Children's Cancer Research Fund v. Above.com Domain Privacy /
Transure Enterprise Ltd
Case No. D2009-0490
1. The Parties
The Complainant is Children's Cancer Research Fund of Los Angeles, California, United States of America, represented by Sidley Austin LLP, United States of America.
The Respondent is Above.com Domain Privacy / Transure Enterprise Ltd of Tortola, British Virgin Island, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ccrf-kids.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2009. On April 16, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 18, 2009, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 22, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 21, 2009.
The proceedings were suspended at the Complainant's request in order to allow the parties an opportunity to explore amicable settlement options between April 28, 2009 and May 27, 2009. On May 21, 2009, the Complainant requested re-institution of the proceedings. The proceedings were re-instituted on May 25, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 16, 2009.
The Center appointed Sir Ian Barker as the sole panelist in this matter on June 22, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant was founded in 1987 and is a national non-profit organisation based in Southern California, dedicated to supporting clinical research into paediatric cancer and to improving the medical environment for children suffering from cancer.
Since its foundation, the Complainant has used the mark CCRF to promote its services. It does not have a registered trademark. The initials stand for “Children's Cancer Research Fund”. The mark has been used extensively since 1987 in advertising, marketing, operational and promotional materials.
The Complainant operates a website at “www.ccrf-kids.org” which allows browsers to learn about its goals, accomplishments and activities. The website also serves as a vehicle for making donations which the Complainant has received from people in many places. This domain name was registered in 1999.
The Complainant provides promotional materials and organizes fundraising activities for child cancer research such as a run/walk in association with various professional sporting teams. All its publications and literature bear the mark CCRF.
The Complainant provides grants to enable oncologists to conduct research into paediatric cancer. Physicians are able to obtain applications for grants online through the said website.
The Respondent registered the disputed domain name on April 23, 2008. The website accessed by the disputed domain name includes links to health-related businesses and also to child-targeted businesses.
5. Parties' Contentions
A. Complainant
The Complainant has an unregistered common law trademark in which it has rights sufficient to justify bringing a complaint under the Policy.
The disputed domain name is confusingly similar to the Complainant's mark CCRF. The addition of the word “kids” does not detract from the mark.
Panels and Courts have consistently recognised that domain names which differ from trademarks only by generic extensions are confusingly similar to those trademarks – For example, Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd, WIPO Case No. D2000-0995, where the disputed domain names were <komatsuparts.com> and <komatsu-parts.com>. The word “parts” was not included in the Complainant's mark merely exacerbated the confusion as to the source of the Complainant's goods. Similarly, Hoffman-La Roche Inc. v Uniline Ltd, WIPO Case No. D2007-0454. There, the respondent registered the domain name <buy-tamiflu-online.net>. The Panel concluded that the difference between the domain name and the trademark “tamiflu” was irrelevant and that the disputed domain name was confusingly similar to the respondent's mark.
The Respondent has no legitimate right or interest in the disputed domain name. It has not shown any, nor does it come within the parameters of paragraph 4(c) of the Policy.
The Respondent has registered and used the disputed domain name in bad faith. The Respondent's website is clearly intended to direct Internet visitors interested in children's and health issues to companies other than the Complainant which provide services and products relating to children and health.
The Complainant's mark and name are distinctive and have no inherent meaning. Therefore, registration of a domain name similar or identical is strong evidence of bad faith since the distinctive nature of the mark reduces or eliminates any claim that the registrant's infringement was innocent – see Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
The Respondent must be presumed to have had actual knowledge of the Complainant's rights prior to registration and use because the Complainant had used the website for 10 years at the time of registration of the disputed domain name. The Complainant's marks are distinctive and internationally-known. Moreover, the Respondent has acted in bad faith in using a domain name similar to that of a legitimate business to direct traffic to a website where the Respondent obtains commercial gain through sponsored listings.
The Complainant has cited numerous WIPO UDRP cases demonstrating the Respondent's history of registering domain names in bad faith. The Respondent is a “serial infringer” - the sole business of which is to mislead Internet users by registering domain names that are confusingly similar to legitimate marks.
The Complainant's submissions were backed by a declaration under penalty from its Chief Executive, Ms. Contopoulos.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
A. Identical or Confusingly Similar
In the Panel's view, the Complaint, despite its lack of a registered trademark, has established that it has a common law trademark sufficient to justify a complaint under the Policy and to satisfy the requirements of Paragraph 4(a)(i) of the Policy.
