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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Spence-Chapin Services
to Families and Children v. Spence-Chapin, LLC a/k/a Stanley Wynman
Claim Number: FA0203000105945
PARTIES
The
Complainant is Katherine S. Legg Spence-Chapin Services to Families and
Children, New York, NY (“Complainant”) represented by Katherine S. Legg,
of Spence-Chapin Services to Families and Children. The Respondent is Spence-Chapin, LLC
a/k/a Stanley Wynman, Ridgefield Park, NJ (“Respondent).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <spence-chapin.biz>,
and <spence-chapin-llc.com> registered with Register.com.
PANEL
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.
Honorable William H. Andrews, Arbitrator
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (“the Forum”) electronically on March 19, 2002; the
Forum received
a hard copy of the Complaint on March 20, 2002.
On March 20, 2002, Register.com confirmed by
e-mail to the Forum that the domain names <spence-chapin.biz>, and
<spence-chapin-llc.com> are registered with Register.com and that
the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com
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 March 21, 2002, a Notification of Complaint
and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of April 10, 2002 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@spence-chapin.biz
and postmaster@spence-chapin-llc.com by e-mail.
A timely Response was received and determined to
be complete on April 10, 2002.
Complainant submitted a timely Additional
Submission on April 15, 2002, and Respondent submitted a timely Additional
Submission on
April 19, 2002. Each of
the supplemental designations was given due consideration in arriving at the
decision.
Pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed the Honorable
William
H. Andrews as Panelist.
RELIEF
SOUGHT
The Complainant requests that the domain name be
transferred from the Respondent to the Complainant.
PARTIES’
CONTENTIONS
A. Complainant
1) Complainant contends that both the domain
names, <spence-chapin-llc.com> and <spence-chapin.biz>
are confusingly similar to Complainants’ domain name <spence-chapin.org>
and <spence-chapin.com>; Complainant claims
a common law rights to the
trademark/service mark spence-chapin
2) Complainant contends the Respondent has no
right or legitimate interests in the disputed domain names.
3) Complainant contends that Respondent’s
registration and use of the disputed domain names is in bad faith
B. Respondent
1) Respondent contends that the Complainant
failed to properly serve the Complaint upon Stanley Wynman, as the registrant
2) Respondent contends that Respondent does have
rights or legitimate interests in the disputed domain name
3) Respondent contests that the disputed domain
names are confusingly similar
4)
Respondent contests that Respondent acted in bad faith by registering and using
the disputed name.
FINDINGS
1. Spence-Chapin
Services to Families and Children, is known to the public and adoption
community as Spence-Chapin
2. Spence-Chapin is incorporated in the state
of New York
3. Complainant has been
providing adoption services under the name Spence-Chapin since 1948.
4. Complainant has been
using its current domain name, <spence-chapin.org> In
conjunction with its
website since 1996.
5. Complainant has
common law rights to usage of the mark SPENCE-CHAPIN, as the same was found in
a prior proceeding involving Stanley
Wynman, who is associated with Respondent.
6. Spence-Chapin is
well-known locally and nationally as a leader in adoption.
7. Among other things,
Spence-Chapin provides adoption education programs to the public, and has
placed approximately 16,000 children
in adoptive homes since its
inception in the early
1900's.
8. Respondent is not
affiliated with or in any way sponsored by the Complainant and has never
represented Spence-Chapin or its programs
in any aspect.
9. Respondent produces,
among other things, information on adoption, and seeks to use the sites to register criticism of
Complainant.
DISCUSSION
Paragraph 15(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (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 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.
Identical and/or
Confusingly Similar
Respondent contends that
Complainant’s claim must fail, because Complainant has no registered service or
trade marks in the Spence-Chapin
name.
The Complainant, however, has demonstrated through its long-time usage,
and through its presence on the Internet since 1996, that
it has a common law
right to the Spence-Chapin name.
Specifically, the exhibits submitted by Complainant establish that it
has used the Spence-Chapin name on its brochures and annual
reports for more
than one-half century. Moreover, the
Complainant has operated under the domain name of <spence-chapin.org> and
in a prior proceeding the right to <spence-chapin.com>
was transferred to
it as well.
