Everytown for Gun Safety Action Fund, Inc. v. IGI NA / IGI NA CORP
Claim Number: FA2005001897076
Complainant is Everytown for Gun Safety Action Fund, Inc. (“Complainant”), represented by Halle B. Markus of Venable LLP, District of Columbia, United States. Respondent is IGI NA / IGI NA CORP (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <everyfamily.org> (“Domain Name”), registered with Google 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2020; the Forum received payment on May 20, 2020.
On May 20, 2020, Google LLC confirmed by e-mail to the Forum that the <everyfamily.org> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 May 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2020 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@everyfamily.org. Also on May 26, 2020, 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 June 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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, Everytown for Gun Safety Action Fund, Inc., is a nonprofit organization that advocates for common-sense reforms to reduce gun violence and build safer community for every family in America. Complainant was formed in 2014 and operates a number of distinctive groups from different websites, including <everytown.org> and <momsdemandaction.org> (“MDA Website”).
Complainant has rights in the EVERYTOWN mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,092,082, registered November 29, 2016). Respondent’s <everyfamily.org> domain name is confusingly similar to Complainant’s EVERYTOWN mark, as the domain name partially incorporates the dominant portion of the mark, EVERY, along with the descriptive term “family” and the “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <everyfamily.org> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use the EVERYTOWN mark in any manner. Respondent’s use of the Domain Name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the Domain Name to compete with Complainant for donations through passing itself of as Complainant or a related entity.
Respondent registered and is using the <everyfamily.org> domain name in bad faith. Respondent, through the copying of photographs and text from the MDA Website, attempts to pass off as Complainant and divert donors to Respondent’s own website at the Domain Name (“Respondent’s Website”). Respondent had actual knowledge of Complainant’s rights in the EVERYTOWN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the EVERYTOWN mark. The Domain Name is identical or confusingly similar to Complainant’s EVERYTOWN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the EVERYTOWN mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 5,092,082, registered November 29, 2016). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
The Panel finds that the <everyfamily.org> domain name is confusing similar to Complainant’s EVERYTOWN mark as the Domain Name incorporates a dominant portion of the mark, EVERY, along with the descriptive term “family” (which is a term associated with Complainant’s activism) and the “.org” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”).
In support of the above conclusion the Panel notes that section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition states that “In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.” In the present case, by reason of the facts outlined under the elements below, it is clear that Respondent has sought to target and indeed pass itself off as Complainant through the use of the Domain Name. The Panel finds that the intention of Respondent to mislead Internet users into thinking it is Complainant or connected with Complainant confirms the confusingly similar nature of the Domain Name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the EVERYTOWN mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “IGI NA / IGI NA CORP” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to Respondent’s Website through which the Respondent promotes activism associated with ending gun violence. The overall design of Respondent’s Website, as well as significant portions of text and photographs, is copied directly from Complainant’s MDA Website. Respondent does not identify itself or provide any contact details on its website, or indeed any indication that the Respondent’s Website is linked to an actual organization. Rather Respondent’s website simply suggests that it is operated by “Vote Blue” and “A Network of Privacy Policy”. Respondent’s Website invites visitors to provide their personal details and donate directly to Respondent through a PayPal link. The Respondent’s Website gives the false impression that it is affiliated with, and authorized by, Complainant, through the use of photographs and material from the MDA website, competes with Complainant by soliciting donations for activism associated with ending gun violence, and indeed may well mislead the public by asserting that donations made through Respondent’s Website will go to an official organization associated with ending gun violence, when this does not appear to be the case. Such conduct is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Name, December 17, 2019, Respondent had actual knowledge of Complainant’s EVERYTOWN mark. The Respondent uses the Domain Name to pass itself off as Complainant by copying text and photographs from Complainant’s MDA Website. It does so for financial gain (through visitors making donations or providing contact details through the Respondent’s Website) or to disrupt Complainant’s (non-profit) business (by diverting potential donors from the Complainant’s legitimate activism to Respondent’s Website). In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent has used the Respondent’s Website associated with the Domain Name to attempt to pass itself off as the Complainant, either to disrupt the Complainant’s (non-profit) business or for financial gain. Using a disputed domain name to pass off as the Complainant for commercial gain can demonstrate bad faith under Policy ¶¶ 4(b) (iii) and (iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶¶ 4(b) (iii) and (iv).
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 <everyfamily.org> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: June 23, 2020
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