Kintera, Inc. v. Daniel Goodman

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Kintera, Inc. v. Daniel Goodman

Case No. D2005-0676

1. The Parties

The Complainant is Kintera, Inc.,

San Diego, California, United States of America, represented by Morrison &

Foerster, LLP, United States of America.

The Respondent is Daniel Goodman, Special Kids Fund, Inc., Lakewood, New Jersey,

United States of America.

2. The Domain Names and Registrar

The disputed domain names <charitygiftcertificates.org>, <charitygiftcertificate.info>,

<charitygiftcertificate.net>, <charitygiftcertificate.org>, <charitygiftcertificates.info>,

and <charitygiftcertificates.net> are registered with eNom, Inc.

of Bellevue, Washington, U.S.A.

However, the record shows that the registrations of the <charitygiftcertificate.info>,

<charitygiftcertificate.net>, <charitygiftcertificate.org>, <charitygiftcertificates.info>,

and <charitygiftcertificates.net> domain names expired June 13, 2005,

and were not held by the Respondent at the time this proceeding was commenced.

3. Procedural History

The Complaint was filed with the WIPO Arbitration

and Mediation Center (the “Center”) on June 25, 2005. On June 27, 2005,

the Center transmitted by email to eNom a request for registrar verification

in connection with the domain names at issue. On June 30, 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. In response to a notification by the Center

that the Complaint was administratively deficient, the Complainant filed an

amendment to the Complaint on July 5, 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 July 11, 2005. In accordance with the Rules, paragraph 5(a),

the due date for Response July 31, 2005. The Response was filed with the Center

July 27, 2005.

The Center originally appointed Nels T. Lippert, James W. Dabney

and Howard E. Poliner as panelists in this matter on September 9, 2005. However,

Mr. Poliner resigned due to a conflict and Mayer Gabay was thereafter appointed

in his place. The Panel finds that it was properly constituted. Each member

of 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.

Due to unforeseen circumstances, the decision date

was extended to October 27, 2005.

4. Factual Background

Complainant, Kintera, Inc. is a Delaware corporation

with a principal place of business in San Diego, California U.S.A. Complainant

owns, by assignment:

U.S. Service Mark Registration 2,710,776 for CHARITYGIFT

for charitable fundraising services, namely, facilitating charity donations

through gifts and allowing for the selection of donee charity by the gift

recipient, via global computer network;

U.S. Service Mark Registration 2,666,806 for CHARITYGIFT

(and design) for charitable fundraising services, namely, facilitating charity

donations through gifts and allowing for the selection of donee charity by

the gift recipient, via global computer network.

In addition, Complainant filed on or about June 18, 2005,

a U.S. Service Mark Application for CHARITYGIFT CERTIFICATE (Serial No. 78/657,352)

for charitable fundraising services, namely, facilitating charity donations

through gifts and allowing for the selection of donee charity by the gift recipient,

via global computer network, claiming use as early as April 2000.

Respondent, Daniel Goodman, an individual doing business

as Special Kids, Inc, in Lakewood, New Jersey, operates a website associated

with the domain name <specialkidsfund.org> that solicits charitable gifts

on behalf of social service organizations, hospitals, camps, and schools caring

for developmentally disabled children and at-risk youth. Respondent’s

website displays a link identified as “Charity Gift Certificates”

that resolves to a second website associated with disputed domain name, <charitygiftcertificates.org>.

The latter name was registered by Respondent on or about May 26, 2004. As used

by Respondent, a “Charity Gift Certificate” is a gift certificate

whose recipient can direct the gift amount to a charity of his or her choice.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has prior rights to the

marks CHARITYGIFT, CHARITYGIFT & Design and CHARITYGIFT CERTIFICATE through

use and assignment from its predecessors-in-interest. Until Respondent’s

registration of the disputed domain names, Complainant contends that it was

the only entity using CHARITYGIFT CERTIFICATE in connection with online charitable

fundraising services and even prior to its launch of its own website Complainant’s

predecessor-in-interest used the term “GIFT CERTIFICATE” to describe

its product which was commonly referred to as “Charity Gift”. Since

launch of its website, Complainant and its predecessors-in-interest have used

the <charitygiftcertificate.com> as a domain name for consumers to access

the websites where they can purchase Charitygift certificates.