The Panel now finds that
Respondent’s <spence-chapin.biz> is identical to Complainant’s
common law SPENCE-CHAPIN mark because it includes Complainant’s mark in its
entirety, merely adding
the generic top-level domain name “.biz.” See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain
(gTLD) “.com” after the
name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain
name for the purpose of
determining whether it is identical or confusingly similar).
Respondent’s <spence-chapin-llc.com>
domain name is confusingly similar to Complainant’s SPENCE-CHAPIN mark
because it includes Complainant’s name in its entirety, merely
adding a hyphen,
the generic abbreviation “llc”, and “.com.”
See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27,
2000) (finding the addition of a hyphen and .com are not distinguishing
features”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the
Complainant combined with a generic word or
term). Moreover, both the disputed
domain names are confusingly similar because their content consists of adoption
information, the very
services Complainant provides. Respondent admits in the initial Response that it is involved in
the adoption community, as is Spence-Chapin.
See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc.,
FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion
is further increased by the fact that the Respondent
and [Complainant] operate
within the same industry”).
Finally, Respondent
argues that Complainant should have registered every possible variation of the
spence-chapin name, and that its
failure to do so should defeat its claim. Complainant, however, is not required to
register every domain name that incorporates its mark to have rights in the
mark. Moreover, the evidence indicates
that Complainant has registered several variations of the name. See Wal-Mart Stores, Inc. v.
MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the
Complainant to register all possible domain names that surround
its substantive
mark does not hinder Complainant’s rights in the mark).
Rights or Legitimate
Interests
Respondent contends
that, even if Complainant has rights in the mark, Respondent has legitimate
interests because the name will be
used for non-commercial reasons including
publicizing criticism of the Complainant.
Respondent contends, among other things, that it has a First Amendment
right to participate in such activities.
In its additional submission, Complainant contends that, just because
Respondent asserts First Amendment rights, does not mean that
it can infringe
on Complainant’s mark by using identical and/or confusingly similar domain
names. While Respondent may have First
Amendment rights as to the content of its site, that does not entitle it to use
the same or similar
domain name of Complainant to accomplish its goals and
further its mission. See Robo
Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000)
(rejecting Respondent’s asserted rights or legitimate interest in the domain
name <roboenterprises-investors.com>,
noting that, while the content of
Respondent’s website may enjoy First Amendment and fair use protection, those
protections do not
equate to rights or a legitimate interest “with respect to
[a] domain name” which is confusingly similar to another’s trademark);
see
also Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000)
(finding that Respondent had no rights or legitimate interest in the domain
name even though Respondent
stated that it intended to use the domain name for
“public comment” on the Internet).
The Panel finds that
Respondent’s use of both the identical domain name and confusingly similar
domain name to offer information on
adoptive services, the same service
Complainant has offered since 1948, indicates that it intends to divert
Complainant’s customers
to its website; and it therefore was not making a bona
fide offering of goods under Policy ¶ 4(c)(i) or a legitimate noncommercial
or
fair use under Policy ¶ 4(c)(iii). See
Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)
(finding no rights or legitimate interests where Respondent diverted
Complainant’s customers to
his websites); see also Vapor Blast Mfg. Co. v. R
& S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that
Respondent’s commercial use of the domain name to confuse and divert Internet
traffic is not a legitimate use of the domain name); see also Kosmea Pty
Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the
domain name where Respondent has an intention to divert consumers of
Complainant’s
products to Respondent’s site by using Complainant’s mark).
There is no evidence
which would indicate that Respondent, known as Stanley Wynman or “Spence-Chaplin,
LLC,” is commonly known throughout
the community by <Spence-chapin.biz>
and <Spence-chapin-llc.com>.
Moreover, as Complainant notes in its supplemental designation,
Respondent has an application for a trademark of the Spence-Chapin
name, but it
does not appear from the evidence that Respondent has obtained rights to the
mark as against Complainant’s interests,
of which Respondent was aware at the
time of filing. Complainant also
contends that it will contest the application as soon as it is published for
opposition. For these reasons, the
Panel finds that the Respondent does not have rights or legitimate interests in
the disputed domain name for
the purposes of analysis under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and
never applied for a license or permission from
Complainant to use the trademarked name).
