Generic Top Level Domain Name (gTLD) Decisions

Complainant is Brooklyn Institute of Arts and Sciences , Brooklyn, NY, USA ("Complainant") represented by Melise R. Blakeslee, McDermott Will & Emery. Respondent is Luba Evans a/k/a BOOKLYNMUSEUM.COM and BROOKLYNMUSEUM.ORG, New York, NY, USA ("Respondent").

The domain names at issue are brooklynmuseum.com, and brooklynmuseum.org registered with Network Solutions, Inc.

The Panelist certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as the panelist in this proceeding.

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 7, 2000; The Forum received a hard copy of the Complaint on September 6, 2000.

On September 11, 2000, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names brooklynmuseum.com, and brooklynmuseum.org are registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 13, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 3, 2000 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@brooklynmuseum.com and postmaster@brooklynmuseum.org by e-mail.

Having received no Response from Respondent, using the same contact details and methods used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 18, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

Complainant requests that the domain names be transferred from Respondent to Complainant.

A. Complainant

Complainant alleges the following:

B. Respondent

Respondent did not submit a response in this matter. However, after receiving the complaint, Respondent contacted Complainant via email and offered to transfer the domain names to Complainant.

The Brooklyn Museum of Art is a world famous art museum, which is commonly known as the BROOKLYN MUSEUM. There is evidence that the museum has been referred to as THE BROKLYN MUSEUM since as early as 1823. Complainant’s evidence indicates that after being served with the Complaint, Respondent contacted Complainant via email and revealed her intent in registering the domain names as well as her willingness to transfer the domain names to Complainant. Respondent’s emails read:

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that a complainant 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 to or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

The domain names at issue here are identical to Complainant’s BROOKLYN MUSEUM mark, in which it has common law trademark rights. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the Complainant have rights in a registered trademark and that it is sufficient to show common law rights). See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Moreover, Respondent’s emails establish that Respondent intended them to be identical to Complainant’s mark.

If Respondent had wanted to claim any rights or legitimate interest in the domain names, she could have done so by filing a response. She did not do so. Further, Respondent’s email messages affirmatively disclaim any rights or legitimate interest in the domain names and also acknowledge an intent to register names she knew belonged to Complainant.

Respondent’s emails also evidence registration and use in bad faith. Respondent admits that she registered the domain names because she wanted to make a web site for Complainant. Respondent was not a volunteer seeking to serve Complainant but acted for pecuniary gain. Respondent stated: "It would be nice if Brooklyn Museum would hire me to make a site for them."

This activity fits the definition of bad faith under ICANN Policy 4(b)(i) which states:

Here Respondent demonstrated her intent to exact pecuniary gain from Complainant. By registering domain names that Respondent knew would be of interest to Complainant and then by attempting to solicit business from Complainant based on that registration, she acted in bad faith. In Kinko’s Inc. v. eToll, Inc. a panel addressed a very similar factual situation and found bad faith where the Respondent registered the domain name kinkosoffice.com in order to exact an unsolicited business deal from Complainant. See Kinko’s Inc. v. eToll, Inc. FA94447 (Nat. Arb. Forum May 27, 2000). Here, as in the Kinko’s case, the registration and use of the domain name is in bad faith.

Having established all three elements required by the ICANN Policy, it is the decision of this panel that the requested relief be granted.

Accordingly, it is ordered that the domain names brooklynmuseum.com and brooklynmuseum.org be transferred from Respondent to Complainant.