The Complainant is JDRF International, United States of America (“United States”), represented by Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C., United States.
The Respondent is Nguyen Benedicto, Viet Nam.
The disputed domain name <jdfr.org> is registered with April Sea Information Technology Corporation (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2021. On January 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 26, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 1, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 29, 2021. 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.
Having reviewed the case file, the Panel noted that the disputed domain name was registered in 2004 and was prompted to examine its WhoIs history and related website content history, by virtue of the general powers articulated inter alia in paragraph 10 of the Rules, using the search facilities provided by “www.domaintools.com” and “www.archive.org” respectively. The results of this limited factual research into matters of public record are noted in the factual background section below, and this led the Panel to issue a Procedural Order on May 11, 2021, in which the Parties’ comments were sought on the disputed domain name use and WhoIs situation. Neither of the Parties filed any additional information in response to the Procedural Order.
The Complainant is JDRF International, a Pennsylvania non-profit corporation, which describes itself as a global non-profit dedicated to funding research for the treatment, prevention, and cure of type 1 diabetes. The Complainant claims high national and international visibility in respect of its activities and notes that it has international affiliates in Australia, Canada, Denmark, Israel, the Netherlands and the United Kingdom. The Complainant is highly active in charitable fundraising, and has raised more than USD 2 billion, with USD 232 million of this raised in 2019.
The Complainant was founded in 1970 as the Juvenile Diabetes Foundation, and later changed its name to the Juvenile Diabetes Research Foundation, often abbreviated as JDRF, formally adopting the mark JDRF in 2000. The Complainant operates from the domain name <jdrf.org>. The Panel notes that this domain name was created on March 27, 2000.
The Complainant is the owner of United States Registered Trademark no. 4360046 for the word mark JDRF, registered on July 2, 2013, in international classes 9, 16, 25, 35, 36 and 44.
The disputed domain name was registered on September 8, 2004. Little is known regarding the Respondent, which has not participated in this proceeding. The website to which the disputed domain name directs is a typical pay-per-click (“PPC”) site featuring links for “JDRF”, “charity rater”, “type 1 diabetes”, “donor fundraising software”, “diabetes cure”, and “get a free blood glucose meter”. If an Internet user clicks on any of the links referencing type 1 diabetes, they are presented with a video regarding a possible “home remedy” for the disease.
The Panel notes that the first available historic WhoIs entry for the disputed domain name, dated November 19, 2007, refers to a corporation with an address in California, United States. This registrant remains in position until January 26, 2012. In the next entry, of April 12, 2012, the registrant is listed as Viet Nam Domain Privacy Services of HoChiMinh City, Viet Nam. This registrant remains in position until June 20, 2018, when entries are redacted due to the GDPR.
With regard to historic website content at the disputed domain name, the Panel notes that the first available entry dates from October 25, 2005, and shows non-industry-specific PPC advertising including a section for “Health and Fitness”. The next iteration is October 6, 2008, and shows diabetes-specific PPC including an entry for the “American Diabetes Association”. Further entries for June 7, 2011, and June 7, 2012, show a website on the “www.sedo.com” platform with a “domain not configured” notice. An entry for May 17, 2014, shows a reversion to diabetes-specific PPC, while on August 1, 2015, and March 26, 2016, the website displays diabetes-specific fund-raising PPC links including one for the term “Diabetes Charity”. On June 20, 2017, there is an error page shown. Finally, on August 31, 2018, the content relates to a sponsored listings PPC page where the listings themselves were not captured.
The Complainant contends as follows:
The Complainant has made nearly two decades of continuous, exclusive, and highly visible use of the term JDRF for services focused on type 1 diabetes and has made this mark highly recognizable with a strong consumer association. The disputed domain name is very similar to the Complainant’s <jdrf.org> domain name and users may not detect the typographical variation in the disputed domain name which consists of a switch of the last two letters. The disputed domain name is a typosquatted domain name, deliberately chosen to be one erroneous keystroke away from the Complainant’s domain name in order to misappropriate the Complainant’s goodwill and notoriety. The Respondent’s website lists additional descriptive terms related to the Complainant. The switched letters in the disputed domain name are ineffectual to distinguish this from the Complainant’s own domain name.
The Respondent is using the disputed domain name with intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s federally registered trademarks. The Respondent has intentionally registered a typosquatted domain name to divert traffic from the Complainant’s legitimate website. The content on the Respondent’s website is similar to the Complainant’s own website content, and is designed to attract web traffic from Internet users to further target their data via digital advertisements.
