); see also
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive.").
Respondent’s <adventureinodyssey.org> domain name is confusingly similar
to Complainant’s ADVENTURES IN ODYSSEY mark.
The disputed domain name includes Complainant’s mark with the minor
alteration of the removal of the letter “s.”
The removal of one letter from Complainant’s mark does not differentiate
the disputed domain name from Complainant’s mark. See Dow Jones & Co.,
Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such “generic” typos do not change
respondent’s infringement on a core trademark held by the complainant); see also Am.
Airlines, Inc. v. Data Art Corp.,
FA 94908 (Nat. Arb. Forum July 11, 2000) (finding <americanairline.com>
"effectively identical and certainly confusingly similar" to the
complainant's AMERICAN AIRLINES registered marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s assertion that Respondent lacks rights or
legitimate interests in the disputed domain name establishes a prima facie case pursuant to the Policy,
shifting the burden to Respondent to demonstrate that it does have rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent failed to avail itself of the opportunity to provide
the Panel with evidence or arguments in support of its rights or legitimate
interests by not submitting a Response.
The Panel finds that Respondent’s failure to respond is evidence that
Respondent lacks rights or legitimate interests in the disputed domain
name. Nonetheless, the Panel will
evaluate the available evidence to determine whether Respondent has rights or
legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent.”);
see also Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”).
Respondent is using the disputed domain name to operate a
website featuring links to third-party websites. Many of the linked websites appear to offer goods similar to
those offered by Complainant, while others are unrelated to Complainant. Presumably, Respondent receives
pay-per-click referral fees from the linked websites. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA
95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website,
which is blank but for links to other websites, is not a legitimate use of the
domain names); see also TM Acquisition
Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that the respondent’s diversionary use of the complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to the complainant’s competitors, was not a bona fide offering of goods or services).
There is no available evidence that
Respondent is commonly known by the <adventureinodyssey.org>
domain name. Respondent’s WHOIS
information identifies Respondent as “Titan Net,” a name with no obvious
relationship to the disputed domain name.
The Panel finds that Respondent is not commonly known by the disputed
domain name as contemplated by Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Am.
W. Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent
is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds further evidence that
Respondent lacks rights or legitimate interests in the disputed domain name
based on Respondent’s actions as a typosquatter. Respondent registered a domain name that differs by one letter
from Complainant’s mark. Such a
registration relies on Internet users typing or spelling mistakes to redirect
traffic to Respondent’s website. The
Panel finds that Respondent’s typosquatting supports a finding that Respondent
lacks rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14,
2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names.”); see also IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and
legitimate interests in the disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has illustrated a pattern of registering and
using in bad faith domain names identical or confusingly similar to others’
marks. In close to thirty different
disputes, domain names have been transferred from Respondent to
complainants. The Panel finds that this
pattern of behavior is indicative of bad faith registration and use pursuant to
Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb.
Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by
registering multiple domain names that infringe upon others’ famous and
registered trademarks); see also
Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad
faith under Policy ¶ 4(b)(ii) where the respondent registered multiple
infringing domain names containing the trademarks or service marks of
other widely known Australian businesses).
Respondent’s <adventureinodyssey.org>
domain name is confusingly similar to Complainant’s ADVENTURES IN ODYSSEY
mark. Internet users seeking
Complainant’s genuine website at <adventuresinodyssey.org> could easily
find themselves redirected to Respondent’s website through a simple typographical
or spelling error. Misdirected Internet
users may mistakenly believe that Respondent’s website is sponsored by or
affiliated with Complainant. Respondent
is presumably profiting from this confusion by collecting pay-per-click
referral fees from the links located at Respondent’s website. The Panel finds that such use is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a
website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adventureinodyssey.org> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 15, 2006
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