Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Compassion In Action , Santa Monica, CA, USA ("Complainant"). The Respondent is Donald McDermott, Framingham, MA, USA ("Respondent").

The domain names at issue are compassioninaction.org, compassioninaction.com, registered with Network Solutions.

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 the Panelist in this proceeding.

P. Jay Hines as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on November 7, 2000; The Forum received a hard copy of the Complaint on November 8, 2000.

On November 9, 2000, Network Solutions confirmed by e-mail to The Forum that the domain names compassioninaction.org, compassioninaction.com are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 14, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 4, 2000 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@compassioninaction.org, compassioninaction.com by e-mail.

On December 5, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed P. Jay Hines as Panelist.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

Complainant owns U.S. Registration No. 2,351,497 for the mark COMPASSION IN ACTION covering the following goods and services:

The registration issued on May 23, 2000 and claims use in commerce in connection with all of the above goods and services as of October 3, 1997. Complainant claims that it also uses the mark for fundraising purposes "online, in print, broadcast and other media."

Complainant contends that the domain names are identical to its trademark. Complainant claims that Respondent has no rights or legitimate interest in the domain names as he is not affiliated with the Complainant. While Respondent has stated that he registered the domain names on April 28, 1999 in order to promote an event for SEVA Foundation, a world-wide service organization, on an independent contractor basis, the domain names are now both directed to a web site entitled "Hot Models." Complainant contends that Respondent is not and has never been commonly known by the name "Compassion in Action," that Respondent is not making a legitimate non-commercial or fair use of the domain names and that the usage referring to the "Hot Models" site is disparaging and seriously tarnishes Complainant’s mark.

Complainant sent a certified letter to Respondent on August 25, 2000 requesting transfer of the domain names to Compassion in Action for the cost of the registrations. The letter was delivered on August 31, 2000. In Complainant’s first telephone conference with Respondent on October 25, 2000, Respondent indicated that he might be willing to sell the domain names. Complainant contends that this amounts to bad faith. Likewise, Complainant contends that Respondent was non-responsive on several occasions and that the e-mail address provided to the domain name registrar for the administrative contact was not valid. Complainant further contends that Respondent indicated in a telephone conference on October 28, 2000 that he would provide a proposal for resolution, but that he did not. These actions, Complainant contends, amount to registration and use in bad faith.

Complainant does not know if Respondent intends to prevent it, as the trademark and service mark owner, from reflecting the mark in a corresponding domain name and does not believe that Respondent initially registered the domain names primarily for the purpose of disrupting its business, as the parties are not competitors. However, Complainant contends that it has lost potential fundraising income due to its inability to have an Internet presence at key times for fundraising. Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the "Hot Models" web site by creating confusion about the sponsorship of the site and the status of Complainant’s organization.

B. Respondent

Respondent, doing business as Extraordinary Events, Inc., contends that it purchased the domain names and produced a conference with the title "Compassion in Action Conference" prior to the creation of Complainant’s Compassion in Action non-profit organization. Respondent indicates that the term "Compassion in Action" originates from a book of the same name by Ram Dass, 1992, a copy of the cover and copyright page being provided. Ram Dass is the founder of the SEVA organization which Respondent claims has long used the term "compassion in action."

Respondent has produced several brochures and promotional materials regarding the Compassion in Action Conference, held December 10 to 12, 1999, in Marlborough, Massachusetts. Respondent indicates that its organization dedicated two staff people for a full year in planning, marketing and producing the conference and that the organization specializes in raising money for non-profit organizations. The SEVA Foundation was the sponsor and beneficiary of the conference proceeds, but is unrelated to Respondent. Respondent intends to produce future events and to use the domain names in doing so.

Respondent indicates that, since it was not currently working on a Compassion in Action Conference, it was unaware that the domain names were directed to the "Hot Models" web site. Respondent contends that when it changed Internet service providers, the original ISP, PSINet, assigned its IP address to the "Hot Models" site. Respondent provides copies of e-mails demonstrating its effort to clear up the problem, together with an apology from PSINet. The domain names no longer point to the "Hot Models" site.

Respondent contends that it initiated telephone calls to Complainant and that it did indeed intend to provide a proposed agreement which would have provided beneficial publicity to Complainant, but apparently not a sale or transfer of the domain names.

Respondent contends that Complainant changed its name from "Brigade" to "Compassion in Action" and registered the domain name compassioninaction.net with full knowledge of Respondent’s domain name registrations and its use of the term for a national conference.

In conclusion, Respondent requests the panel to determine that the name "Compassion in Action" was first nationally established by Extraordinary Events and to make a finding of reverse domain name hijacking.

C. Complainant’s Further Statement

The Panelist has also reviewed the Complainant’s reply or rebuttal, which contends that Respondent, not being affiliated with SEVA Foundation or Ram Dass, does not have a current legitimate interest in the mark.

Complainant acknowledges that Respondent may have been unfairly implicated in the "Hot Models" usage of the domains, but claims that Respondent is legally responsible, through negligence, for the tarnishment of its mark.

Complainant indicates that its organization was formed over three years ago and has used the name and mark in commerce since 1997, well before Respondent’s domain name registrations and conference event in 1999. Complainant believes that, since Respondent does not currently have a contract or other affiliation with SEVA Foundation, that he has abandoned the domain names and no longer has a legitimate interest in retaining them.

Complainant reiterates its prior use of the mark and denies that this is a situation of reverse domain name hijacking.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.

The Complainant’s registered mark and its trade name are identical to the subject domain names. While Complainant has not presented evidence of its first use of the trade name and mark, the Panelist accepts as prima facie evidence the dates of use recited on the face of Registration No. 2,351,497, namely October 3, 1997.

Respondent has presented substantial evidence of its use of a name corresponding to the subject domain names in connection with a bona fide offering of services. Respondent, as the producer of the Compassion in Action Conference, held December 10 to 12, 1999, long before notice of the subject dispute, had a legitimate interest in registering the subject domain names. Whether or not Respondent made use of the domain names, and whether or not Respondent has made use of the domain name since the initial conference, the circumstances fall within the parameters of Paragraph 4(c)(i) of the UDRP. Respondent, as an event planner for non-profit organizations, need not now have an affiliation or relationship with the sponsor and beneficiary of the initial conference in order to demonstrate a legitimate interest in maintaining the domain names. It also appears that Respondent made a legitimate non-commercial use of the name corresponding to the subject domain names.

Respondent’s use of the name Compassion in Action Conference prior to any notice of the dispute with Complainant indicates that Respondent did not acquire the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant. The Panelist believes that the verbal indication to Complainant that Respondent might be willing to sell the domain names, without any indication of the consideration, does not fall within the criteria of Paragraph 4(b)(i) of the UDRP.

The Panelist believes that the "Hot Models" usage was inadvertent and unintentional. Thus, there was no intention to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the web site. Nor was there an intent to tarnish the Complainant’s mark.

Any contentions of either of the parties not addressed in this discussion are considered by the Panelist to be beyond the scope of the UDRP.

The Rules define reverse domain name hijacking as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. The Panelist does not believe that Complaint was brought in bad faith or was in any way an attempt to abuse the administrative proceeding.

For the foregoing reasons, the Panelist finds that the Complainant failed to establish all three elements required by ICANN policy paragraph 4(a), and, accordingly, it is the decision of the Panelist that the relief requested by the Complainant be denied.