The Salvation Army v. Info-Bahn, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Salvation Army v. Info-Bahn, Inc.

Case No. D2001-0463

1. The Parties

1.1 The Complainant is The Salvation Army, a New York corporation with its

principal office at 440 West Nyack Road, West Nyack, New York 10994-1739, USA.

1.2 The Respondent is Info-Bahn, Inc., a corporation having a place of business

at 4304 River Close Boulevard, Valrico, Florida 33594, USA.

2. The Domain Name and Registrar

2.1 The disputed domain name is <salvationarmysucks.com>.

2.2 The registrar of the disputed domain name is BulkRegister.com with a business

address at 7 East Redwood Street, Third Floor, Baltimore, Maryland 21202, USA.

3. Procedural History

3.1 Complainant initiated the proceeding by filing a complaint, received by

the WIPO Arbitration and Mediation Center ("WIPO") on March 30, 2001.

3.2 On April 5, 2001, all formal requirements for the establishment of the

complaint were checked by WIPO and found to be in compliance with the ICANN

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 Domain Name Dispute Resolution Policy (the

"Supplemental Rules"). The Panel accepts the WIPO checklist as evidence

of proper compliance with the Policy, Rules, and Supplemental Rules.

3.3 On April 6, 2001, WIPO transmitted notification of the complaint and commencement

of the proceedings to Respondent by email.

3.4 On April 6, 2001, WIPO received an email from the Respondent indicating

that it was not renewing the domain name at issue and that the Complainant could

register the domain name in May of 2001 once the registration expires.

3.5 On April 9, 2001, WIPO notified the Respondent via email that WIPO acted

as a dispute resolution provider and that the Respondent should contact the

Complainant's counsel.

3.6 On April 14, 2001, WIPO received an email from the Respondent disputing

the allegations in the complaint. On April 19, 2001, WIPO informed the Respondent

via email that it had received the Respondent's email but that it was not a

proper response under the Rules. WIPO also informed the Respondent that regardless

of whether it corrected the defects in its response, WIPO would proceed to appoint

the Administrative Panel in accordance with the Rules.

3.7 On April 25, 2001, WIPO invited the undersigned to serve as panelist in

this administrative proceeding, subject to receipt of an executed Statement

of Acceptance and Declaration of Impartiality and Independence ("Statement

and Declaration"). On April 26, 2001, the undersigned transmitted by facsimile

the executed Statement and Declaration to WIPO.

3.8 On April 27, 2001, Complainant and Respondent were notified by WIPO of

the appointment of the undersigned sole panelist as the Administrative Panel

(the "Panel") in this matter. WIPO notified the Panel that, absent

exceptional circumstances it would be required to forward its decision to WIPO

by May 10, 2001.

The Panel has not received any further requests from Complainant or Respondent

regarding further submissions, waivers or extensions of deadlines, and the Panel

has not found it necessary to request any further information from the parties.

The proceedings have been conducted in English.

4. Factual Background

4.1 Complainant The Salvation Army owns the rights to the registered service

mark THE SALVATION ARMY printed across a shield for "religious and charitable

services - namely, the conduct of religious meetings, the operation of hospitals,

clinics, maternity homes, settlements and day nurseries, children's homes, rehabilitation

centers for alcoholics, clubs for service men, missing persons bureaus, camps

for children and adults, and care for disaster victims, unmarried mothers, prisoners

and parolees and their families, the aged, and the homeless and the destitute,"

which was registered April 12, 1966, with a claimed first use as early as January

1, 1918.

4.2 The Respondent registered the domain name <salvationarmysucks.com>

with BulkRegister.com on June 1, 2001. The domain name is not active.

5. Parties’ Contentions

A. Complaint

Complainant states:

"Founded in London in 1865, The Salvation Army is a religious and charitable

organization that conducts programs in over 100 countries. It maintains or supports

over 15,000 centers for worship as well as a wide range of charitable, social,

medical, educational and other community services. Information about The Salvation

Army is disseminated through magazines, books, brochures, newspapers and the

Internet to millions of people in the United States and abroad. The Salvation

Army receives a majority of its funding from charitable contributions. It relies

on the good will associated with its name to receive such charitable contributions.