On April 22, 2000, Complainant’s predecessor-in-interest

registered the disputed domain names and linked those domain names to its website

located at “charitygift.com”. However, in April 2004, Complainant’s

predecessor-in-interest failed to renew the registrations for the disputed domain

names after which, according to Complainant, they were improperly registered

by the Respondent. Complainant further contends that each of the disputed domain

names is identical to the word mark portion of Complainant’s CHARITYGIFT

and CHARITYGIFT & Design marks because the dominant portion of the disputed

domain names is identical to the Complainant’s marks. Complainant contends

that the addition of the descriptive term CERTIFICATE is insufficient to distinguish

the disputed domain names from Complainant’s registered marks. As noted

by Complainant, the addition of a word such as “Certificate” that

is plainly descriptive of the goods offered by Complainant under its marks does

not distinguish the domain names from the marks but rather supports a finding

of confusing similarity. According to Complainant, all of the disputed domain

names incorporate and are identical or virtually identical to Complainant’s

mark CHARITYGIFT CERTIFICATE.

Complainant further contends that Respondent has no

rights or legitimate interests in the disputed domain names because the Respondent

registered the disputed domain names after being aware of Complainant’s

marks and after having contacted Complainant’s predecessor-in-interest

regarding its online business. Therefore, as a result of Respondent’s

contacts with Complainant’s predecessor-in-interest including use of Complainant’s

website, Respondent, according to the Complainant, was well aware of Complainant’s

trademark rights. Thus, Complainant argues that given Respondent’s extensive

knowledge of the marks used by Complainant’s predecessor-in-interest and

Respondent’s knowledge of Complainant’s online charitable fundraising

system, it can be inferred that the Respondent has no legitimate rights or interests

in the disputed domain names. In this regard, the Complainant asserts that none

of the examples set forth in the Policy under which Respondent could demonstrate

legitimate interests in the disputed domain names are found here.

Complainant contends that the registration and bad

faith use requirement is met because the Respondent’s conduct indicates

that he has registered the disputed domain names primarily for the purpose of

disrupting the business of Complainant. Moreover, Complainant contends that

Respondent has engaged in conduct of registering the disputed domain names in

order to prevent Complainant from reflecting its marks in a corresponding domain

name and has engaged in a pattern of doing so as evidenced by the fact that

no fewer than six (6) disputed domain names were registered. Because the disputed

domain names fully incorporate the Complainant’s CHARITYGIFT and CHARITYGIFT

CERTIFICATE marks, consumers are misled to believe that Respondent’s website

is sponsored, affiliated or authorized by the Complainant and creates a likelihood

of confusion among consumers. The fact that Respondent registered the disputed

domain names in which he had no legitimate rights upon Complainant’s failure

to renew is, according to Complainant, further evidence of Respondent’s

bad faith intent.

Bad faith is also established, according to Complainant,

by the fact that only one of the disputed domain names is in use; and that “passive

holding” of the remaining disputed domain names prevents Complainant from

reflecting its own trademark in the corresponding domain names.

B. Respondent

Respondent denies that <charitygiftcertificates.org>

is confusingly similar to any trademark in which the Complaint has rights. Respondent

contends that the domain name <charitygiftcertificates.org> is generic

or highly descriptive of charity gift certificates that Respondent makes available.

Respondent further contends that it has rights and

legitimate interests in using <charitygiftcertificates.org> as a generic

term to identify a website offering charity gift certificates.

Finally, Respondent denies that it registered or used

the domain name <charitygiftcertificates.org> in bad faith. Respondent

contends that it registered the other domain names identified in the Complaint

at a time when it was uncertain which name it would use for its charity gift

certificate business. Once Respondent settled on <charitygiftcertificates.org>

it allowed the other domain name registrations to lapse.

