University of the Nations, Kona DBA YWAM Kona v. Pham Dinh Nhut
Claim Number: FA1606001680308
Complainant is University of the Nations, Kona DBA YWAM Kona (”Complainant”), Hawaii, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ywamkona.org>, registered with April Sea Information Technology Company Limited.
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 June 20, 2016; the Forum received payment on June 20, 2016. The Complaint was received in both Vietnamese and English.
On July 19, 2016, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <ywamkona.org> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 July 21, 2016, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of August 10, 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@ywamkona.org. Also on July 21, 2016, the Vietnamese language 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 August 16, 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, Youth With a Mission, uses the YWAM mark in connection with its business as an international organization with over 1000 affiliate locations and over 40,000 volunteers. Complainant’s rights in the YWAM mark stem from registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,683,201, registered Apr. 14, 1992). Additionally, Complainant has a state registration of the YWAM KONA mark (Cert. No. 4,154,523, registered Dec. 10, 2014). Respondent’s domain <ywamkona.org> is confusingly similar to the YWAM mark as the domain includes the entire mark and only differs through the addition of the generic top-level domain (“gTLD”) “.org,” and the geographic term “kona.” Additionally, confusing similarity is likely because Complainant and its affiliates hold multiple domain names using the naming convention YWAM + location.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no relationship with Complainant or agreement that would allow for Respondent to use Complainant’s YWAM mark. Respondent’s use of the disputed domains, to either not actively use the domain or to host generic search pages with advertisements, demonstrates a lack of rights or legitimate interests.
3. Respondent has registered and is using the domain in bad faith. Respondent’s bad faith can be found through Respondent’s extensive pattern of registering infringing domains. Respondent registered the domain to prevent Complainant from being able to reflect its mark. Respondent also shows bad faith through disrupting Complainant’s business. Respondent intends to profit from the confusing similarity of the domain name to Complainant’s marks for profit.
B. Respondent:
1. Respondent has not submitted a Response in this proceeding.
LANGUAGE OF THE PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
1. Respondent’s <ywamkona.org> domain name is confusingly similar to Complainant’s YWAM mark.
2. Respondent does not have any rights or legitimate interests in the <ywamkona.org> domain name.
3. Respondent registered or used the <ywamkona.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 claims to have rights in the YWAM mark based on registration of the mark with the USPTO (Reg. No. 1,683,201, registered Apr. 14, 1992). See Compl., at Attached Ex. 1. Panels have routinely found, and this Panel finds, that a complainant has rights in a mark based on registration of the mark with the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Complainant next claims that Respondent’s <ywamkona.org> domain is confusingly similar to the YWAM mark. Respondent’s domain includes the YWAM mark and differs from the mark through the addition of the gTLD “.org,” and the geographic term, “kona,” presumably for the district in Hawaii. Panels routinely conclude that the presence of the gTLD “.org,” is not relevant to an analysis of confusing similarity. See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”). Panels have also held that geographic terms do not distinguish a domain from the mark to which the term is attached. See Ticketmaster Corp. v. Kumar, FA 744436 (Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Taken together, this Panel finds that the disputed domain is confusingly similar to the YWAM mark for purposes of 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 contends that Respondent has no relationship with Complainant or agreement that would allow for Respondent to use Complainant’s YWAM mark. Additionally, WHOIS information associated with the domain name identifies Respondent as, “Pham Dinh Nhut,” which does not appear to resemble the disputed domain name. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of contradictory information. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel finds that Respondent’s WHOIS information and lack of evidence showing an affiliation between the parties shows that Respondent is not commonly known by the disputed domain per Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the disputed domain, to either not actively use the domain or to host generic search pages with advertisements, demonstrates a lack of rights or legitimate interests. Respondent’s domain appears to most recently resolve to a website that hosts generic links related to Complainant’s business. See Compl., at Attached Ex. 11. Titles of the links on the website resolving from Respondent’s domain include, “Outreach Ministry,” “Discipleship Training School,” and “Ministry Training.” See id. Clicking on these links sends the user to a page showing related advertisements. Id. Panels have held that using a disputed domain to host advertisements related to a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user). The Panel concludes that Respondent is not using the disputed domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant contends that Respondent’s bad faith can be found through Respondent’s extensive pattern of registering infringing domains. Respondent, identified through WHOIS information as “Pham Dinh Nhut,” has been a respondent in multiple domain disputes which resulted in domain transfers. See Compl., at Attached Ex. 16. Panels have routinely found bad faith in a proceeding where it is shown that a respondent had previously registered multiple infringing domains which were transferred according to the UDRP Policy. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). The Panel concludes that Respondent’s prior UDRP proceedings which led to domain transfers demonstrate a pattern of bad faith registration under Policy ¶ 4(b)(ii).
Complainant also claims that Respondent intends to profit from the confusing similarity of the domain name to Complainant’s marks for profit. Complainant believes that the intent to profit from the confusing similarity is evident from Respondent monetizing the domain through use of search terms and adds that target aspects of Complainant’s business. As stated previously, Respondent’s domain most recently resolves to a website hosting various links with titles such as, “Outreach Ministry,” “Discipleship Training School,” and “Ministry Training.” See Compl., at Attached Ex. 11. Panels have held that a respondent using a confusingly similar domain to generate advertising revenue does so in bad faith under Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel finds that Respondent’s behavior demonstrates a bad faith intent to confuse and attract internet users for profit under 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 <ywamkona.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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