As a result of the efforts, charitable works and activities of The Salvation

Army, its name, "The Salvation Army" has achieved world-wide recognition

in the minds of the public as a symbol of the good works and religious mission

of The Salvation Army."

"The Respondent is a commercial business not affiliated with The Salvation

Army that (a) has registered the "salvationarmysucks.com" domain name,

(b) has not used the "salvationarmysucks.com" domain name to identify

a web site, and (c) has offered to sell the "salvationarmysucks.com"

domain name to The Salvation Army for a profit."

"The Salvation Army owns the rights to the registered service mark which includes

"THE SALVATION ARMY" mark printed across a shield. The service mark

was registered on the principal register of the United States Patent and Trademark

Office on April 12, 1966 and bears U.S. Registration No. 807,044. On April 12,

1986, the registered mark was renewed for an additional term of twenty years.

A copy of the registration is attached hereto as Annex 4."

"The Salvation Army also has common law service mark rights in its name based

on its continuous use of the name "The Salvation Army" for more than

a century. In the United States, the name "The Salvation Army" has

been used continuously since 1879 and appears on all of The Salvation Army’s

brochures, advertisements, on its Internet web sites, on its collection sites

for tangible personal property, in its thrift stores, and in connection with

its fundraising solicitations, including its nationally-known Christmas kettle

solicitation campaign."

"The Salvation Army has web sites located at, among other Internet addresses,

"www.salvationarmy.org", "www.salvationarmyusa.org", "www.salvationarmy-usaeast.org",

"www.salvationarmyusawest.org", "www.salvationarmysouth.org",

and "www.usc.salvationarmy.org"."

"In response to the letter sent on behalf of The Salvation Army which is attached

hereto as Annex 5, Respondent sent the letter attached hereto as Annex 6, in

which Respondent offers to sell the "salvationarmysucks.com" domain

name to The Salvation Army for an amount significantly in excess of the cost

to the Respondent of registering the "salvationarmysucks.com" domain

name. In the annexed letter, Respondent offers to sell the "salvationarmysucks.com"

domain name to The Salvation Army for $750. Although The Salvation Army is uncertain

as to the amount the Respondent paid to register the "salvationarmysucks.com"

domain name, as of March 15, 2001, the Bulk Register web site listed a one-time

$79 membership fee, in addition to $10 or $12 per domain name per year. A copy

of a print-out from the Bulk Register web site including the pricing information

is attached hereto as Annex 7. This offer by Respondent to sell the "salvationarmysucks.com"

domain name to The Salvation Army for valuable consideration in excess of Respondent’s

out-of-pocket costs directly related to the "salvationarmysucks.com"

domain name fits squarely within the definition of bad faith in Paragraph 4(b)(i)

of the Policy."

"Respondent’s bad-faith intent to extract money from The Salvation Army is

underscored by the following quotes from Annex 6: (a) "[w]e are not in

the mode of purchasing domain names . . . and losing money on our investments",

(b) "we will agree not to publish a derogatory article singularly about

your client with regard to this topic, if this matter is handled as we have

outlined in this letter", and (c) "We will gladly allow the sale/transfer

of this domain name to your client for our domain name sale fee of $750.00 (which

includes three hours of my time to handle this issue). Should you cause our

firm to invest more time due to prolonged negotiations our price will escalate

accordingly by $250.00 per hour of time consumed by this matter"."

"Respondent’s offer to sell the "salvationarmysucks.com" domain name

to The Salvation Army for an amount significantly in excess of respondent’s

cost related to the registration of the "salvationarmysucks.com" domain

name distinguishes this case from Panel Decisions D2000-1104,

D2000-1015, and D2000-1455,

in which there was no evidence that the Respondents had solicited money for

the transfer of the domain names in question. Here, as in Panel Decision D2000-0477,

Respondent did not register the domain name in order to express opinions or

to seek the expression of the opinion of others. Respondent’s intention was

to extract money from The Salvation Army.

