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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
The City University of New York v.
Domains For Sale Inc.
Claim Number: FA0206000114477
PARTIES
Complainant is The City University of New York, New York, NY (“Complainant”)
represented by Jane E. Davis. Respondent is Domains For Sale, Inc., New York, NY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <johnjaycollege.com>, registered
with Tucows, Inc.
PANEL
The undersigned certifies that he has
acted independently and impartially and, to the best of his knowledge, has no
known conflict
in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on June 5, 2002; the
Forum received
a hard copy of the Complaint on June 6, 2002.
On June 6, 2002, Tucows, Inc. confirmed
by e-mail to the Forum that the domain name <johnjaycollege.com> is registered with Tucows, Inc. and that
Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows,
Inc. 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 June 10, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of July 1, 2002 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@johnjaycollege.com 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 July 11, 2002, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) 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 Rules for Uniform
Domain Name Dispute Resolution Policy (the “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.
RELIEF
SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
The <johnjaycollege.com>
domain name is identical to Complainant’s common law JOHN JAY COLLEGE mark.
Respondent has no rights or legitimate
interests in the <johnjaycollege.com>
domain name.
Respondent registered and used the <johnjaycollege.com> domain name
in bad faith.
B. Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant is an institution for higher
learning and is the largest urban university in the United States. John Jay College of Criminal Justice is a
senior college of Complainant, which was founded in 1964 and has been operating
under the
JOHN JAY COLLEGE moniker since 1966.
Complainant has established itself as a
leader in criminal justice education, training and research. Complainant’s JOHN JAY COLLEGE offers
undergraduate majors in police studies, fire science, forensic science, forensic
psychology,
correctional studies, deviant behavior and social control, legal
studies, security management, criminal justice, criminal justice
administration, computer information systems, criminology, government, judicial
studies, and public administration.
Graduate programs are offered for criminal justice, forensic science and
forensic psychology, among others.
Respondent registered the <johnjaycollege.com> domain name
on March 7, 2002 and links the domain name to a website located at
<abortionismurder.org>.
Complainant’s investigation revealed that the registrant of the domain
name is John Barry, who is a notorious cybersquatter. John Barry has a history of registering domain names, such as
<reedcollege.com>, and linking them to <abortionismurder.org>.
DISCUSSION
Paragraph 15(a) of 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.”
In view of Respondent's failure to submit a Response, the
Panel shall decide this administrative proceeding on the basis of the
Complainant's
undisputed representations pursuant to paragraphs 5(e), 14(a) and
15(a) of the Rules and draw such inferences it considers appropriate
pursuant
to paragraph 14(b) of the Rules.
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 cancelled 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; and
(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.
Identical and/or Confusingly Similar
Complainant has established rights in the
JOHN JAY COLLEGE mark by continually using the mark in connection with services
offered
in education and research since 1966.
Through the mark’s association with Complainant’s services and
longstanding continuous use, the mark has acquired secondary meaning
as it
identifies Complainant as the source.
Therefore, Complainant holds rights in the JOHN JAY COLLEGE mark sufficient
to bring a claim. See Tuxedos By Rose v. Nunez,
FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary
meaning was
established); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection
with its banking business, it has
acquired rights under the common law); see
also British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish
between registered and unregistered trademarks and service
marks in the context
of abusive registration of domain names” and applying the UDRP to “unregistered
trademarks and service marks”).
Respondent’s <johnjaycollege.com> domain name contains Complainant’s
entire JOHN JAY COLLEGE mark with the absence of the spaces and addition of the
generic top-level
domain “.com.” Since
spaces are impermissible in domain names and generic top-level domains are
required in domain names, Respondent’s domain name
is identical to
Complainant’s mark. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible
in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
In light of Complainant’s assertion that
Respondent has no rights or legitimate interests in the <johnjaycollege.com> domain name and Respondent’s failure to
respond, it may be presumed that Respondent has no such rights in the domain
name. See Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no
legitimate interest in the domain names).
Furthermore, since Respondent did not submit a Response, all reasonable
inferences may be drawn in favor of Complainant. See Talk City, Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In
the absence of a response, it is appropriate to accept as true all allegations
of the Complaint”).
Respondent uses the <johnjaycollege.com> domain name as a link to
<abortionismurder.org>, which is a website that contains graphic pictures
of aborted fetuses. Respondent’s use of
the domain name in connection to the anti-abortion website will likely tarnish
the goodwill associated with Complainant’s
JOHN JAY COLLEGE mark. Respondent’s use of Complainant’s mark for
its own unrelated political agenda does not constitute a bona fide offering of
goods or
services pursuant to Policy ¶ 4(c)(i), nor does it represent a fair
use pursuant to Policy ¶ 4(c)(iii). See Rittenhouse
Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8,
2002) (finding that, by linking the confusingly similar domain name to an
“Abortion is Murder”
website, Respondent has not demonstrated a right or
legitimate interest in the disputed domain name); see also Big Dog Holdings,
Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate
use when Respondent was diverting consumers to its own website by
using
Complainant’s trademarks).
Complainant has used the JOHN JAY COLLEGE
mark for a long time prior to Respondent’s registration of the <johnjaycollege.com> domain
name. Respondent has no authorization
from Complainant to use Complainant’s JOHN JAY COLLEGE mark for any
reason. Respondent is not commonly
known by the <johnjaycollege.com>
domain name or the JOHN JAY COLLEGE moniker.
Complainant’s investigation uncovered Respondent’s identity as being
John Barry, who is well-known for his activities of registering
domain names
and linking them to the <abortionismurder.org> website. Therefore, Respondent has no rights or
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See
Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent is not commonly known by
the disputed domain name
or using the domain name in connection with a legitimate or fair use); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the disputed domain name,
thus, Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
The determination of bad faith is not
limited to the circumstances listed in Policy ¶ 4(b). The Panel may look at the totality of circumstances to determine whether
or not Respondent registered and used the disputed domain
name in bad
faith. See Cellular One Group v.
Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified
in 4(b) of the Policy is not an exhaustive list of bad faith
evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel
must look at the “totality of
circumstances”).
Respondent’s tarnishing use of the
Complainant’s JOHN JAY COLLEGE mark in the disputed domain name to advance its
own political agenda
without Complainant’s approval represents bad faith
registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See
Rittenhouse Dev. Co. v. Domains For Sale,
Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party
registers and uses a domain name that incorporates a well-known
mark and
connects the domain name with a website that depicts offensive images,” the party
has registered and used the disputed domain
name in bad faith).
As previously stated, Respondent has
engaged in a pattern of behavior of registering well-known marks and linking
the domain names
to the <abortionismurder.org> website. This behavior evidences bad faith, as
Respondent has now done the same with Complainant’s established JOHN JAY
COLLEGE mark. Therefore, Respondent
registered and used the <johnjaycollege.com>
domain name in bad faith under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain
names which infringe upon
others’ famous and registered trademarks); see
also Am. Online, Inc. v.
iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad
faith pattern of conduct where Respondent registered many domain names
unrelated
to its business which infringe on famous marks and websites).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be hereby
GRANTED.
Accordingly, it is Ordered that the <johnjaycollege.com> domain name
be TRANSFERRED from Respondent to
Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 24, 2002
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