The Complainant is Cancer Support Community, Inc., United States of America (“United States”), represented by Bryan Cave Leighton Paisner LLP, United States.
The Respondent is Jacob Kovacs, United Kingdom.
The disputed domain name <gildasclub.org> is registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2021. On September 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 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 September 16, 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 September 20, 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 September 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2021.
The Center appointed John Swinson as the sole panelist in this matter on October 21, 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.
The Complainant is a California non-profit organization with its principal place of business in Washington D.C. The Complainant offers a variety of programs for all people affected by cancer, including education and emotional and social support services. These programs are offered through a network of community-based affiliates. One of these programs is Gilda’s Club Worldwide. Gilda’s Club was founded by actor Gene Wilder in New York City in 1995.
The Complainant owns two United States trademark registrations for GILDA’S CLUB & Design (United States Registration No. 2699628, registered on March 25, 2003) and GILDA’S CLUB WORLDWIDE & Design (United States Registration No. 2758052, registered on September 2, 2003).
The disputed domain name was originally registered and used by the Complainant. The Complainant registered the disputed domain name on March 2, 1998, but inadvertently allowed it to lapse in mid-2021.
The Respondent did not file a response, so little information is known about the Respondent. The Respondent appears to be an individual with an address in London.
At this time of this decision, the disputed domain name diverts to “wholisticresearch.com/gildasclub/” which is a webpage that has the heading: “Gilda’s Club Is Now Part of WholisticResearch” and states, in part:
“WholisticResearch, a website dedicated to research and guides on the latest nootropics and cognitive enhancers, has acquired the domain name gildasclub.org (“Gilda’s Club”). An important thing to note is that this was only an acquisition of the domain name gildasclub.org rather than the brand Gilda’s Club/Gilda’s Club Worldwide, which is owned by the Cancer Support Community Corp. and has nothing to do with this domain acquisition. The Cancer Support Community let the domain gildasclub.org expire, allowing anyone to reregister it. This domain acquisition brings together two leaders in their respective fields: WholisticResearch is known for studying promising new methods for cognitive enhancement; Gilda’s Club is known for providing person-centered support services to people with cancer and their loved ones.”
In summary, the Complainant makes the following submissions:
The Complainant’s GILDA’S CLUB trademark has been well-known for 20 years and accordingly the Complainant has common law trademark rights in GILDA’S CLUB.
The Complainant owns two United States trademark registrations, referred to above.
The disputed domain name was registered in 1998 and was used by the Complainant and its predecessors in title since 2001.
The Complainant inadvertently allowed the disputed domain name to lapse in mid-2021.
The disputed domain name is identical and confusingly similar to the Complainant’s trademark.
The Respondent is not commonly known as GILDA’S CLUB, is not associated with the Complainant, and has not received authorization or a license to use the Complainant’s trademark.
The Respondent falsely claims that the Respondent is associated with the Complainant.
The Respondent is making a commercial use of the disputed domain name.
The Respondent adopted and continues to use the disputed domain name that wholly incorporate the Complainant’s trademark for the illegal and improper purpose of: (i) illegally trading upon the Complainant’s goodwill to confuse, mislead, deceive and divert customers; and (ii) intentionally tarnishing and diluting the Complainant’s valuable and well-known trademark.
The Respondent utilizes the disputed domain name to divert potential users (a) away from the Complainant’s former website at <gildasclub.org>, (b) away from the Complainant’s authentic GILDA’S CLUB services, and (c) toward the Respondent’s competitor website at “wholisticresearch.com/gildasclub”.
Where a respondent is found to be diverting users to its website to generate traffic and sales commissions for its own commercial benefit, such conduct is uniformly recognized as constituting bad faith under the Policy.
The Respondent plainly knew of the Complainant’s long and continuous use of its GILDA’S CLUB trademarks at the time of registration of the disputed domain name, and that it had no right, title or interest, whatsoever, in these marks or the disputed domain name. The Respondent registered the disputed domain name almost two decades after the Complainant began using the GILDA’S CLUB trademark and shortly after the Complainant’s domain name registration lapsed.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant, even if the Respondent does not file a Response.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
As set out above, the Complainant owns trademark registrations for GILDA’S CLUB and GILDA’S CLUB WORLDWIDE. These registrations include words and a device, showing a caricature of Gilda Radner and a door. Because the device elements cannot be included in a domain name, they do not need to be considered when assessing identity or confusing similarity. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031.
