DECISION

National Council of Young Men's Christian Associations of the United States of America v. Websitebrokers Limited

Claim Number: FA0112000102756

PARTIES

Complainant is National Council of Young Men's Christian Associations of the United States of America, Chicago, IL (“Complainant”) represented by Michelle Burke, of McDermott, Will & Emery.  Respondent is Website Brokers Limited, London, GB (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theymca.com>, registered with DomainDiscover.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 7, 2001; the Forum received a hard copy of the Complaint on December 10, 2001.

On December 10, 2001, DomainDiscover confirmed by e-mail to the Forum that the domain name <theymca.com> is registered with DomainDiscover and that Respondent is the current registrant of the name.  DomainDiscover has verified that Respondent is bound by the DomainDiscover 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 December 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 3, 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@theymca.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 Forum transmitted to the parties a Notification of Respondent Default.

On January 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.”  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. The Respondent’s registered domain name, <theymca.com>, is confusingly similar to the Complainant’s registered trademark, YMCA.  Further, Respondent’s domain name is confusingly similar to the Complainant’s domain name, <ymca.net>.

2. The Respondent is a domain name broker, who purchases domain names and either auctions and/or sells them to others for profit, and therefore the Respondent’s use of the domain name is not a bona fide offering of goods and services.  Second, The Respondent is not commonly known by the domain name.  Finally, by offering to sell the domain name for profit, the Respondent is not making a legitimate noncommercial use of the domain name. 

3. The Respondent has engaged in a pattern of conduct in order to prevent owners of trademarks from reflecting their marks in corresponding domain names.  The Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website. 

Since there is a likelihood of confusion between the domain name and the trademark, the Respondent is likely to misleadingly divert web users trying to locate a legitimate YMCA website.

B. Respondent

No Response was received.

FINDINGS

Complainant is the owner of a federal trademark registration for the trademark YMCA initially registered October 21, 1958, U.S. Reg. No. 668,795.  Since 1855, the Complainant and its predecessors have adopted and have used YMCA both in commerce and in connection with membership in Complainant’s organization.  Complainant uses its mark as the name of its over 2,300 YMCA member associations located throughout the United States which advertise, offer for sale and sell a wide range of goods and services bearing the YMCA mark.  Complainant and its member associations comprise the largest non-profit community service organization in the United States.  Complainant has around 17.5 million members in the United States, and affiliated organizations have an additional 13 million members throughout the world.  The Complainant also uses its YMCA mark in connection with the promotion of its organization and its goods and services through the Complainant’s principal website, <ymca.net>.

Respondent registered the domain name on June 25, 1998.

On October 20, 2000, Complainant sent a letter to Respondent requesting Respondent to cease all use of the mark YMCA, and transfer the domain name <theymca.com> to Complainant.  On November 1, 2000, Respondent responded to the cease and desist letter.  Through its counsel, Respondent refused to transfer the domain name to Complainant.  Respondent maintained its refusal to transfer to Complainant despite further exchanges of correspondence between counsel for Complainant and Respondent.

Until recently, Respondent used the domain name as a direct link to Respondent’s main website, <domainbrokers.co.uk> which offered the domain name for sale, among hundreds of other domain names.  Respondent has recently disabled <theymca.com>.  However, the Respondent continues to offer hundreds of other domain names at <domainbrokers.co.uk>.

DISCUSSION

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 the 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.

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; and

(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

The domain name <theymca.com> is confusingly similar to Complainant’s federally registered trademark YMCA.  The disputed domain name <theymca.com> incorporates the Complainant’s trademark in its entirety and only differs with the actual trademark by adding the word “THE.”  Minor changes with the domain name are inconsequential in finding that the domain name and trademark are confusingly similar.  See Hollywood Casino Corporation v Online Casino Service, Ltd., FA 95342 (Nat. Arb. Forum Aug. 7, 2000) (finding that by merely adding the word "THE" to the Complainant’s "HOLLYWOOD CASINO" trademark, Respondent has intentionally created confusion as to the source of the services provided at the Respondent’s website); see also Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.com>, <tele-place.com>, and <theteleplace.com> are confusingly similar to Complainant’s TELEPLACE trademark); 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).

Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  As a result, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names);  see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

The Respondent has offered to sell the domain name to the Complainant and to the public on the Respondent’s website and has made no claim that it is using the domain name in connection with a bona fide offering of goods and services or is making a legitimate noncommercial or fair use of the site.  Therefore, the Respondent has not satisfied either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).

There is also no evidence that Respondent is commonly known by “theymca” and therefore, Respondent cannot satisfy Policy ¶ 4(c)(ii).  Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied and that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Registration and Use in Bad Faith

Registration and use of the domain name in bad faith may be inferred from the evidence.  There is no evidence that since registering the domain name <theymca.com> Respondent has used it in commerce outside of offering to sell the domain name to the general public.  The Panel concludes that Respondent registered the domain name in order to prevent Complainant from reflecting its trademark in the corresponding domain name and since <theymca.com> is among hundreds of other domain names for sale at the Respondent’s main website <domainbrokers.co.uk> is evidence of a pattern of conduct.  Therefore, Respondent’s actions represents bad faith use as set forth in Policy ¶ 4(b)(ii).  See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a pattern of conduct where Respondent has registered many domain names unrelated to the Respondent’s business which infringe on famous marks and websites); see also Nabisco Brands Co. v. The Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.

Accordingly, it is Ordered that the <theymca.com> domain name be transferred from Respondent to Complainants.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: January 23, 2002

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