Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

Society of St. Vincent de Paul, Council of the United States v. Alex Yip [2004] GENDND 560 (25 May 2004)

1. The Parties

1.1 The Complainant is Society of St. Vincent de Paul, Council of the United States, Maryland Heights, Missouri, United States of America, represented by Armstrong Teasdale, LLP, United States of America.

1.2 The Respondent is Alex Yip, Bedford, Virginia, United States of America.

2. The Domain Name and Registrar

2.1 The disputed domain name <svdpuscouncil.org> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2004. On February 18, 2004, the Center transmitted by e-mail to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On February 19, 2004, OnlineNic, Inc. d/b/a China-Channel.com transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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").

3.3 The Center appointed Jay Simon as the sole panelist in this matter on May 14, 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.

3.4 The case file was transmitted electronically to the Panel on May 14, 2004, and a hard copy was forwarded to the Panel that same day.

4. Factual Background

4.1 Complainant, Society of St. Vincent de Paul, Council of the United States, is a leading charitable and personal assistance organization in the United States. Complainant is a lay organization of the Catholic Church and was founded in the United States in the year 1845. In the year 2003, Complainant's 107,000 members provided assistance to over 12 million individuals in the United States.

4.2 By virtue of its activities, Complainant, for a number of years, has come to be known by the acronym SVDP, which stands for "St. Vincent de Paul." Complainant operates through regional councils located throughout the United States, some of which have previously registered domain names incorporating the SVDP acronym, such as <svdpstl.org> for the St. Louis regional council and "<svdpla.org>" for the Lost Angeles regional council. Complainant also registered <svdpusa.org>.

4.3 At one time, Complainant owned the disputed domain name, but allowed the registration to lapse, presumably an inadvertent error.

4.4 Because of its use of the "SVDP" acronym in reference to the Society and its regional councils, the acronym identifies the Society and the services provided by the Society.

4.5 Complainant has incorporated the SVDP acronym into what Complainant calls "a slightly modified version in its federally registered logo, U.S. Registration No. 2,277,318. The registered mark is SOCIETY OF ST. VINCENT DE PAUL U.S.A. ST V DE P. The registration disclaims "Society" and "U.S.A." and the registration date is September 14, 1999.

4.6 The Complaint in these proceedings is based on the registration of the disputed domain name on June 7, 2003, by Respondent (according to WHOIS search).

4.8 Complainant attempted to contact Respondent regarding Respondent's use of the domain name and demanded transfer of the domain name to Complainant. The contact was unsuccessful, a certified letter being returned as undeliverable.

4.9 Respondent did not file a response in these proceedings and was notified of its default by the Center. Thus, the allegations and evidence contained in and attached to the Complaint are uncontested.

5. The Parties Contentions

A. Complainant

5.1 Complainant contends that the disputed domain name is confusingly similar to the Society's trademark and cites EAuto, L.L.C. v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprise, Inc., WIPO Case No. D2000-0047 in support of its contention.

5.2 Complainant further contends that the domain name incorporates the well-known "SVDP" acronym, and that Complainant has come to be known by the acronym SVDP.

5.3 Complainant further contends that the domain name incorporates "US" and "Council" both of which appear in the Society's registered corporate name "Society of St. Vincent de Paul, Council of the United States."

5.4 Complainant contends that Respondent has no legitimate interest in the domain name, and no affiliation with the Society or any of its regional councils.

5.5 Complainant further contends that Respondent is not commonly known by the disputed domain name, did not offer bona fide services in connection with the disputed domain name before notice of the dispute, and was not using the disputed domain name in connection with a legitimate non-commercial or fair use.

5.6 Complainant further contends that the disputed domain name was registered and is being used in bad faith, citing Baylor University and Baylor College of Medicine v. Alex Yip, WIPO Case No. D2003-0414 for the proposition that using a domain name referring to a legitimate and well-known entity to misdirect Internet users to a pornographic website meets the definition of bad faith under Paragraph 4(a)(iii) of the Policy.

5.7 Complainant requests that the domain name be transferred to Complainant.

5.8 Respondent has failed to respond to the Complaint and is in default in these proceedings.

6. Discussion and Findings

6.1 The Policy, as effected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

a) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

b) that the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and

c) that the domain name has been registered and is being used in bad faith.

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element noted in Paragraph 6.1, above.

6.3 Respondent, having failed to respond to the Complainant in these proceedings is in default, and in accordance with Paragraph 14(b) of the Rules, "The panel shall draw such inferences...as it considers appropriate." Additionally, while past activities do not necessarily predict the future, inferences may be drawn by the Panel based on a respondent's past activities.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.4 Complainant asserts that the disputed domain name is confusingly similar to Complainant's registered trademark. In the EAuto case, cited above, the Panel stated that "when a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar." This statement was made in respect of the distinctive mark "EAUTO" when compared to the disputed domain name <eautolamps.com>. Indeed, the distinctive mark is incorporated in its entirety into the disputed domain name. Such is not the case in this proceeding. The mark registered by Complainant is SOCIETY OF ST. VINCENT DE PAUL U.S.A. ST V DE P and the disputed domain name is <svdpusacouncil.org>. Thus, only a part of the registered mark is incorporated into the disputed domain name, and the "svdp" portion of the domain name shows up as ST V DE P in the registered mark. So, while a portion of the mark appears in the domain name, that portion does not appear sequentially as it does in the domain name, and this Panelist is not willing to extend the rule in the EAuto case to this proceeding.

