Arkansaskomen.org

The timeline behind arkansaskomen.org

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION The Susan G. Komen Breast Cancer Foundation d/b/a Susan G. Komen For the Cure v. Host Master Claim Number: FA0810001227646 PARTIES Complainant is The Susan G. Komen Breast Cancer Foundation d/b/a Susan G. Komen For the Cure (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., Texas, USA. Respondent is Host Master (“Respondent”), London, United Kingdom. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <arkansaskomen.org>, registered with Dynadot, LLC. PANEL The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding. The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2008. On October 3, 2008, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <arkansaskomen.org> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On October 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 27, 2008 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@arkansaskomen.org by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On October 30, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <arkansaskomen.org> domain name is confusingly similar to Complainant’s KOMEN mark. 2. Respondent does not have any rights or legitimate interests in the <arkansaskomen.org> domain name. 3. Respondent registered and used the <arkansaskomen.org> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, The Susan G. Komen Breast Cancer Foundation d/b/a Susan G. Komen For the Cure, comprises the world’s largest network of breast cancer survivors and activists. Since its formation in 1982, Complainant has raised and invested almost $1 billion for breast cancer research, education, and awareness. Complainant commonly refers to its organization and activities under the KOMEN mark, and registered and uses the <komen.org> domain name to advertise online. Complainant has also registered and uses the <komenarkansas.org> domain name to promote its organizations activities that take place in the state of Arkansas. Complainant has registered the SUSAN G. KOMEN FOUNDATION (Reg. No. 1,955,572 issued February 13, 1996), SUSAN G. KOMEN BREAST CANCER FOUDATION (Reg. No. 2,185,626 issued September 1, 1998), and SUSAN G. KOMEN FOR THE CURE (Reg. No. 3,309,531 issued October 9, 2007) marks with the United States Patent and Trademark Office (“USPTO”). Respondent registered the <arkansaskomen.org> domain name on August 27, 2008 and uses it to display pay-per-click advertising mostly unrelated to Complainant’s operations. 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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 It is well-established that registration of a mark with an appropriate governmental authority such as the USPTO confers rights in that mark to a complainant pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). Therefore, Complainant has clearly established rights in its SUSAN G. KOMEN FOUNDATION, SUSAN G. KOMEN BREAST CANCER FOUDATION, and SUSAN G. KOMEN FOR THE CURE marks pursuant to Policy ¶ 4(a)(i). However, Complainant can also establish rights in the KOMEN mark pursuant to Policy ¶ 4(a)(i) by showing that the mark has acquired secondary meaning sufficient to confer common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant registered and used the <komen.org> domain name to promote its activities online, and the resolving website shows that Complainant identifies its organization under the KOMEN mark. Complainant has raised almost $1 billion to support breast cancer research, education, and awareness, so the KOMEN mark has been used in commerce and has gained secondary meaning as an identifier of the SUSAN G. KOMEN BREAST CANCER FOUDATION. Therefore, the Panel finds that Complainant has established sufficient secondary meaning in the KOMEN mark such that Complainant has acquired common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). Respondent’s <arkansaskomen.org> domain name contains Complainant’s KOMEN mark in its entirety and adds the U.S. state name “arkansas” and the generic top-level domain (“gTLD”) “.org.” Adding a geographic location and a gTLD does not reduce the confusing similarity in most cases, and especially in this case since Complainant uses the <komenarkansas.org> domain name. Therefore, the Panel concludes that Respondent’s <arkansaskomen.org> domain name is confusingly similar to Complainant’s KOMEN mark pursuant to Policy ¶ 4(a)(i). See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar”); see also Am. Online, Inc. v. Asian On-Line This Domain For Sale, FA 94636 (Nat. Arb. Forum May 17, 2000) (finding that the domain names, which consist of “ao-l” and geographic location are confusingly similar to the complainant’s mark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has alleged that Respondent lacks rights and legitimate interests in the <arkansaskomen.org> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Respondent is using the <arkansaskomen.org> domain name to display a list of hyperlinks advertising products and services mostly unrelated to Complainant’s business. Respondent presumably earns click-through fees for each redirected Internet user. The Panel finds that such use of the <arkansaskomen.org> domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). In addition, there is no evidence in the record that Respondent is commonly known by the <arkansaskomen.org> domain name, especially since the WHOIS information identifies Respondent simply as “Host Master.” Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <arkansaskomen.org> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent is using the <arkansaskomen.org> domain name to display a list of hyperlinks that are unrelated to Complainant’s business. Since the disputed domain name is confusingly similar to Complainant’s KOMEN mark, this use may lead customers to become confused as to the affiliation, sponsorship, or endorsement of the goods and services advertised on Respondent’s website that resolves from the disputed domain name. Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s KOMEN mark, presumably from earning click-through fees. Thus, Respondent’s registration and use of the <arkansaskomen.org> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). 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 <arkansaskomen.org> domain name be TRANSFERRED from Respondent to Complainant. The Honorable Charles K. McCotter, Jr. (Ret.), Panelist Dated: November 4, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.