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Family & Children’s Center Inc. v. James M. Van Johns a.k.a. Damian Macafee [2004] GENDND 1093 (30 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Family & Children’s Center Inc. v. James M. Van Johns a.k.a. Damian Macafee

Case No. D2004-0497

1. The Parties

The Complainant is Family & Children’s Center Inc., Mishawaka, Indiana, United States of America, represented by Bill Kentner, United States of America.

The Respondent is James M. Van Johns a.k.a. Damian Macafee, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <fcc.org> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2004. On July 7, 2004, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On July 7, 2004, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent Damian Macafee is listed as the registrant and providing the contact details for the administrative, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2004.

The Center appointed Ross Carson as the sole panelist in this matter on August 18, 2004. 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

The Complainant does not own a registered trademark or service mark for or including FCC. The Complainant submits that it is the owner of a common law trademark for FCC. In March of 1959 the State of Indiana approved Articles of Amendment of the Children’s Aid Society of Indiana, Inc., a corporation organized under “The Indiana General Not for Profit Corporation Act” changing the name of the Corporation to Family & Children’s Center, Inc. Annex 2 to the Complaint.

The letters FCC are an acronym for Family & Children’s Center, Inc. Family & Children’s Center, Inc. is stated on its webpage to be one of Northern Indiana’s major non-profit human services agencies providing programs and services designed to strengthen children, families and others entrusted to its care. More particularly the Complainant’s programs and services include the operation of Boys and Girl’s Clubs; residential and day treatment for emotionally disturbed youth; individual and group counseling, and therapy services for those affected by sexual trauma. Some of the services are provided through Family & Children’s Center affiliates.

The Complainant submits that since the 1960’s the service mark FCC has been synonymous in Northern Indiana with the services provided by Family & Children’s Center, Inc. Attachment No. 5 to the Complaint includes press clippings from the South Bend Tribune in the period of time about 1980 relating to programs, services and reports about Family & Children’s Center, Inc. The newspaper articles refer to the Complainant, its programs and services in many instances as FCC.

Attachment No. 1 to the Complaint is an Internic Whois Search Result dated July 11, 2003, disclosing that the Registrant of the domain name in dispute is Damian Macafee whose address is in London, Great Britain. The domain name in dispute was registered on March 9, 2000. A subsequent search on August 6, 2004 disclosed that the Registrant had changed its address to a BCM Box in London. Attachment No. 1 to the Complaint.

In previous WIPO decisions in which Damian Macafee was named as a Respondent there was no evidence that Damian Macafee actually existed. In The Chancellor, Masters and Scholars of the University of Oxford v. Damian Macafee, WIPO Case No. D2001-0975, the Complainant stated that Damian Macafee’s address in London is a combined residential/office address and further stated that enquiries at that address indicate that Damian Macafee is not known at that address. Further Oxford conducted electoral roll enquiries which show no sign of Damian Macafee at his alleged address in London or indeed at any address in London. In EZ Pittsburg, Inc. v. James M. Van Johns, WIPO Case No. D2001-0612, the complaint was filed naming Damian Macafee as the Respondent. Registrant details were amended and Complainant filed an amended Complaint naming James M. Van Johns of Johnstown, P.A. as the Respondent.

The Complainant in this case sent two different emails to the email address listed in the registry information. Sophisticated software was attached to the emails. The tracking report showed with 81% likelihood that the user who accesses the email account does so from an ISP located in Pittsburgh, Pennsylvania. See Attachment 3 to the Complaint. A web search for the name James M. Van Johns in the Pittsburgh, Pennsylvania area turned up two hits with nearly identical addresses and identical telephone numbers.” See Attachment 4 to the Complaint.

5. Parties’ Contentions

A. Complainant

The domain name is confusingly similar to a service mark in which the Complainant has rights.

The Complainant submits that as a result of the use of the acronym FCC for over 40 years the service mark FCC has become synonymous with Complainant’s social services in Northern Indiana and adjoining territories. The Complainant submits that the domain name in dispute is confusingly similar to the unregistered service mark FCC. The Complainant submits that the Complainant has been questioned on numerous occasions as to why the domain name in dispute resolves to sites for “women seeking sex; - how to have a Discreet Fling; - how to prepare financially for divorce; and how to buy tax free cigarettes. See attachment 6 to the Complaint.

The Respondent has no rights or legitimate interests in respect of the domain name.

As in the many reported decisions in which James M. Van Johns or Damian Macafee are named as the Respondent, the website associated with the domain name in dispute remains under construction. The website associated with the domain name in dispute contains the under construction notice and a number of advertisements which link to other websites. See EZ Pittsburg, Inc. v. James M. Van Johns, WIPO Case No. D2001-0612; Resicom Corporation, Inc. v. Damien Macafee, WIPO Case No. D2001-0988; Media West-GSI, Inc., and Gannett Satellite Information Network, Inc. (collectively “Complainant”) v. Damian Macafee (Respondent), WIPO Case No. D2000-1032.