6.5 Complainant has contended that it has, over the years, been known by the acronym SVDP, and it appears that this acronym has been used by Complainant for many years to identify it and the charitable services provided by Complainant. This Panelist believes that Complainant's acronym SVDP has acquired distinctive common law rights that may be protected under these proceedings.

6.6 The Complainant in proceedings under the Policy need not rely solely on registered trademarks, when such marks exist, for its remedy under the Policy. A complainant may rely, in the alternative, on common law trademark rights by virtue of having been known under and referenced to that name and mark, the extent and knowledge of that mark being evidenced by the activities described above. See Jones Apparel Group Inc. v. Jones Apparel Group.com, WIPO Case No. D2001-1041.

6.7 Complainant having been known by the acronym SVDP and having common law trademark rights in that acronym, this Panel finds that the disputed domain name which incorporates the acronym in its entirety and sequentially, is confusingly similar to the mark in which Complainant has rights.

6.8 Complainant has contended that the disputed domain incorporates "US" and "council" both of which appear in Complainant's corporate name "Society of St. Vincent de Paul, Council of the United States". Nevertheless, the recommendation of the Report of the Second WIPO Internet Domain Name Process, September 3, 2001, is that the protections of the Policy are not applicable to trade names only for registered and unregistered trademarks.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.9 Paragraph 4(c) of the Policy lists three non-exclusive methods for demonstrating rights to or a legitimate interest in a disputed domain name:

(a) before any notice of the dispute, Respondent's use or preparation to use the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods and services; or

(b) Respondent has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(c) Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

6.10 Respondent has failed to contest any of the allegations or evidence presented by Complainants, and even though Complainant has the burden of proof regarding the elements of Paragraph 6.1, above, it is Respondent who is in the best position to bring forward evidence regarding any rights or legitimate interests it may have in the disputed domain name. Thus, Complainant having made the necessary assertions regarding the Respondent's lack of rights or legitimate interests, it is now Respondent's burden to go forward with evidence. Respondent has elected not to do so. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

6.11 Respondent cannot allege that it was commonly known by the domain name or a name corresponding to the domain name because it was Complainant that previously owned the disputed domain name; nor can Respondent allege that it is making a fair use of the domain name since Respondent is making no use of the name other than having a link to a pornographic website. Thus, the concepts of tarnishing a trademark cannot be more apparent than in this case, given the Complainant and the use of the disputed domain name by Respondent. Further, Respondent's use does not constitute a bona fide offering of goods or services. See Madonna Ciccone p/k/a Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847, and The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Kahn, WIPO Case No. D2002-0701.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.12 Paragraph 4(b) of the Policy indicates several non-exclusive methods for showing bad faith registration and use of a domain name. Registration and use of the disputed domain name may also be shown by other activities of Respondent, the sum of which amount to bad faith.

6.13 These proceedings are not the first in which Respondent registered a well-known name after the owner of that name inadvertently allowed the registration to lapse. In Baylor University and Baylor College of Medicine v. Alex Yip, WIPO Case No. D2003-0414, the Respondent registered a lapsed domain name of a famous University eye care center. In that case, the Panel found facts essentially identical to the facts in this proceeding, see Paragraph 4.6 of the Baylor University case.

6.14 One instance of an activity is not necessarily an indication of a serial practice of that activity. A second instance of an identical activity suggests a pattern of activity. And that is the case here. It is clear to this Panel that Respondent, again, is purposefully trading on a Complainant's good name to attract Internet users to Respondent's pornographic website - an activity that, in and of itself, suggests registration and use in bad faith.

6.15 As the Panel reasoned in the Baylor University case, Respondent has registered the disputed domain name for the purpose of disrupting the activities of Complainant, and to cause confusion with Complainant's mark and former domain name.

6.16 There may be some question as to whether an Internet user will believe that the pornographic site, to which the user is ultimately led, is sponsored by, endorsed, or affiliated with Complainant, simply because of the nature of Complainant's charitable activities and the nature of Respondent's website. That issue begs the question. Regardless of what the Internet user believes regarding the sponsorship, endorsement, etc. of the website that user may well, and forever, associate Complainant's good name with a pornographic website. That is sufficient for this Panel to find that Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

7.1 For the foregoing reasons, in accordance with Paragraph 4(a) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain name <svdpuscouncil.org> be transferred to Complainant.

Jay Simon
Sole Panelist

Dated: May 25, 2004