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International Save the Children Alliance v. Rizwan Qureshi [2005] GENDND 1951 (11 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Save the Children Alliance v. Rizwan Qureshi

Case No. D2005-1039

1. The Parties

The Complainant is International Save the Children Alliance, Geneva, Switzerland, represented by Baker & McKenzie, London, United Kingdom.

The Respondent is Rizwan Qureshi, Rawalpindi, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <savechildren.info> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2005. On October 4, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 5, 2005, Tucows 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. 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 began on October 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2005. The Respondent did not submit a response according to the Rules, paragraph 5(b). Accordingly, the Center notified the Respondent’s default on October 31, 2005.

However, the Panel notes that the Respondent did submit an e-mail to the Center on October 25, 2005, in which he made a number of statements about the Complaint. Taking into consideration that the Respondent is proceeding pro se, is located in Pakistan, and claims to have been affected indirectly by the recent catastrophic earthquake there, the Panel has decided to exercise its discretion under the Rules, paragraphs 10(a)-(d), and to take the Respondent’s e-mail statement into consideration.

The Center appointed Dennis A. Foster as the Sole Panelist in this matter on November 4, 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 a well-known charitable organization with a presence in many countries that seeks to foster the well-being of children. The Complainant’s first Save the Children organization was launched in London, United Kingdom in 1919.

The Complainant is the owner of the SAVE THE CHILDREN trademark. It uses the trademark for its charitable activities and has registered it in over 80 countries for a wide range of products and services, including charitable fundraising, charitable collections, managing and monitoring of charitable funds, and promoting the welfare of children and humanitarian aid and development (Complaint Annex 7).

The Complainant and its affiliates own a number of domain names incorporating “save the children”, including <savethechildren.net>, <savethechildren.org>, <savechildren.org> and <savethechildren.info> (Complaint Annex 8).

The Respondent is an individual located in Pakistan. The Respondent registered the disputed domain name, <savechildren.info>, on June 4, 2004, (Complaint Annex 1). At the disputed domain name website, the Respondent invites the public to send money to help children (Complaint Annex 10).

5. Parties’ Contentions

A. Complainant

- The Complainant, its predecessors and affiliates have acquired a substantial reputation internationally in relation to the SAVE THE CHILDREN name and mark as a result of the organisation’s use of it over many decades in connection with its charitable efforts to create opportunities for the world’s children to live safe, healthy and self-sufficient lives. The mark is and has been since the early 20^th century closely associated with the Complainant, its predecessors and its affiliates in the minds of the general public in many countries.

- The Complainant and its affiliates own a number of domain names incorporating “savethechildren” or “savechildren”, including <savethechildren.net>, <savethechildren.org>, <savechildren.org>, and <savethechildren.info> (Complaint Annex 8). They redirect to websites of the Complainant and its member affiliates.

- According to the website at the disputed domain name, the Respondent also is a non-profit humanitarian organization helping children around the world, although the website provides no further information as to where he is in the world, how long he has been helping the world’s children or any information about his financial position.

- In contrast, the process for making a donation of money or becoming a sponsor is quite clear.

- The Complainant’s member affiliates are very active in Pakistan and the Complainant’s name is well known there. Three of the Complainant’s member organizations have offices in Pakistan.

- The Complainant first became aware of the Respondent’s registration of the disputed domain name in April 2005. The Complainant wrote to the Respondent on April 13, 200, asking him, inter alia, to immediately and permanently cease all use of the domain name and to promptly transfer it to the Complainant (Complaint Annex 13).

- The Respondent responded by e-mail on May 13, 2005. A copy of this response, which simply states “Shut up” is provided at Complaint Annex 14.

- The Charity Commission for England and Wales concluded the Respondent was in Pakistan and thus outside the Commission’s jurisdiction (Complaint Annex 16).

- The Respondent claims to work with the Development for Rural Communities in Pakistan but, on August 17, 2005, the Complainant telephoned this organization through the international directory but was unable to find anyone there who had heard of the Respondent.

- In addition to its registered trademarks for SAVE THE CHILDREN in over 80 countries, the Complainant also has common law trademark rights in the name because of worldwide use over many decades.

- The Complainant’s rights in the SAVE THE CHILDREN name and mark predate by many years the Respondent’s June 2004 registration of the disputed domain name.

- The disputed domain name is confusingly similar to the Complainant’s registered SAVE THE CHILDREN trademark because:

it is accepted that a general top-level domain (.info) is to be ignored when assessing the identity or similarity of a trademark and a domain name.

The use of lower case rather than upper case letters in the disputed domain name and the absence of the space between the words “save” and “children” are also insufficient to avoid confusion.