"Finally, Respondent states in Annex 6 that it has "successfully purchased

most of the major non-profit names with the domain name and are in the process

of negotiating transfers of these to their organizations." Although Complainant

has been unable to verify this statement by Respondent, the United States Court

of Appeals for the First Circuit has upheld a district court’s determination

that a registrant’s ownership of numerous domain names containing the famous

trademarks of others in the hope that the famous trademark holders will be willing

to pay to reclaim their intellectual property rights suggests bad faith under

the Anticybersquatting Consumer Protection Act."

"The Salvation Army has not licensed or otherwise authorized respondent to

use the name of The Salvation Army. Respondent is not using or preparing to

use the "salvationarmysucks.com" domain name or a name corresponding

to the "salvationarmysucks.com" domain name in connection with a bona

fide offering of goods or services. In the letter attached hereto as Annex 6,

Respondent states that Info-Bahn has "no intention of creating or operating

a web site with this domain". Respondent has not commonly been known by

the "salvationarmysucks.com" domain name. Respondent has not at any

point claimed that it is commonly known by the "salvationarmysucks.com"

domain name. Respondent is not making a legitimate noncommercial or fair use

of the "salvationarmysucks.com" domain name, without intent for commercial

gain to misleadingly divert consumers or to tarnish the service mark at issue."

"Whereas Respondent claims in Annex 6 that the registered "salvationarmysucks.com"

domain name "is for an expressive purpose and falls under the constitutional

protection of the right to freedom of speech," Respondent also states that

his company has "no intention of creating or operating a web site with

this domain name." Because it is not associated with a web site, the "salvationarmysucks.com"

domain name can not have any freedom of expression protection as criticism or

parody. This factor distinguished this case from Panel Decision D2000-1104

which relies primarily on respondent’s assertion that it is running a freedom

of expression site."

"Respondent’s claim that its registration of the "salvationarmysucks.com"

domain name was for an expressive purpose is further undermined by its own assertions

in Annex 6 (a) that its registration of the "salvationarmysucks.com"

domain name was part of an "experiment to determine how proactive nonprofits

such as the Salvation Army are protecting their image in cyberspace," (b)

that the company is "in the business of licensing the use of our domain

names to an interested leasee [sic]" and (c) that the company has "successfully

purchased most of the major non-profit names with this domain name and . . . [is]

in the process of negotiating transfers of these to their organizations."

"As stated above, the "salvationarmysucks.com" domain name is identical

to The Salvation Army’s service mark except that (a) the "salvationarmysucks.com"

domain name includes the generic top level domain name ".com" and

(b) the "salvationarmysucks.com" domain name adds the word "sucks"

to the mark. . Although the appropriate top level domain name for a not-for-profit

corporation such as The Salvation Army is ".org", an individual searching

for a Salvation Army domain name or web site would be unlikely to distinguish

among the domain names based solely on the top level domain name."

"The Salvation Army submits that while the slang term might lead some people

to believe that the "salvationarmysucks.com" domain name was not associated

with the owner of the service mark, "equally others may be unable to give

it any very definite meaning and will be confused about the potential association

with" The Salvation Army."

B. Respondent states:

"Info-Bahn Inc. is not renewing the domain name in this complaint. Therefore,

if your client wants to claim this domain then they will be able to in May of

2001 once this domain has been forfeited by Info-Bahn, Inc. This domain was

done as part of a research project and there is no commercial or economic desire

by Info-Bahn, Inc. to continue with the control of this domain."

"Info-Bahn, Inc. does not agree with the complainant's description or representation

of our intentions. The complainant has misstated our purposes and makes assumptions

as to our long-term use of intellectual properties. Our stated intention to

not proceed with the use of the domain is not an admittance of guilt or acknowledgement

of any wrongdoing. As a matter of factual record Info-Bahn, Inc. did not contact

the Salvation Army regarding the use or sale of the domain. The Salvation Army

threatened Info-Bahn, Inc. through the use of intimidation and ambiguous claims

to the domain in question."

"Furthermore, the matter of costs associated with this domain involve more

than the out of pocket expense fees paid to bulkregister.com. As is stated in

our letter Info-Bahn, Inc. had costs associated with research & development

and continues to have costs at $250.00 per hour for mitigation of this domain."

