Generic Top Level Domain Name (gTLD) Decisions

The Complainant is The Cold War Museum, Fairfax, VA, USA ("Complainant") represented by Jonathan B. Teperson. The Respondent is Nicolas Jampol, Los Angeles, CA, USA ("Respondent") represented by Paul D. Supnik.

The domain names at issue are "coldwarmuseum.com", "coldwarmuseum.net", "coldwarmuseum.org", registered with Register.com.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

Herman D. Michels as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 5, 2001; the Forum received a hard copy of the Complaint on February 7, 2001.

On February 7, 2001, Register.com confirmed by e-mail to the Forum that the domain name(s) "coldwarmuseum.com", "coldwarmuseum.net", "coldwarmuseum.org" is/are registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 2001 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@coldwarmuseum.com, postmaster@coldwarmuseum.net, postmaster@coldwarmuseum.org by e-mail.

A timely response was received and determined to be complete on February 28, 2001.

An additional timely submission was received from the Complainant in compliance with Forum Supplemental Rule ("Supp. Rule") 7 on March 6, 2001. An additional timely submission was received from Respondent in compliance with Supp. Rule 7 on March 7, 2001. Both additional submissions were considered by the Panel.

On March 8, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Herman D. Michels as Panelist.

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

A. Complainant

Complainant is the owner of the service mark The Cold War Museum. Complainant registered the service mark The Cold War Museum with the United States Patent and Trademark Office on September 9, 1997 on the Supplemental Register (Registration No. 2,096,192), for museum services in Class 41 (U.S. CLS. 100, 101 and 207). The services offered by Complainant under the service mark are the honoring of Cold War veterans, preserving Cold War history and informing the public about Cold War, including but not limited to exhibits, lectures and a website. Complainant contends that the domain names COLDWARMUSEUM.com, COLDWARMUSEUM.net and COLDWARMUSEUM.org, registered by Respondent nearly identical or confusingly similar to Complainant’s service mark in which Complainant has rights. Complainant is the son of Francis Gary Powers, the U2 pilot, shot down over the Soviet Union on March 1, 1960.

Complainant further contends that Respondent has no rights or no legitimate interests in the domain names as they violate Complainant’s service mark; that said domain names are being used in bad faith; that Respondent registered the domain names to disrupt the business of Complainant and did so with the intent to capitalize on the fame of the Complainant’s mark for profit with a likelihood of consumer confusion. Complainant contends that Respondent has no rights or legitimate interests in respect to the domain names in issue.

Complainant contends that Respondent has registered and is using the domain names in issue in bad faith and that Respondent intended to capitalize for commercial gain on the fame and recognition of Complainant’s service mark The Cold War Museum.

In this regard, Complainant contends that its Cold War Museum in association with the Smithsonian Institution is conducting a feasibility study for the use of holdings and that when that study is completed, affiliate status will be granted. This allows the Complainant to use the Smithsonian name in its fund raising and the Smithsonian’s National Artifacts in Cold War Museum displays. Complainant’s Cold War Museum is presently in the process of securing a permanent facility in the Washington, D.C., metropolitan-Virginia area.

Complainant contends that its Cold War Museum was a traveling Museum and has displayed exhibits throughout the United States and in Norway and Europe, specifically Norway and Germany. Complainant’s Cold War Museum has produced television programs promoting the Cold War Museum and discussing Cold War history on the Discovery Channel, the History Channel, Good Morning America, C-SPAN, the Learning Channel and A&E.

Complainant, as a museum representative, lectures regularly before school, colleges, universities, government officials, community service groups and military organizations throughout the United States and Europe. During the past 23 months, more than 100,000 people have visited Complainant’s museum website at coldwar.org. Complainant contends that the United States Government has recognized the validity, worldwide importance and fame of Complainant’s Cold War Museum. Complainant therefore requests the transfer of the domain names COLDWARMUSEUM.com, COLDWARMUSEUM.net and COLDWARMUSEUM.org from Respondent to Complainant.

