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Eastern US Buddha’s Study Falun Dafa Association v. Vanilla Limited [2005] GENDND 1931 (17 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eastern US Buddha’s Study Falun Dafa Association v. Vanilla Limited

Case No. D2005-0922

1. The Parties

The Complainant is Eastern US Buddha’s Study Falun Dafa Association, New York, New York, United States of America, represented by Law Offices of Eric D. Offner, United States of America.

The Respondent is Vanilla Limited, Sharjah, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <falungongnews.com> (the “Domain Name”) is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2005. On August 30, 2005, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On September 1, 2005, BulkRegister.com transmitted by email 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 7, 2005. The Center verified that the Complaint together with the amendment to 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 September 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2005.

The Center appointed Ian Lowe as the sole panelist in this matter on November 3, 2005. 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 is the registered proprietor of US trademark No. 2593739 FALUN GONG filed on July 10, 2000.

The Domain Name was registered on January 13, 2001. The domain name resolves to a website headed Falun Gong News apparently operated by World News Network (“WN”).

5. Parties’ Contentions

A. Complainant

The Complainant is an organisation engaged in the promotion of a system of cultivation practice for body, mind and spirit based on truthfulness, benevolence and tolerance as its guiding principles. It is the proprietor of the US trademark FALUN GONG which is registered for a range of products and services including publications such as books and newsletters and the provision of educational courses and conferences. The Complainant is also the proprietor of International trademark FALUN GONG No. 854501 which is extended to Australia and Singapore. Falun Gong is also known as Falun Dafa.

The mark FALUN GONG was first used in May 1992. It is a unique and well-known mark recognised in more than 60 countries worldwide. The Respondent’s use of the Complainant’s mark is unauthorized and seriously confuses the public. The Domain Name incorporates the trademark and service mark FALUN GONG in its entirety. The word “news” is generic and gives the false impression that the Respondent furnishes news from the Complainant or that it is affiliated with the Complainant. Simply adding a common or generic word like “news” to a well-known mark is not sufficient to give a domain name a unique meaning. The Domain Name is therefore identical or confusingly similar to the trademark FALUN GONG in which the Complainant has rights.

The Respondent has no rights or legitimate interest in respect of the Domain Name. The Respondent is not commonly known by the Domain Name and is not making any legitimate, non-commercial or fair use of the Domain Name. The Domain Name is used to direct internet users to a website where news unrelated to Falun Gong, misinformation about Falun Gong and unauthorized links to Falun Gong related websites are published, which demonstrates that the Respondent is intentionally trying to attract internet users to its website by creating a likelihood of confusion through its use of the well-known mark FALUN GONG.

In addition to the Respondent’s use of the trademark, it has also used the Complainant’s well-known FALUN emblem on its website and shown pictures of FALUN DAFA practitioners performing exercises.

The Respondent has a pattern of registering and using disputed domain names in bad faith. The panels in two earlier decisions – WIPO Case No. D2004-1068 and D2004-0543 – both found that the Respondent was aware of the links between the marks in question and the respective complainants and found the Respondent to be acting in bad faith.

By registering and using the Domain Name, the Respondent has attempted to attract internet users to the Respondent’s website for commercial gain by creating a likelihood of serious confusion with the Complainant’s mark FALUN GONG as to the “source, sponsorship, affiliation or endorsement” of the website. This is further evidence of bad faith. The Respondent attempts to gain commercially by selling advertisements based on traffic to the website. It claims in an advertisement soliciting page linked from the website to which the Domain Name resolves that “approximately 20 million unique users connect to WN per month, making it one of the most visited news sites on the net. WN is rated as one of the fastest growing news networks and continues to rapidly expand its readership numbers”.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) the Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has adduced evidence that it is the proprietor of US registered trademark FALUN GONG No. 2593739. The registered mark is identical to the Domain Name save only for the addition of the generic word “news”.

The Panel finds that this generic word does not add any distinctive quality to the registered trademark in question and that in the circumstances the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has not replied to the Complainant’s contentions and has not therefore displaced the assertion on the part of the Complainant that the Respondent does not and cannot have any rights or legitimate interests in the Domain Name. In response to being sent a copy of the initial email from the Center notifying the Complainant that the original Complaint was deficient (prior to the amendment being filed) the administrative contact for the Respondent stated by email dated September 7, 2005 that “We shall be deleting this domain. There will be no need for any arbitration”.

Falun Gong is described as a cultivation practice involving exercises and meditation to energize the body to achieve improvement of the heart and mind through the careful study of universal principles based on truthfulness, benevolence, and forbearance.

It is therefore apparent that others than the Complainant could make legitimate use of the name or have a legitimate interest in a domain name comprising FALUN DONG. Nevertheless, the Respondent has made no attempt to claim or justify any such legitimate interest by filing a response to the Complaint. Moreover, it appears from the web site to which the Domain Name resolves that there is no legitimate connection between Falun Gong and the Respondent.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Respondent is using the Domain Name to direct traffic to an active website operated by WN. The home page is headed “Falun Gong News” and contains many news stories and links to other websites operated by WN. The webpages also include advertising and appear to be part of the network of websites operated by WN including “www.wn.com”, “www.worldnews.com” and “www.wnnetwork.com”.

In the circumstances, it appears to be clear that by using the Domain Name, the Respondent is intentionally attracting Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of the website. Pursuant to paragraph 4b(iv) of the Policy this constitutes evidence of the registration and use of the Domain Name in bad faith. The only possible inference is that WN has used the well-known mark to attract Internet users to its websites with a view to increasing web traffic for commercial gain.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <falungongnews.com> be transferred to the Complainant.

Ian Lowe
Sole Panelist

Dated: November 17, 2005