There is no bona fide offering of goods or services being made at the disputed domain name. It is clear that the Respondent is aware of the Complainant’s organization. Certain of the links on the Respondent’s website are similar to trademarks owned by the Complainant. It is not known whether the Respondent is commonly known by the disputed domain name although the Respondent’s typosquatting suggests otherwise, as does the fact that the Complainant is a global non-profit organization dedicated to funding research for the treatment, prevention, and cure of type 1 diabetes, and would have investigated potential claims of trademark infringement against the Respondent had it previously identified the Respondent and its activities.
By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Complainant has used the JDRF mark in commerce since at least December 31, 2000. The Respondent has selected a typographical variant of the Complainant’s domain name in the generic Top-Level Domain (“gTLD”) “.org”, which suggests a non-profit organization such as the Complainant, and which matches the Complainant’s own domain name. The Respondent registered the disputed domain name to divert Internet users looking for the Complainant’s site to it and may have intended to disrupt communications between the Complainant and such users who require information or support from the Complainant, or who would engage in fund-raising activities for it. The mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The first element under the Policy essentially serves as a standing requirement whereby the Complainant must show that it has UDRP-relevant rights in a trademark and that the disputed domain name is identical or confusingly similar to such trademark. The comparison between the disputed domain name and the trademark is typically conducted on a side-by-side basis, with a view to determining whether the trademark is recognizable in the disputed domain name. The gTLD of the disputed domain name, in this case “.org” is typically disregarded for the purposes of the comparison on the basis that this is required for technical reasons only.
The Panel is satisfied that the Complainant has UDRP-relevant rights in its registered trademark JDRF. It is not of significance to the first element of the Policy that such mark post-dates the registration date of the disputed domain name, although this may be relevant to the second and third elements discussed below. Comparing this mark to the second level of the disputed domain name, it may be seen that these are identical, with the exception of the fact that the last two letters in the disputed domain name are transposed or reversed.
In terms of the recognizability of the Complainant’s mark within the disputed domain name, it is generally accepted that an obvious typographical variant of a mark, including the transposition of individual letters, does not render the mark unrecognizable. This is the situation in the present case and the Panel finds that the mere reversal of the last two letters of the second level of the disputed domain name is insufficient to avoid a finding of confusing similarity. Furthermore, it is clear from the website content that the Respondent itself is relying on such confusing similarity, given that such content relates to diabetes, with which the Complainant and its mark are concerned. Therefore, prima facie, the Respondent selected the typographical variant within the disputed domain name because it is confusingly similar to the Complainant’s mark.
In all of the above circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has established the first element under the Policy.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by a respondent, that such respondent has no rights or legitimate interests in the domain name concerned. In the present case, the Panel finds that the Complainant has made out such a prima facie case by reference to its submissions that the Respondent has intentionally selected a typographical variant of the Complainant’s JDRF registered trademark in the disputed domain name, and has used this in connection with content designed to attract web traffic from Internet users. Such traffic is then targeted via digital advertisements relevant to the Complainant’s area of fund-raising activity. The Complainant adds that there is no bona fide offering of goods or services being made at the disputed domain name. Although the Complainant submits that it does not know whether the Respondent has ever been commonly known as JDRF, there is no evidence on the record that this is the case and, in particular, neither the WhoIs record for the disputed domain name nor the website associated with it indicate any legitimate connection to those initials.
In these circumstances, the burden of production shifts to the Respondent to bring forth evidence of any rights or legitimate interests which it might wish to assert in the disputed domain name. The Respondent has not participated in the administrative proceeding and accordingly has put forward no submissions or evidence regarding any rights or legitimate interests in the disputed domain name from which it might have constructed a suitable rebuttal of the Complainant’s prima facie case. The Panel has not found anything in the present record which might serve as such a rebuttal. For completeness, the Panel also notes that it has considered whether the Respondent might have intended to invest in a four character domain name of a wholly generic nature, i.e. without any link to third party trademark rights. Such an explanation, had it been tendered, would most probably have been rejected by the Panel on the basis that the link between the disputed domain name and the Respondent’s subsequently published website content only makes sense in the context of the Complainant’s trademark and its charitable fundraising activities.
In all of the above circumstances, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name and therefore that the second element under the Policy has been established.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(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; or
(ii) you have registered 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Complainant’s submissions regarding this topic focus on paragraph 4(b)(iv) of the Policy. However, before considering the Complainant’s case on registration and use in bad faith, it is necessary in this particular matter for the Panel to determine the appropriate date at which bad faith registration should be assessed. Typically, the assessment is made as at the date of registration of the disputed domain name. However, if the domain name concerned has changed hands over its lifetime, this may result in the assessment taking place as at the date of its acquisition by the current holder. Such acquisition can constitute the effective registration date in respect of such holder, even if it is not specifically identified on the WhoIs record.
