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 Fantastic Sites, Inc., Lincoln, NE, USA ("Respondent").

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

The Panelist certifies that she has acted independently and impartially and that to the best of her knowledge, she 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 7, 2000.

On September 11, 2000, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names brooklynmuseumofart.com and brooklynmuseumofart.org are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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@brooklynmuseumofart.com and postmaster@brooklynmuseumofart.org by e-mail.

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

On October 19, 2000, pursuant to Complainant’s request to have the dispute decided by a Single 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 Respondent.

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

A. Complainant raises three issues in support of its position in the case:

B. Respondent did not submit a response in this matter.

The Brooklyn Museum of Arts and Sciences is a world famous art museum located at 200 Eastern Parkway, Brooklyn, NY. Since 1823, the Brooklyn Museum of Arts and Sciences has been referred to as THE BROOKLYN MUSEUM OF ART or THE BROOKLYN MUSEUM. In 1997, the museum filed a Certificate of Amendment of Assumed Name, changing its assumed name from THE BROOKLYN MUSEUM to BROOKLYN MUSEUM OF ART. Respondent registered the domain names at issue May 11, 2000.

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 the 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.

This Panel finds that the domain names brooklynmuseumofart.com and brooklynmuseumofart.org are virtually identical to and are at the very least confusingly similar to BROOKLYN MUSEUM OF ART, in which Complainant has rights. The fact that Complainant does not hold a federal trademark registration in its name is not fatal to its claim. The ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000) (emphasis in original).

Here, the domain names incorporate Complainant’s business name in its entirety and add the ".com" to the end. They are therefore confusingly similar to, if not identical to, Complainant’s trademark. See Dr. Karl Albrecht v. Eric Natale FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (Finding Respondent’s domain name, karlalbrecht.com, identical to Complainant’s common law mark).

Respondent had 20 days from the date of notification within which to demonstrate its rights or legitimate interest in the domain names at issue. Respondent failed to provide any evidence on this point. Therefore, this Panel concludes that Respondent has no such rights or interests.

The proof submitted in the case permits the finding that Respondent registered the domain names in bad faith. When the name of a famous museum is registered as a domain name by anyone other than the museum itself, and the registrant provides no evidence of why the domain name was registered or what good faith use is proposed, the only inference permitted is that the domain name was registered in bad faith. See Dr. Karl Albrecht v. Eric Natale FA 95465 (Nat. Arb. Forum Sept. 16, 2000) ("The Respondent intentionally registered a domain name which uses the Complainant’s name. There is no reasonable possibility that the domain name karlalbrecht.com was selected at random. There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith").

Further, Complainant’s proof shows that Respondent is the registrant of over 50 domain names, most of which are the names of famous personalities followed by ".com." This evidence of a pattern of such conduct also is indicative of bad faith under ICANN Policy ¶ 4(b)(ii).

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 brooklynmuseumofart.com and brooklynmuseumofart.org be transferred from Respondent to Complainant.