The history of the Complainant's involvement in paediatric cancer research and in fostering the interests of children suffering from cancer is long-standing. It is clear from the evidence - not contested by the Respondent – that the Complainant has been heavily involved with fundraising for, publicity about and research into child cancer and the relief of suffering of child victims of that disease. Many of the decisions on whether an unregistered mark is a sufficient basis on which to found a complaint, deal with profit-driven entities. Issues such as sales and trading history can become relevant. A non-profit organization such as the Complainant must nonetheless show the necessary secondary meaning. In the Panel's view, the Complainant has shown this. Consequently, in the Panel's view, the Complainant has established a common law trademark.
There is a long line of jurisprudence under the Policy which establishes the proposition that there is confusing similarity where the disputed domain name incorporates the Complainant's mark, along with other identifying terms.
In Adela Comércio de Embalagens Artesanais Ltda v. Adrenalin Rush, Inc.,
WIPO Case No. D2007-0392 it was held that the domain name <aledaoriginal.com> was confusingly similar to the complainant's ALEDA trade mark. Citing Pfizer Inc v. United Pharmacy Ltd.,
WIPO Case No. D2001-0446 the panel in Adela found against the registrant because “generally a user of a mark may not avoid likely confusion by appropriating another's entire mark by adding descriptive or non-distinctive matter to it”.
In Government Employees Insurance Company (GEICO) v Forum LLC, WIPO Case No. D2005-1131 the panel held that the disputed domain names <geicoinsurancecompany.com> and <gecoinsurancecompany.com> were confusingly similar to the Complainant's registered GEICO service mark. While none of the many disputed domain names incorporated a mark identical to the registered mark, the panel found that all of the disputed domain names were visually and aurally similar. In Michelin Recherche et Technique S.A. v. Naxza.com,WIPO Case No. D2005-1107 the panel held that the disputed name <bfgoodrichsuperchallenge.com> was confusingly similar to the complainant's registered BFGOODRICH trademark. The addition of the generic term “superchallenge” did not prevent confusion and may have increased the likelihood of confusion due to the complainant's sponsorship of a race called The BF Goodrich Super Challenge.
The Panel considers that the Respondent's addition of the generic term “kids” to the disputed domain name increases the likelihood of confusion. This word involves a direct connection between the Complainant's mark and especially to the Complainant's role of fostering the interests of child cancer sufferers. Additionally, the disputed domain name is identical to the Complainant's own domain name apart from the suffix.
Other cases were cited by the Complainant but the Panel considers that it is unnecessary to refer to these. The circumstances of the present case amply justify a finding of confusing similarity between the disputed domain name and the Complainant's registered mark.
The first criterion under paragraph 4(a) of the Policy has been proved.
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name. It is clear that there is no relationship between the Respondent and the Complainant and the Respondent has not rebutted the Complainant's prima facie case that the Respondent lacks rights of legitimate interest in respect of the domain name.
Having found that the Respondent has no rights or legitimate interests in the disputed domain name, none of the matters under paragraph 4(c) of the Policy having been raised by the Respondent, the Panel holds that the second criterion under paragraph 4(a) of the Policy has been proved.
C. Registered and Used in Bad Faith
The Panel has no difficulty in inferring that there has been registration and use of the disputed domain name in bad faith. The Respondent's website is clearly intended to direct Internet users interested in children's and health issues to other companies providing services and products relating to children or health. This is an intentional misappropriation and redirection of Internet visitors and is direct evidence of bad faith – see NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768.
Moreover, the use by the Complainant of its website, <ccrf-kids.org> for some 9 years prior to the registration of the disputed domain name indicates that the Respondent likely well knew of the existence of the Complainant and its activities and is “cashing in” on the fame of the Complainant's mark by marketing products relating to health and to children on its website.
Also, the track record of the Respondent as spelled out in the numerous decisions cited by the Complainant indicates a pattern of conduct by the Respondent of registering domain names in bad faith by registering domain names similar to the trademarks of others.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ccrf-kids.com> be transferred to the Complainant.
Hon. Sir Ian Barker Sole Panelist
Dated: June 30, 2009
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