Grand Lodge Fraternal Order of Police v.
Forum LLC
Claim
Number: FA0506000493393
Complainant, Grand Lodge Fraternal Order of Police (“Complainant”),
is represented by Jeffrey D. Houser, 500 South Front Street, Suite 1200,
Columbus, OH 43215. Respondent is Forum LLC (“Respondent”), Domain Admin,
P.O. Box 2331, Roseau, Roseau 00152 DM.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <grandlodgefop.com>, registered with Fabulous.com
Pty Ltd.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 13, 2005.
On
June 8, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration
Forum that the domain name <grandlodgefop.com> is registered with Fabulous.com
Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that
Respondent is bound by the Fabulous.com Pty Ltd. 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
June 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 12,
2005 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@grandlodgefop.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
July 15, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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 <grandlodgefop.com>
domain name is confusingly similar to Complainant’s FOP mark.
2. Respondent does not have any rights or
legitimate interests in the <grandlodgefop.com> domain name.
3. Respondent registered and used the <grandlodgefop.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Grand Lodge Fraternal Order of Police, is the largest professional police organization
in the United States. Complainant’s
professionals work on behalf of law enforcement officers from all ranks and
levels of government. Complainant
registered the FOP mark in 2003 with the United States Patent and Trademark
Office (Reg. No. 2,763,859 issued September 16, 2003).
Complainant
registered the <grandlodgefop.org> domain name on June 4, 1997. Complainant has owned and maintained its
website since that date.
On
December 3, 2004, Respondent registered the <grandlodgefop.com>
domain name. Respondent’s website
features several links that directly compete with and relate to Complainant’s
services, including links for law enforcement, police, police officers,
hunting, and rifles. Respondent
receives click-through fees for diverting Internet users to these competing
websites.
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 a registration for its FOP mark with the USPTO. Panels have held that registration with the USPTO establishes a
complainant’s rights in the mark. See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Because
Respondent has not disputed Complainant’s rights in the FOP mark, the Panel
holds that Complainant’s registration with the USPTO establishes rights in the
mark for purposes of Policy ¶ 4(a)(i). See 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 has the burden of refuting this assumption.”).
Complainant
contends that Respondent’s <grandlodgefop.com> domain name is
confusingly similar to Complainant’s FOP mark because it incorporates
Complainant’s mark in its entirety.
Past panels have held that a respondent’s registration of a domain name
that consists of a three-letter mark in combination with generic terms that
relate to Complainant’s mark does not negate confusing similarity under Policy
¶ 4(a)(i). See IDT Corp. v. Krishan,
FA 206315 (Nat. Arb. Forum Jan. 20, 2004) (holding that the respondent’s
<idtcallingcards.com> domain name is confusingly similar to the
complainant’s IDT mark because the disputed domain name appropriates the
complainant’s mark and adds descriptive terms to the end of the mark); see
also DHL Operations B.V. v. Kazempour, D2004-1094 (WIPO Feb. 24, 2005)
(finding that because adding the generic term “mail” to the complainant’s DHL
mark would create confusion among Internet users due to the relation between
the generic term and the mark, the disputed domain name is confusingly similar
for purposes of Policy 4(a)(i)). In
this case, Respondent uses Complainant’s FOP mark and adds the descriptive
terms “grand” and “lodge.” Because
Complainant has been operating its <grandlodgefop.org> website since 1997
and because the terms “grand” and “lodge” describe the Complainant, this Panel
holds that the addition of the terms does not sufficiently differentiate the
<grandlodgefop.com> domain name from the mark pursuant to Policy ¶
4(a)(i).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
argues that Respondent does not have rights or legitimate interests in the
contested domain name. By making this
assertion, Complainant has met its initial burden of establishing a prima
facie case. Thus, the burden of
establishing rights or legitimate interests in the disputed domain name shifts
to Respondent. 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent.”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(i).
Complainant
presents evidence that indicates that Respondent is using the <grandlodgefop.com>
domain name to operate a website that features links to search engines and
services that directly compete with Complainant. Accessing the website results in pop-up advertisements for which
Respondent presumably also receives compensation. Because Respondent has not provided a response to refute
Complainant’s allegations, this Panel accepts as true Complainant’s
descriptions of the website. See Am. Express Co. v. 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.”). Thus, the Panel holds that Respondent is
capitalizing on the confusing similarity of the <grandlodgefop.com>
domain name by redirecting Internet users to competing links, search engines,
and pop-up advertisements.
Consequently, the Panel concludes that Respondent’s diversion does not
constitute a bona fide offering of goods or services or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb.
Forum May 12, 2003) (finding that the respondent did not have rights or
legitimate interests in a domain name that used the complainant’s mark and
redirected Internet users to website that pays domain name registrants for
referring those users to its search engine and pop-up advertisements); see
also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. 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); see
also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum
Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar
domain name to operate a pay-per-click search engine, in competition with the
complainant, was not a bona fide offering of goods or services).
Additionally,
Complainant argues that Respondent lacks rights or legitimate interests because
it is not commonly known by the disputed domain name. Because Respondent failed to submit a response, the Panel lacks
any evidence that would indicate otherwise and, therefore, accepts
Complainant’s allegations as true. See
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertions in this
regard.”). Thus, the Panel finds that
Respondent is not commonly known by the disputed domain name and lacks rights
or legitimate interests under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail”); see also Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent
is not known by the mark).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
registered the confusingly similar <grandlodgefop.com> domain name
for commercial gain by creating a likelihood of confusion with Complainant’s
marks and website. Respondent takes
advantage of this Internet user confusion by earning click-through fees through
links, search engines, and pop-up advertisements on its website. The Panel holds that Respondent’s
diversionary use of the disputed domain name constitutes bad faith registration
and use under Policy ¶ 4(b)(iv). See Hancock
Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003):
Respondent’s
use of the <hancockfabric.com> domain name, a domain name confusingly
similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to
a website that provides a selection of jokes demonstrates Respondent’ bad faith
use of the disputed domain name because Respondent has created a likelihood of
confusion as to the source, sponsorship, affiliation or endorsement of
Respondent’s website, which evidences bad faith registration and use under Policy
¶ 4(b)(iv).
Id.; see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
Furthermore, Respondent registered the <grandlodgefop.com>
domain name with actual knowledge of Complainant’s rights in the POF mark. Respondent wholly incorporated Complainant’s
mark into the disputed domain name and added two terms, “grand” and “lodge,”
that describe Complainant.
Additionally, the obvious link between Complainant’s <grandlodgefop.org>
domain name and the disputed domain name suggests that Respondent had actual
knowledge of Complainant’s rights.
Moreover, competing links and search terms relevant to Complainant’s
services that are featured on Respondent’s website provide further evidence
that Respondent was aware of Complainant’s rights at the time of
registration. Because of the obvious
link between the disputed domain name and Complainant’s rights in the mark, the
Panel finds that Respondent had actual knowledge of Complainant’s rights and
that this knowledge constitutes bad faith use and registration under Policy ¶
4(c)(iii). See Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that, because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration).
Therefore, the
Panel finds that 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 <grandlodgefop.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
July 28, 2005
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