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

Give2Asia v. Dazzledesigns [2005] GENDND 233 (21 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Give2Asia v. Dazzledesigns

Case No. D2005-0055

1. The Parties

The Complainant is Give2Asia, San Francisco, California, United States of America.

The Respondent is Dazzledesigns, Genevaraon, Sweden.

2. The Domain Name and Registrar

The disputed domain name <give2asia.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2005. On January 17, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 27, 2005, eNom 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 commenced on January 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2005.

The Center appointed Edward C. Chiasson, Q.C. as the Sole Panelist in this matter on March 16, 2005. The panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds that it was constituted properly.

4. Factual Background

The following information derives from the Complaint.

The Complainant is a United States’ nonprofit organization established by The Asia Foundation under the laws of the State of California. The Complainant provides grant management, administration and advisory services to donors and non-profit organizations in connection with their charitable donations in Asia. The Complainant also engages in charitable fund raising.

The Complainant began to use the GIVE2ASIA name and mark in connection with its services at least as early as August 2001. The Complainant uses the GIVE2ASIA mark both in word form alone and with a distinctive design. On January 21, 2003, the Complainant obtained U.S. Service Mark Registration No. 2,677,604 for the GIVE2ASIA mark (with design) for “grant management, administration, and advisory services” in International Class 35 and “charitable fund raising” in International Class 36 on the Principal Register of the United States Patent and Trademark Office.

Under the GIVE2ASIA name and mark, the Complainant currently is administering donations from contributors worldwide to charitable programs in more than 20 countries and regions in Asia. In addition, the Complainant is registered as a public foundation in Canada. To date, the Complainant has facilitated more than $15 million in charitable gifts and pledges to Asia. As a result of the Complainant’s long and continuous use of the GIVE2ASIA mark and its extensive worldwide activities, the GIVE2ASIA mark has received worldwide recognition and the Complainant’s activities have generated substantial goodwill associated with the mark.

The Complainant promotes its GIVE2ASIA name and mark through a variety of media, including the Internet. The Complainant has been using the domain name <give2asia.org> since December 8, 1999, and maintains a website accessible via that domain name which contains information about the Complainant’s services and programs.

Previously, the Complainant was the registrant of the subject domain name, but the registration inadvertently was not renewed for the year 2004.

Based on WHOIS database records, the Respondent registered the subject domain name through eNom, Inc. on or about February 28, 2004.

The Respondent registered the subject domain name without the Complainant’s consent or authorization.

The Respondent directs the subject domain name to a pornographic website that contains hardcore pornographic images and provides links to websites that solicit customers to view fee-based pornography. The Respondent’s website uses “mouse-trapping” technologies in order to prevent visitors from leaving the pornographic website once it has been accessed through the subject domain name.

The Complainant sent a cease and desist letter to the Respondent on September 27, 2004, requesting the Respondent to stop using the disputed domain name immediately. No response was received.

The Respondent has no relationship with or authorization from the Complainant to use the GIVE2SAIA mark. The Respondent is not, and has never been, commonly known by the subject domain name.

The Respondent has an established track-record of intentionally attempting to divert Internet users to the Respondent’s websites for commercial gain by creating a likelihood of confusion with the marks of others. For example, the Respondent registered and operated the same pornographic site accessible through the domain name <dunkindonutsbeware.com> (Dunkin’ Donuts Incorporated and Dunkin’ Donuts USA, Inc. v. Dazzledesigns, WIPO Case No. D2004-0436), which has been held by a previous WIPO panel as being confusingly similar to the world-famous DUNKIN’ DONUTS name and marks.

The Complainant has received numerous complaints from its customers and partners based on the Respondent’s use of the subject domain name to direct users to its pornographic website and the pornographic services the Respondent sells on the website.

The Respondent did not participate in this proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant relies on its use and service mark registration of GIVE2ASIA and states that the subject domain name is identical to it.

Noting that the Respondent is not known commonly by the subject domain name and that it is used to resolve to a pornographic website, the Complainant contends that the Respondent does not have a legitimate interest in the subject domain name.

Bad faith is said to derive from the fact that the Respondent must have known about the Complainant’s mark and is using it for improper purposes. The Complainant also notes that the Respondent has a history of cybersquatting.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to 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 interests in respect of the domain name; and

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

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

A. Identical or Confusingly Similar

The Complainant clearly has rights to GIVE2ASIA both through its registered service mark and through use. The subject domain name differs from the Complainant’s mark only by the addition of “.com”, which has no significance.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Rights or Legitimate Interests

A respondent is not obliged to participate in a domain name dispute, but if it were to fail to do so it would be subject to the inferences that flow naturally from the not unreasonable factual assertions of the complainant.

In this case, the Respondent is not known by the subject domain name, which is identical to the Complainant’s mark. The Respondent is not authorized to use the Complainant’s mark. The subject domain name resolves to a pornographic website. These facts taken individually usually would not support a finding that a respondent does not have a legitimate interest in a domain name, but considered cumulatively with no explanation, they fairly support such a finding.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

A finding that a respondent does not have a legitimate interest in a domain name that is identical to the mark of a complainant does not lead automatically to a conclusion of bad faith, but the facts that support the finding are relevant to the bad faith inquiry.

In this case, the fact that the subject domain name is identical to the Complainant’s mark, the absence of a legitimate interest in the subject domain name and the use of the subject domain name to resolve to a pornographic website, cumulatively support an inference of bad faith.

The inference is strengthened by the Respondent failure to respond to the Complainant’s cease and desist letter, the Respondent’s previous history and its use of mouse-trapping on the pornographic site.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.

The Complainant seeks transfer to it of the subject domain name. The Administrative Panel so orders.

Edward C. Chiasson, Q.C.
Sole Panelist

Dated: March 21, 2005