Additionally, the Complainant asserts common law rights in GILDA’S CLUB and GILDA’S CLUB WORLDWIDE. This requires evaluation of the Complainant’s use of these terms and the reputation that has developed as a result. Here, the history of this trademark is relevant and significant. The Panelist resides in Australia, and is aware of the following from his general knowledge of popular culture, which is confirmed by information in the Complaint and generally available on the Internet.
Gilda Radner was a famous comedian and actress. She starred in the well-known United States television comedy show Saturday Night Live from 1975 to 1980 as an original cast member. In 1986, Gilda Radner was diagnosed with ovarian cancer after about a year of being mis-diagnosed. Her husband was famous comedian and actor Gene Wilder. When she was told that she was in remission, Gilda Radner wrote the bestselling book It’s Always Something (published in 1989) about her struggle with cancer. Gilda Radner died of ovarian cancer in 1989. Her death was a major news event in the United States and elsewhere.
Wilder then established the Gilda Radner Hereditary Cancer Program in Los Angeles to screen high-risk cancer candidates. He appeared before Congress to testify about proper cancer screening practices. For many years after Gilda Radner’s death, Gene Wilder generated publicity about ovarian cancer and cancer screening. In 1991, Gene Wilder co-founded Gilda’s Club. The name comes from a famous remark Gilda Radner once made, that cancer gave her “membership to an elite club I’d rather not belong to.” As a result of Gene Wilder’s efforts, his fame and the fame of Gilda Radner, and the ongoing efforts of the Complainant, Gilda’s Club is well-known in the United States and elsewhere.
The 20th Anniversary edition of It’s Always Something (published in 2009) includes references to Gilda’s Club, as does the publisher’s (Simon & Schuster’s) webpage for that book, which currently references the disputed domain name and has likely done so since 2009.
The Panels finds that the Complainant has common law trademark rights in the terms GILDA’S CLUB and GILDA’S CLUB WORLDWIDE.
The disputed domain name is identical to the Complainant’s GILDA’S CLUB trademark, apart from an apostrophe and a space.
The Complainant succeeds in establishing the first element of the Policy in respect of the disputed domain name.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Previous UDRP panels have recognized the difficulties inherent in proving a negative, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.
The Complainant asserts that the Respondent is not commonly known as GILDA’S CLUB, is not associated with the Complainant, and has not received authorization or a license to use the Complainant’s trademark. The Complainant also asserts that the Respondent falsely claims, on the webpage to which the disputed domain name diverts, that the Respondent is associated with the Complainant. Additionally, the Complainant asserts the Respondent is making a commercial use of the disputed domain name, and so paragraph 4(c)(iii) of the Policy does not apply.
The Panel finds that the Complainant has made out a strong prima facie case.
The evidential burden shifts to the Respondent.
The Respondent did not respond and accordingly provided no evidence to rebut the Complainant’s prima facie case.
In addition, the Panel notes the content of the website at the disputed domain name, particularly the phrase “This domain acquisition brings together two leaders in their respective fields: WholisticResearch is known for studying promising new methods for cognitive enhancement; Gilda’s Club is known for providing person-centered support services to people with cancer and their loved ones”. While the website at the disputed domain name states that the Complainant has nothing to do with the acquisition of the disputed domain name (which was acquired after its expiration), the Panel finds from the circumstances of this case that Respondent was attempting to create an appearance of association with the Complainant through the disputed domain name.
Accordingly, the Complainant succeeds in establishing the second element of the Policy in respect of the disputed domain name.
There is no doubt that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent is clearly aware of the Complainant, is clearly aware that the Complainant owned the disputed domain name and let it lapse, and is attempting to take advantage of an association with the Complainant’s brand through the disputed domain name, probably for the Respondent’s commercial gain. This is bad faith under paragraph 4(b)(iv) of the Policy.
Moreover, given the evidence of the Complainant’s prior use of the disputed domain name for an extensive period of time, the timing of the registration of the disputed domain name by the Respondent with apparent knowledge of the Complainant’s trademark and prior use of the disputed domain name, and the other indicia of lack of the Respondent’s bona fides as discussed above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy. IDR Solutions Ltd. v. Whois Privacy Corp, WIPO Case No. D2016-2156.
See also, L.M. Waterhouse & Co., Inc. v. Scott Myers, Intersearch Global, WIPO Case No. D2021-0962; Hotel Services Company LLC v. Xiaojie Yu, WIPO Case No. D2009-0647; and M&K ApS v. MK Sound, WIPO Case No. D2013-0967.
The Complainant succeeds in establishing the third element of the Policy in respect of the disputed domain name.
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 <gildasclub.org> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: November 4, 2021