"As stated, previously Info-Bahn, Inc. will agree to transfer the domain to

the Salvation Army as an act of goodwill and to show that there is no malicious

intent on the part of Info-Bahn, Inc. and/or it's officers toward the Salvation

Army. Otherwise, we intend to allow the domain to forfeit when it renews in

May 2001."

"In addition, Info-Bahn, Inc. did contact Mr. Dolan on 4-10-01 and Mr. Dolan

was told that Info-Bahn, Inc. would agree to transfer the domain to Salvation

Army. Mr. Dolan said, that Info-Bahn, Inc. would need to proceed with this matter

under your direction. We respectfully request that the WIPO suggest how we can

mitigate this domain to the satisfaction of the complainant if he does not provide

communication that enables a successful non-combatant procedure to comply with

their stated objective in the WIPO complaint. Info-Bahn, Inc. shall preserve

the right to legal remedy if this matter continues to escalate and cause additional

expense to Info-Bahn, Inc."

6. Discussion and Findings

6.1 The Uniform Domain Name Dispute Resolution Policy (the "Policy"),

adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on

August 26, 1999, (with implementing documents approved on October 24, 1999),

is addressed to resolving disputes concerning allegations of abusive domain

name registration. The Panel will confine itself to making determinations necessary

to resolve this administrative proceeding.

6.2 Before reaching the merits, the Panel must decide whether to consider the

Respondent's emails dated April 6, 2001, and April 14, 2001, as its response.

Under the Rules, this determination is solely within the discretion of the Panel.

Rules 10(a), 10(b) and 10(d). As the Complainant has not objected to the Respondent's

email submissions and because they were received before the Panel began any

substantive review of this matter, it is appropriate to consider the emails.

6.3 Paragraph 4(a) of the Policy sets forth three elements that must be established

by a Complainant to merit a finding that a Respondent has engaged in abusive

domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) Respondent’s domain name has been registered and is being used in bad

faith.

In the administrative proceeding, the complainant must prove that each of these

three elements are present.

6.4 Based upon the registered service mark for THE SALVATION ARMY and the continuous

use of the mark, the Complainant clearly has rights in the mark.

6.5 Complainant asserts that the domain name <salvationarmysucks.com>

is, in part, identical to and, on the whole, confusingly similar to the service

mark THE SALVATION ARMY.

6.6 As in initial matter, the Panel notes that the Respondent has not challenged

the Complainant's allegation that the domain name is identical and/or confusingly

similar to the registered service mark.

6.7 The Panel finds that the domain name is not identical to the Complainant's

registered service mark. A common dictionary defines the term "identical" to

mean "being the same" or "exactly equal or alike." Obviously the addition of

the word "sucks" prevents the domain name and service mark from being identical.

The Policy does not say "identical in part" and the Panel believes expanding

the definition of "identical" would not be productive.

6.8 However, the Panel does find that the domain name is confusingly similar

to the Complainant's registered service mark. A domain name is confusingly similar

to a trademark for purposes of the Policy when the domain name includes the

trademark regardless of the other terms in the domain name. See Wal-Mart

Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO

Case No. D2000-0662.

6.9 The Panel finds the "salvationarmysucks.com" domain name is confusingly

similar to the registered service mark THE SALVATION ARMY, and that the Complainant

has established it has rights in the mark THE SALVATION ARMY, pursuant to paragraph

4(a)(i) of the Policy.

6.10 Paragraph 4(c) of the Policy lists several circumstances, without limitation,

that if found by the Panel shall demonstrate the Respondent's rights or legitimate

interests to the domain name for purposes of paragraph 4(a)(ii). In particular,

paragraph 4(c) states:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable

preparations to use, the domain name or a name corresponding to the domain name

in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial 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.

6.11 There is no evidence in the record that would indicate that Respondent

has any rights or legitimate interests in respect of the domain name <salvationarmysucks.com>.