B. Respondent

Respondent contends that the domain names in issue are not identical or confusingly similar to any mark in which Complainant has rights. Specifically, Respondent contends that Complainant has no rights in the alleged mark COLDWARMUSEUM, because the term is generic or at most merely descriptive and that it is not protectable because it has not acquired a secondary meaning. Respondent further contends that Complainant has only supplemental registration which, unlike a principal registration, does not confer any protectable trademark rights.

Respondent also contends that there is no likelihood of any confusion with Complainant’s domain names at issue and that there is no possibility of confusion between Complainant’s museum and Respondent’s website and Respondent’s significant Cold War Museum collection, which collection is actually owned by Justinian Jampol.

Respondent denies that he registered the domain names in issue "with intent to capitalize for commercial gain on the fame and recognition of Complainant’s service mark. Respondent is making a legitimate non-commercial fair use the domain names without intent for commercial gain to misleadingly divert customers or to tarnish the service mark of Complainant. Finally, Respondent contends that the domain names in issue have not been registered or used in bad faith. Respondent contends that Complainant has not established any of the elements necessary for the grant of relief sought by Complainant and, therefore, the Complaint should be dismissed and Complainant’s request for a transfer of the domain names be denied.

Complainant is the owner of the service mark THE COLD WAR MUSEUM which was registered on the Supplemental Register of the United States Patent and Trademark Office on September 9, 1997. Complainant is the son of Francis Gary Powers, the U2 pilot shot down over the Soviet Union on March 1, 1960. The services offered by THE COLD WAR MUSEUM are the honoring of Cold War veterans, preserving Cold War history and informing the public about the Cold War including, but not limited to exhibits lectures and a website.

Complainant’s service mark THE COLD WAR MUSEUM has acquired distinctiveness. Complainant’s THE COLD WAR MUSEUM in association with the Smithsonian Institution is conducting a feasibility study for the use of holdings. When the study is completed, affiliate status will be granted. This will allow Complainant to use the Smithsonian name in its fundraising and the Smithsonian’s National Artifacts in Cold War Museum displays. Complainant’s Cold War Museum is presently in the process of securing a permanent facility in the Washington, D.C. metropolitan Virginia area and is currently negotiating for a site in Virginia.

Complainant’s THE COLD WAR MUSEUM was a traveling museum and has exhibits displayed throughout the United States as well as in Norway and Germany. The KGB Museum, the Central Armed Forces Museum, and the Frontier Museum located in Russia, have pledged support to Complainant’s THE COLD WAR MUSEUM. The Reserve Officers Association, the Armed Forces Communication and Electronic Association, The Association of Former Intelligence Officers and other military organizations have expressed their support for THE COLD WAR MUSEUM. The Voice of America pledged support and The Cold War Museum will have access to artifacts from that organization for display.

Complainant’s THE COLD WAR MUSEUM has worked with numerous production companies to produce television programs promoting The Cold War Museum and discussing Cold War history as seen on Discovery Channel, the History Channel, Good Morning America, C-SPAN, the Learning Channel and A&E. Furthermore, Complainant as THE COLD WAR MUSEUM representative lectures regularly before schools, colleges, universities, Government officials, community service groups and military organizations throughout the United States and abroad.

During the past 23 months, more than 100,000 people have visited the Museum’s website at coldwar.org and that Complainant’s website now averages 250 hits a day and is growing.

The United States Government has recognized the validity, worldwide importance and the fame of Complainant’s service mark THE COLD WAR MUSEUM. For example, THE COLD WAR MUSEUM recently applied for and received a Combined Federal Campaign, Designation Number for Federal Employee donations. This allows Federal employees to donate pretax dollars to THE COLD WAR MUSEUM directly from their pay. Additionally, the National and International Press has been generating stories about THE COLD WAR MUSEUM. The Cold War Museum has been written about in articles in the Washington Post, the New York Times, The Los Angeles times, The Moscow Times, The Moscow Tribune, as well as several related articles by United Press International. Additionally, television coverage and interviews concerning THE COLD WAR MUSEUM have been given to several programs which are available throughout the United States and other countries. In sum, Complainant’s THE COLD WAR MUSEUM has attained a degree of International and National Fame.

