DECISION

HOPE worldwide, Ltd. v. Jeniper Jin

Claim Number:  FA0409000320379

PARTIES

Complainant is HOPE worldwide, Ltd. (“Complainant”), represented by Michael J. Remington, of Drinker Biddle & Reath LLP, 1500 K St., N.W., Suite 1100, Washington, DC 20005.  Respondent is Jeniper Jin (“Respondent”), 1004 Yangjae-dong, Seocho-gu, Seoul, Korea 137130.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hope-worldwide.org>, registered with Wooho T & C Ltd. d/b/a rgnames.com.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 1, 2004; the Forum received a hard copy of the Complaint on September 3, 2004.

On September 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 18, 2004 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@hope-worldwide.org 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 November 1, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <hope-worldwide.org> domain name is confusingly similar to Complainant’s HOPE WORLDWIDE mark.

2. Respondent does not have any rights or legitimate interests in the <hope-worldwide.org> domain name.

3. Respondent registered and used the <hope-worldwide.org> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a non-profit charity headquartered in Wayne, Pennsylvania.  Complainant serves more than 2 million needy people annually in 75 nations providing programs that serve disadvantaged children and the elderly.  Complainant registered the HOPE WORLDWIDE mark with the U.S. Patent and Trademark Office (“USPTO”) on August 3, 1999 (Reg. No. 2,266,588).

Respondent registered the <hope-worldwide.org> domain name on July 3, 2004.  The domain name resolves to a website that appropriates Complainant’s website.  Respondent’s website fools Internet users into sharing personal financial data so that identities can be stolen, fraudulent bills are run up, and spam e-mail is sent.  This scam is known as “phishing.”

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 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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the HOPE WORLDWIDE mark through registration with the USPTO.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that 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, and Respondent has the burden of refuting this assumption; see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

Respondent’s <hope-worldwide.org> domain name is confusingly similar to Complainant’s HOPE WORLDWIDE mark because the domain name merely omits the space between the words of the mark and adds a hyphen.  The Panel finds that the mere omission of the space and the addition of the hyphen are insufficient to distinguish the domain name from Complainant’s mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”; see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark; see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) finding it obvious that the domain name <easy-jet.net> was virtually identical to Complainant's EASYJET mark and therefore that they are confusingly similar.

Furthermore, the addition of the generic top-level domain “.org” is insufficient to distinguish the domain name from Complainant’s mark.  See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) finding that the domain name <microsoft.org> is identical to Complainant’s mark; see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) finding that the domain name <philips.org> is identical to Complainant’s PHILIPS mark.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Due to Respondent’s failure to provide a Response, the Panel presumes that Respondent lacks rights and legitimate interests in the <hope-worldwide.org> domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name; see also 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.

Furthermore, nothing in the record indicates that Respondent is commonly known by the <hope-worldwide.org> domain name.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) has not been established; see also 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.

In addition, Respondent’s <hope-worldwide.org> domain name is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently.  Respondent’s use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) finding that as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website, Respondent had no rights or legitimate interests in the disputed domain name; see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) stating that where Respondent copied Complainant’s website in order to steal account information from Complainant’s customers, that Respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”.

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s <hope-worldwide.org> domain name is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently.  Respondent’s use of the domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith; see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) finding that where Complainant’s mark was appropriated at registration, and a copy of Complainant’s website was used at the domain name in order to facilitate the interception of Complainant’s customer’s account information, Respondent’s behavior evidenced bad faith use and registration of the domain name.

Moreover, Respondent presumably commercially benefits from acquiring the personal information via the misleading domain name, which is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness; see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

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 relief shall be GRANTED.

Accordingly, it is Ordered that the <hope-worldwide.org> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  November 11, 2004

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