- The only difference between the Complainant’s trademark and the disputed domain name is the omission of the definite article “the” in the disputed domain name. This omission has previously been held immaterial and insufficient to avoid confusion.

- Given the reputation of the Complainant’s SAVE THE CHILDREN trademark, including in Pakistan where the Respondent is apparently located, the Complainant submits that the Respondent must have known of the SAVE THE CHILDREN trademark at the time it registered the disputed domain name, particularly because the Respondent purports to be a charitable organization.

- The presence of the words “save” and “children” in the disputed domain name sends a message to Internet users that the Complainant is the source of the Respondent’s website or that some connection exists between the Respondent and the Complainant.

- The Respondent is unknown to the Complainant, is not associated with the Complainant in any way and possesses no rights in or to its SAVE THE CHILDREN trademark.

- The Respondent is using the disputed domain name, which is confusingly similar to the Complainant’s SAVE THE CHILDREN trademark, with a view to misleadingly diverting web users to the Respondent’s website which has a purported charitable purpose similar to the Complainant’s. The Respondent is seeking to capitalize on the reputation and good standing in the worldwide community of the Complainant’s SAVE THE CHILDREN trademark and to take unfair advantage of the Complainant’s rights in its SAVE THE CHILDREN mark. Accordingly, the Respondent cannot be found to have used the disputed domain name in connection with a legitimate non-commercial fair use or bona fide offering of goods or services.

- The Respondent purports to be using the disputed domain name in connection with charity services, i.e., the same activity as the Complainant, which relies upon exploiting user confusion. This can not constitute bona fide commercial or fair use sufficient to legitimize any interest in the disputed domain name.

- In any event, the SAVE THE CHILDREN trademark is so well-known and recognizable throughout the world that it is difficult to conceive of any legitimate use of it without the Complainant’s permission.

- As the Respondent has adopted the Complainant’s well-known trademark, it is questionable whether he can ever become commonly known under the domain name in good faith. Also, the Respondent cannot become known by the domain name solely because of its use of the domain name. The Respondent has to show that it was legitimately known by the disputed domain name prior to the date of registration.

- The only use of the SAVE CHILDREN name prior to June 2004, of which the Complainant is aware, is the Respondent’s possible use in relation to the <savechildren.co.uk> domain name between around 2002 and June 2004 when the Complainant took steps to redirect this domain name to the Save the Children UK website (Complaint, p. 11).

- Similarly, the Respondent cannot become commonly known by the disputed domain name through using it solely to direct Internet users to websites that compete directly with the Complainant and its business.

- The use and registration of the SAVE THE CHILDREN trademark by the Complainant, its predecessors and affiliates precede the Respondent’s registration of the disputed domain name on June 4, 2004, by many years. Further, the Complainant has registered and uses a number of domain names which incorporate its SAVE THE CHILDREN trademark, including <savethechildren.net> and <savethechildren.info>. These domain names were registered by the Complainant on March 12, 1998, and September 13, 2001, prior to the date of the Respondent’s registration of the disputed domain name.

- It is clear that the Respondent has registered and is using the disputed domain name in bad faith with the intention of attracting web users seeking the Complainant’s official websites for the purpose of making some kind of gain from its connection with the Complainant. The Complainant will therefore suffer “initial interest confusion”.

- The Respondent’s ongoing use of the disputed domain name is likely to disrupt the Complainant’s business by damaging the reputation and distinctiveness of its SAVE THE CHILDREN trademark.

- The Complainant is also concerned that members of the Public may be confused and make a donation via the Respondent’s website thinking they are in fact making a donation to the Complainant. The disputed domain name website gives no specific information about the Respondent’s work but makes the process for making a donation very clear. The website at the disputed domain name also appears to be soliciting funds from UK donors in particular because the suggested donations are in pounds sterling (Complaint Annex 10). The Respondent is not a United Kingdom registered charity (Complaint Annex 16).

- Given the fame of the SAVE THE CHILDREN trademark, the Respondent was on notice of the Complainant’s rights when he registered the disputed domain name.

- Alternatively, the Respondent registered the disputed domain name in bad faith because it failed to perform a trademark search for the SAVE THE CHILDREN trademark.

- Given the offensive tone and extremely brief nature of the Response, the Respondent has in fact failed to respond to the Complainant. This has previously been interpreted as evidence of bad faith registration and use of the disputed domain name.

B. Respondent

- Respondent lives in Pakistan and his charity operates in the state of Kashmir which was hit by the worst earthquake in Pakistan’s history. Most of Respondent’s staff was killed and Respondent’s office was destroyed.

- Respondent regrets to say that under the current situation, Respondent is too busy rescuing and rehabilitating children. Respondent is unable to follow this case and appeals that it be postponed.