The domain names COLDWARMUSEUM.com, COLDWARMUSEUM.net and COLDWARMUSEUM.org registered by Respondent are nearly identical and confusingly similar to Complainant’s service mark THE COLD WAR MUSEUM. The only difference is the use of the article "The" in front of "Cold War Museum". Respondent’s domain names in issue have a tendency to mislead the consuming public as to the source and origin of the services it is offering and suggests affiliation with Complainant that it does not have. See Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO Oct. 31, 2000) (finding that the domain name <sydneyoperahouse.net> is essentially identical to the complainant’s trademark SYDNEY OPERA HOUSE); see also Banco Mercantil del Norte, S.A., v. Servicios de Comunicación En Linea, D2000-1215 (WIPO Nov. 23, 2000) (finding that the domain name, <banorte.com> is identical to Complainant’s BANORTE trademark and commercial name); see also Anne of Green Gables Licensing Authority, Inc. v. Internetworks, AF 0109 (eResolution June 12, 2000) (finding that the domain name <anneofgreengables.com> is virtually identical to the Complainant’s mark ANNE OF GREEN GABLES).

Respondent has no rights or legitimate interests in the domain names in issue. Respondent registered said domain name on February 17, 2000, just five days after the National airing of the C-SPAN show containing an interview with Complainant concerning The Cold War Museum on February 12, 2000 and within days of the press coverage of the opening of The Cold War Museum display in Berlin. The inference is clear that Respondent, by registering the domain names in issue so close in time to the interview concerning The Cold War Museum on C-SPAN and the substantial press surrounding the opening of The Cold War Museum display in Berlin thought to capitalize on the reputation and service mark of Complainant. Furthermore, Respondent has not been commonly known by these domain names. Respondent’s registration and use thereof was with an intent to misleadingly divert consumers or to tarnish the service mark of Complainant.

Respondent has registered the domain names in issue and is using said names in bad faith. By using the domain names COLDWARMUSEUM.com, COLDWARMUSEUM.net and COLDWARMUSEUM.org, Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s website by creating the likelihood of confusion with Complainant’s service mark THE COLD WAR MUSEUM as to the source, sponsorship, affiliation or endorsement of his website, or product or service of such website. Furthermore, a reasonable inference to be drawn from evidence in this matter is that Respondent registered the domain names primarily for the purpose of disrupting the business of Complainant, Respondent’s competitor. See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding is that the Respondent intentionally attempted to attract Internet users to his web-site for commercial gain by creating a likelihood of confusion with the Complainant’s mark by offering the same chat services via his web-site as the Complainant).

Moreover, Respondent’s activities constitute infringement of Complainant’s rights in its service mark THE COLD WAR MUSEUM and will cause substantial and irreparable harm to Complainant.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 registered by Respondent are nearly identical and confusingly similar to Complainant’s service mark THE COLD WAR MUSEUM registered on the Supplemental Register with the United States Patent and Trademark Office and in which Complainant has rights and interests.

Respondent does not have any substantial rights or legitimate interests in or with respect to the domain names COLDWARMUSEUM.com, COLDWARMUSEUM.net and COLDWARMUSEUM.org.

Respondent has registered and used the domain names COLDWARMUSEUM.com, COLDWARMUSEUM.net and COLDWARMUSEUM.org in bad faith.

Based upon the above findings and conclusions and pursuant to Rule 4(i) of the Rules of the Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum’s Supplemental Rules of ICANN’s Uniform Domain Resolution Policy, I hereby Order that the domain names COLDWARMUSEUM.com, COLDWARMUSEUM.net and COLDWARMUSEUM.org, registered by Respondent Nicolas Jampol be transferred forthwith to Complainant The Cold War Museum.