Registration and Use in
Bad Faith
The final issue is
whether the domain was registered in bad faith. Under Section 4(b) of the Policy, evidence of a respondent’s bad
faith registration and use includes:
(i) circumstances
indicating that you have registered or you have acquired the domain name
primarily for the purpose of selling, renting,
or otherwise transferring the
domain name registration to the complainant who is the owner of the trademark
or service mark or to
a competitor of that complainant, for valuable
consideration in excess of your documented out-of-pocket costs directly related
to
the domain name; or
(ii) you have registered
the domain name in order to prevent the owner of the trademark or service mark
from reflecting the mark in
a corresponding domain name, provided that you have
engaged in a pattern of conduct; or
(iii) you have
registered the domain name primarily for the purpose of disrupting the business
of a competitor; or
(iv) by using the domain
name, you have intentionally attempted to attract, for commercial gain,
Internet users to your website or
other on-line location, by creating a
likelihood of confusion with the complainant’s mark as to the source,
sponsorship, affiliation,
or endorsement of your web site or location or of a
product or service on your web site or location.
Here, The Panel finds
that Respondent’s registration of the domain names at issue, as well as its
previous registration of <spence-chapin.com>,
which has been subsequently
transferred to Complainant, indicates that Respondent registered and used the
disputed domain names in
bad faith under Policy ¶ 4(b)(ii). See YAHOO! Inc. v. Syrynx, Inc. &
Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern
pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain
names
incorporating Complainant's YAHOO! mark); see also Harcourt, Inc. v. Fadness,
FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of
registration of several infringing domain names satisfies
the burden imposed by
the Policy ¶ 4(b)(ii)). The evidence as
presented by Complainant suggests a pattern. On December 12, 2001, the site,
<spence-chapin.com> was transferred
to Complainant pursuant to a prior
ruling finding that the name was similar and that Complainant had common law
rights in the mark
of spence-chapin. It
appears that <spence-chapin-llc.com> was registered on that same
day. Moreover, <spence-chapin.biz>
was registered just one-month later.
The Panel also finds
that Respondent, as another provider of adoption information services, may be
considered a competitor of Complainant,
and as a result, its registration of
two domain names incorporating Complainant’s marks indicates bad faith under
Policy ¶ 4(b)(iii). See Surface
Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001)
(finding that, given the competitive relationship between Complainant and
Respondent, Respondent
likely registered the contested domain name with the
intent to disrupt Complainant's business and create user confusion); see
also Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that
competes with Complainant’s business). By registering a same or similar domain
name, users might easily be directed to Respondent’s web site when, in
actuality, they are
attempting to find the site of Complainant. After accidentally or mistakenly arriving at
Respondent’s site instead of Complainant’s, the user will find criticism of
Complainant’s
business, thus constituting a probable interference with Complainant’s
business. Respondent has stated that it
intends to use the site for criticism of Complainant and correspondingly argues
that there is a First
Amendment right to do this. Respondent is free to make criticisms, but the right to make
such criticisms does not extend to using the same or similar domain name,
without any immediate element to distinguish Respondent, as an entity, from
Complainant. The Panel does not feel that either of the
sites adequately
distinguish between the parties. Complainant has been known throughout the
adoption community as Spence-Chapin and
has developed a common law right in the
mark from its historical use and recognition throughout the adoption community
over the last
half-century. Respondent
has not sufficiently shown that no practical alternatives are available to use
of Complainant’s mark for Respondent’s sites.
Accordingly, the Panel
now finds that Respondent’s two sites are the same or similar to Complainant’s
mark and sites; that Respondent’s
sites will produce confusion and that
Respondent has no legitimate right to use of the mark; that the sites are
registered in bad
faith as an attempt to disrupt Complainant’s activities.
Accordingly, Complainant shall be granted the requested relief.
DECISION
Based on the foregoing findings and
conclusions, and pursuant to Section 4(a) of the policy, it is decided as
follows:
The undersigned
arbitrator directs that the registration of the domain names, <spence-chapin.biz>
and <spence-chapin-llc.com> be transferred to Complainant,
Spence-Chapin Services to Families and Children. The Complainant’s request for relief is granted.
Honorable William H.
Andrews, Panelist
Dated: May 6, 2002
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