6.12 In its July 8, 2000, letter to the Complainant's counsel, the Respondent

stated:

"[W]e reserve as society the right to freedom of speech. Such as the ability

to state our opinion of the Salvation Army or any other company or non-profit

agency. Our registered domain name is for an expressive purpose and falls under

the constitutional protection of the right to freedom of speech. We are not

in the mode of purchasing domain names (similar to real estate investments in

the physical world) and losing money on our investments. We have no intention

of creating or operating a web site with this domain name under our business

plan." (emphasis added)

As this paragraph indicates, the domain name <salvationarmysucks.com>

was purchased by the Respondent as an investment. Although the Respondent attempts

to invoke an arguably legitimate noncommercial or fair use of the domain name,

i.e., criticism of The Salvation Army, in the same breath it admits that it

has no intention of doing so.

6.13 The Panel finds that the Respondent has no rights or legitimate interests

in respect of the domain name "salvationarmysucks.com", pursuant to

paragraph 4(a)(ii) of the Policy.

6.14 Paragraph 4(b) of the Policy lists several factors, without limitation,

that if found by the Panel to be present, shall be evidence of the registration

and use of a domain name in bad faith. In particular, paragraph 4(b)(i) states:

(i) circumstances indicating that you have registered or you have 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 that complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name.

6.15 In the same letter of July 8, 2000, the Respondent stated:

"We are in the business of licensing the use of our domain names to an interested

leasee."

"Our company's experiment was established to determine how proactive non-profits

such as the Salvation Army are protecting their image in cyberspace."

"We will keep this issue discreet and confidential as long as your firm and

client adhere to our settlement guidelines. We reserve the right to publish

the results of our experiment as part of the over-all initial objective of this

project. Otherwise, it would be necessary to increase the value sought for this

sale significantly."

"I will further note that we will agree not to publish a derogatory article

singularly about your client with regard to this topic, if this matter is handled

as we have outlined in this letter."

"We have successfully purchased most of the major non-profit names with this

domain name and are in the process of negotiating transfers of these to their

organizations. In addition, we purchased most of the major advertisers in some

of the most notable business magazines in North America. This was meant as a

[sic] both a lesson in pro-active public affairs & relations and an experiment

based on the evolution of business in the Internet society."

"We will gladly allow the sale/transfer of this domain name to your client

for our domain name sale fee of $750.00 (which includes three hours of my time

to handle this issue). Should you cause our firm to invest more time due to

prolonged negotiations our price will escalate accordingly by $250.00 per hour

of time consumed by this matter."

"In the future, I would advice [sic] your client to instruct their public

relations department to take the appropriate steps to protect their brand, products,

slogans and themes in cyberspace more proactively."

"I do assure you that any attempt to litigate this will cause our company

to transfer this to another party more interested in the debate than our company."

"I hope you will accept our offer of sale of this domain, as you know litigation

would exceed this cost by 50 fold."

6.16 It is abundantly clear from the foregoing that the Respondent registered

the <salvationarmysucks.com> domain name primarily for the purpose of

selling, renting, or otherwise transferring the domain name registration to

the Complainant.

6.17 In the same letter the Respondent admitted that its "registrar charges

approximately $35.00 for the transfer" of a domain name. The Respondent has

not proffered any evidence of its documented out-of-pocket costs directly related

to the domain name. The Panel finds that the Respondent's offer to sell the

domain name for $750.00 is clearly in excess of any reasonable out-of-pocket

costs associated with the domain name.

6.18 The Respondent's conduct clearly evidences its registration and use in

bad faith of the <salvationarmysucks.com> domain name. Therefore, the

Panel finds the Complainant has established that the Respondent registered and

used the domain name <salvationarmysucks.com> in bad faith, pursuant to

paragraph 4(b)(iv) of the Policy.

7. Decision

As the Complainant, The Salvation Army, has established that the Respondent,

Info-Bahn, Inc., has engaged in abusive registration of the domain name <salvationarmysucks.com>

within the meaning of paragraph 4(a) of the Policy, the Panel orders that the

domain name <salvationarmysucks.com> be transferred to the Complainant.

R. Eric Gaum

Sole Panelist

Dated: May 10, 2001

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