6. Discussion and Findings

In order to obtain transfer of the disputed domain name in this proceeding, the Complainant must show under the Policy, paragraphs 4(a)(i)-(iii)):

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

- the Respondent has no rights or legitimate interests in the disputed domain name; and

- the Respondent registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has supplied a vast listing of its SAVE THE CHILDREN trademark registrations all over the world (Complaint Annex 7). These include, for example, United Kingdom registration No. 2169978 dated June 18, 1998, in International Classes 016 and 036 for goods that include printed matter and credit card services. There is also a United States trademark registration, No. 991617 dated August 20, 1974, in International Class 042, for eleemosynary services. The Panel notes that, in support of the Complainant’s contention that it also operates in Pakistan where the Respondent is located, the Complainant has demonstrated that it applied for a Save the Children trademark in Pakistan almost four years ago but the application still is pending (Complaint Annex 7). The Panel finds the Complainant does have trademark and service mark rights in the name SAVE THE CHILDREN.

The disputed domain name, <savechildren.info>, is nearly identical and certainly confusingly similar to the disputed domain name. The addition or omission of an article such as “the” in our case has minimal impact on an analysis for identity or confusing similarity (for two further cases finding that dropping the article “the” is “not material”, see The Evening Store.com, Inc. v. Henry Chan, WIPO Case No. D2004-0305 (June 26, 2004); and The News-Gazette, Inc. v. baby safe, WIPO Case No. D2004-0115 (April 7, 2004)). The Panel finds the Complainant has carried its burden of proof under the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant states it has never authorized the Respondent to use its SAVE THE CHILDREN trademark and, until this dispute arose, never had anything at all to do with the Respondent. The Complainant attempted to have the Charity Commission for England and Wales find out who the Respondent was and what he was doing but was unsuccessful because the Respondent resides outside the Commission’s jurisdiction (Complaint Annex 16). When the Complainant wrote to the Respondent on April 13, 2005, to complain about violation of its trademark rights, the Respondent did not offer any information to justify its use but simply replied on May 13, 2005, “Shut up” (Complaint Annexes 13 and 14).

The Policy, at paragraphs 4(c)(i)-(iii), provides for the Respondent to be able to come forward and affirmatively show he has rights and legitimate interests in the disputed domain name. To this end, in his Response, the Respondent claims to run a charitable organization operating to help children in Kashmir, Pakistan. This purports to fit into the Policy at paragraph 4(c)(i) with the Respondent using the disputed domain name in bona fide to offer goods and services before hearing of this dispute. The Respondent does not offer a scintilla of evidence to corroborate his contention. The circumstances of this case, in particular the Respondent’s using the disputed domain name to solicit contributions on the Internet, lead the Panel to conclude the Respondent’s asserted charitable activity is false (Complaint Annex 10). Thus the Respondent has not rebutted the Complainant’s showing that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds the Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s principal contention under bad faith is that the Respondent is using the disputed domain name, <savechildren.info>, to make the public think the Respondent is the Complainant or at least affiliated with the Complainant. The Respondent prominently solicits public donations to help children at the website (Complaint Annex 10). The website says nothing about helping children in Kashmir, but the Respondent claims in his response that his organization in fact operates in Kashmir.None of these statements have been backed by evidence. The explanations given by the Respondent are most likely fabricated for the purposes of this proceeding. The Panel finds this is a violation of the bad faith registration and use provisions of the Policy, paragraph 4(b)(iv). In the Panel’s view, the Respondent is out to defraud the public while using the Complainant’s SAVE THE CHILDREN trademark.

The Complainant suggests other grounds for bad faith such as the insufficiency of the Respondent’s May 13, 2005 response to the Complainant’s April 13, 2005 letter inquiring about Respondent’s use of Complainant’s SAVE THE CHILDREN trademark (Complaint Annexes 14 and 15). The Panel sees little validity in this suggestion. Given that the Respondent’s bad faith conduct fits so snugly into the bad faith provisions of the Policy, paragraph 4(b)(iv), the Panel sees no need to go beyond the Policy here. Notably, the Panel can not follow the Complainant’s suggestion that the Respondent did not conduct a trademark search prior to registering the disputed domain name. By the Complainant’s own admission, it has no trademark registrations in Pakistan, the location of the Respondent (Complaint Annex 7). Thus, the Respondent’s trademark search would have been fruitless. In any case, the Panel is convinced that the world renown of the Complainant’s SAVE THE CHILDREN trademark is such that the Respondent was all too familiar with it. This is manifest in light of the Respondent’s claims to be active in charity work with children.

The Panel finds the Complainant has shown the Respondent registered and is using the disputed domain name, <savechildren.info>, in bad faith under the Policy at paragraphs 4(a)(iii) and 4(b)(iv).

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, <savechildren.info>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist

Dated: November 11, 2005