The Complainant submits that there is no evidence that the Respondent was ever known as FCC.

The domain name was registered and is being used in bad faith.

The Complainant states that the Respondent has made no legitimate use of the domain name in dispute in over four years since the registration of the domain name. As seen in Attachment 6 to the Complaint a page appears at the website stating, “a website may be coming soon !” The page also includes links to other websites as well as an invitation to “Buy a Link Here Now.”

The Complainant further submits that the contact information provided by the Registrant Damian Macafee is false and refers to the Complainant’s evidence, referred to above, showing that emails to Mr. Macafee’s stated email address are retrieved at an ISP located in Pittsburgh, Pennsylvania in the area where James M. Van Johns lives. The Complainant also refers to the numerous decisions under the UDRP in which Damian Macafee or James M. Van Johns were Respondents in which the Respondents were found to have made bad faith use of domain names which were confusingly similar to well known trademarks or service marks. Microsoft Corporation v. Damian Macafee, WIPO Case No. D2004–0027.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That 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

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and used in bad faith.

A. Confusingly Similar To A Trademark Or Service Mark In Which The Complainant Has Rights

The threshold requirement in any dispute under the Policy is for the Complainant to show that it has rights in the trademark or service mark at issue. The Church in Houston v. Jim Moran, Light of Truth Ministeries, WIPO Case No. D2001-0683. The Complainant is not the owner of a registered trademark or service mark for FCC. The Policy does not require a Complainant to establish rights in a trademark or service mark through registration. The Policy recognizes that rights in a trademark or service mark may be acquired through use under common law. Adobe Systems Inc. v. Domain OZ, WIPO Case No. D2000-0057. At common law a trademark or service mark must become distinctive of the goods or service of the owner by extensive use over a period of time. It is more difficult to establish acquired distinctiveness of an inherently weak trademark or service mark. Snowboards-for-sale.com, Inc. v. Name Administration Inc., WIPO Case No. D2002-1167.

The Complainant on its own webpage states that its social services are provided in Northern Indiana. The webpage includes the following: “Welcome! Family & Children’s Center is one of Northern Indiana’s major non-profit human services agencies.” The evidence submitted including the Complainant’s own statement at the Complainant’s website, suggest that the Complainant’s reputation in the service mark was limited to Northern Indiana at the time that the Respondent registered the domain name in dispute.

The service mark FCC comprised of letters is an inherently weak mark. The burden of proof of acquired distinctiveness or proof of secondary meaning is higher with respect to inherently weak service marks than with respect to created or novel service marks. The evidence filed by the Complainant, comprised primarily of newspaper reports, disclosed that the Complainant was at least as frequently referred to as Family and Children’s Center as it was referred to as FCC. No evidence was filed as to what percentage of the community in Northern Indiana associated the letters FCC with the Complainant’s social services. The Complainant’s evidence did not disclose the number of persons employed by the Complainant and its affiliates; the number of persons who used the Complainant’s or its affiliates services annually or the Complainant’s annual budget for operations and promotion or advertising of Complainant’s and its affiliate services.

The Panel is not satisfied that the Complainant has established sufficient secondary meaning with respect to the service mark FCC which will pass the threshold test of rights in the service mark under Paragraph 4(c)(i) of the Policy. Even if the Panel were to find that the Complainant has a common law trademark or service mark in FCC, such mark would have to acquire limited secondary meaning relating to social services in Northern Indiana.

B. Bad Faith

The Panel also finds that the Complainant has not established that the Respondent has registered the domain name in dispute in bad faith. Simon Docker d/b/a Sat-Europa Group v. Jan Saggiori, WIPO Case No. D2004-0301; Bastyr University v. GNS Dauphin Revant, WIPO Case No. D2002-0574 as required under Paragraph 4(c)(iii) of the Policy.

Even if the Panel were to find that the Complainant has a common law trademark or service mark in FCC, such mark would have only acquired limited secondary meaning relating to social services in Northern Indiana.

The Complainant filed evidence locating the Respondent James M. Van Johns in Pittsburgh, Pennsylvania. However, the Complainant’s evidence does not disclose any evidence that any secondary meaning of the service mark FCC in relation to the Complainant’s services extended to the state of Pennsylvania. There is no evidence filed from which the Panel can conclude that the Respondent James M. Van Johns was aware of the Complainant’s service mark FCC at the date of March 9, 2000, when the domain name in dispute was recorded. In most of the UDRP decisions in which James M. Van Johns or Damian Macafee were named as a respondent, the respondent had registered a domain name which was confusingly similar to very well known registered trademarks or service marks of the complainant’s.

In this case the Complainant does not have a registered trademark or service mark and the common law trademark or service mark has acquired its very limited secondary meaning relating only to social services in Northern Indiana.

7. Decision

For all the foregoing reasons the Complaint is denied.

Ross Carson
Sole Panelist

Dated: August 30, 2004