As noted in the procedural history and factual background above, the disputed domain name has been registered for a lengthy period, namely over sixteen and a half years. The Panel considered that there was likely to be useful evidence as to the appropriate date on which to assess registration in bad faith contained in both the WhoIs history of the disputed domain name and in historic website captures, which are generally available from online sources. Although it is entitled to conduct such limited factual research, parties should not assume that the Panel will necessarily or even typically conduct research into these matters purely because a domain name appears to be of a longstanding nature. The more appropriate course of action is for a complainant to address itself to the history of the domain name concerned when formulating its complaint.
The WhoIs history of the disputed domain name as identified by the Panel (and as put to the Parties for their comments) strongly suggests that the Respondent is not the original registrant of the disputed domain name. The Respondent has been disclosed upon Registrar verification as a person with an address in Viet Nam. The original registrant was a corporation with an address in California, United States. There is no apparent connection between these two. The historic WhoIs records show a change in registrant around April 12, 2012, when the said United States corporation was replaced by a privacy service based in Viet Nam. Given that this is the first point at which a Vietnamese connection is introduced into the history of the disputed domain name, it seems more likely than not to the Panel that this is the point at which the Respondent acquired the disputed domain name. Accordingly, and in the absence of any comments from the Parties on this topic, the question of registration in bad faith will be assessed as at that date.
By April 2012, although the Complainant’s registered trademark had yet to be filed, it is apparent that the Complainant was already engaged in activities with regard to diabetes fundraising and research under the JDRF mark. The Complainant says that it had formally adopted the JDRF mark some twelve years earlier, having previously been known as the Juvenile Diabetes Research Foundation. Furthermore, the Complainant asserts that this particular name had led to it being referred to by the corresponding initialization from an even earlier date. In terms of supporting evidence before the Panel, the Complainant mentions its own domain name, <jdrf.org>, which the Panel notes was registered on March 27, 2000. On the balance of probabilities, and in the absence of any contradictory submissions from the Respondent on this topic, the Panel finds that the Complainant has an association with the JDRF mark which predates the Respondent’s acquisition of the disputed domain name.
Lest there be any remaining doubt as to whether the Complainant had built the necessary reputation in its JDRF mark before 2012, this is dispelled by the fact that the disputed domain name, which is effectively a typographical variant of that mark, has evidently been concerned with diabetes-specific PPC content since as early as October 6, 2008. As noted in the preceding section, the Panel is unaware of any possible links between diabetes/fundraising and the initials “jdfr”, other than in the context of the latter being a typographical variant of the Complainant’s JDRF mark. It therefore seems entirely reasonable to the Panel to infer that the disputed domain name was acquired by the Respondent in 2012 with knowledge of the Complainant’s then unregistered JDRF mark and with intent to target it via pointing the disputed domain name to PPC related to the Complainant’s particular field of charitable activity. In all of these circumstances, the Panel is satisfied on the balance of probabilities that the disputed domain name was acquired by the Respondent in bad faith.
Turning to the use to which the disputed domain name has been put, the Panel notes that the historic website content supports the previous finding that the disputed domain name was acquired by the Respondent with the intent of targeting the Complainant’s rights. In terms of active website captures since April 2012, the disputed domain name has only ever been configured to use PPC which makes reference to and takes unfair advantage of the Complainant’s rights in its JDRF mark. This suggests a deliberate action on the part of the Respondent by way of the configuration of its online advertising.
As the Panel indicated in the preceding section, while it is not uncommon for third parties to register short domain names of three or four characters that have no obvious meaning in an expectation that they may intrinsically be of value to someone in the future, and therefore in good faith, this is not such a case. Both before and after the disputed domain name’s probable acquisition date by the Respondent, it has been used to target the Complainant’s fundraising activities. It is an obvious typographical variant of the Complainant’s mark. These facts suggest that the Respondent’s motivation for acquisition and use of the disputed domain name is entirely bound up with the Complainant’s rights and does not indicate any such alternative good faith motivation.
It must also be noted that the Respondent has remained silent in the face of the Complainant’s allegations of registration and use in bad faith and thus has provided the Panel with no explanation for its conduct. Furthermore, when given an opportunity to comment on the WhoIs and website history identified by the Panel, the Respondent continued to maintain this silence. It is reasonable to infer from these circumstances that if the Respondent had any alternative to the relatively obvious inferences which the Panel has drawn from this material, it would have sought to put this forward when provided with a specific opportunity to do so. That it did not strongly suggests to the Panel that there is no alternative good faith motivation which the Respondent might have put forward for its acquisition and use of the disputed domain name.
In all of the above circumstances, the Panel finds that the Complainant has demonstrated that the disputed domain name has been registered and is being used in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <jdfr.org> be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: May 26, 2021