Respondent requests a finding of attempted reverse

domain name hijacking.

6. Discussion and Findings

As noted above, the registrations of the domain names <charitygiftcertificate.net>,

<charitygiftcertificates.net>, <charitygiftcertificate.info>, <charitygiftcertificates.info>

and <charitygiftcertificate.org> expired prior to commencement of this

proceeding. The Panel thus denies, as moot, so much of the Complaint as is addressed

to those names.

With regard to the domain name <charitygiftcertificates.org>,

Paragraph 4(a) of the Policy provides that the Complainant must prove,

with respect to the disputed domain name, all three of the following elements:

(i) The domain name is identical or confusingly similar

to a trademark 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) of the Policy sets out four non-exclusive,

but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii)

above would be evidence of the registration and use of a domain name in bad

faith.

Paragraph 4(c) of the Policy sets out three illustrative

circumstances, any one of which, if proved by the Respondent, would demonstrate

the Respondent’s rights or legitimate interests in the domain name for

purposes of Paragraph 4(a)(ii).

Identical or Confusingly

Similar to a Trademark or Service Mark in Which

the Complainant Has Rights

Complainant has submitted evidence that it has rights in the marks CHARITYGIFT

and CHARITYGIFT & Design. Complainant has failed, however, to prove to the

Panel’s satisfaction that it has rights in the phrase “charity gift

certificates” or the composite term “charitygiftcertificates”.

The latter term describes exactly the nature of a product or service that Complainant

offers, according to its own proofs: gift certificates for charities. The pending

and as-yet unallowed United States application for registration of CHARITYGIFT

CERTIFICATES, filed by Complainant a few days prior to the commencement of this

proceeding, does not constitute evidence of rights in the applied-for mark as

a matter of law.

Assuming that “charitygiftcertificates” is a descriptive rather

than a generic term for a product or service that Complainant offers, Complainant

has submitted no proof from which the Panel could infer that the term “charitygiftcertificates”

has acquired “secondary meaning”, i.e., is primarily understood

in the minds of a majority of some relevant population as identifying CHARITYGIFT®

certificates, as distinct from “charity gift certificates”.

“Relevant evidence of secondary meaning includes length and amount of

sales under the mark, the nature and extent of advertising, consumer surveys

and media recognition.” Snowboards-for-sale.com, Inc. v. Name Administration

Inc., WIPO Case No. D2002-1167 (February 19, 2003).

Here, the Complainant has not submitted evidence of advertising expenditures,

the amount of sales under the mark or, most importantly, a consumer survey or

evidence of media recognition.

The Complainant has also presented no adequate proof that the domain name <charitygiftcertificates.org>

is likely to be perceived as referring to two words, CHARITYGIFT® certificates,

as distinguished from the highly descriptive if not generic phrase, “charity

gift certificates”. The record affirmatively shows, on the contrary, that

both parties characterize their service offerings as “gift certificates”.

In sum, the Complainant has failed to prove, by a preponderance of the evidence,

that the domain name <charitygiftcertificates.org> is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights.

On this record it is more probable than not that the domain name <charitygiftcertificates.org>

would be perceived as identifying “charity gift certificates”, a

type of gift certificate in whose name the Complainant has not proven any rights

to the Panel’s satisfaction.

Reverse Domain Name

Hijacking

The Panel declines to make a finding of reverse domain name hijacking. The

Complainant appears to have believed that the Respondent had registered numerous

similar domain names at the time these proceedings were commenced. Respondent

has presented no evidence sufficient to justify a finding of reverse domain

name hijacking.

7. Decision

The Panel finds for the Respondent. The Complaint

is denied.

Nels

T. Lippert

Presiding Panelist

James W. Dabney

Panelist

Mayer Gabay

Panelist

Dated: November 22, 2005