DECISION

Taylor Corporation v. Buy This Domain a/k/a John Barry

Claim Number: FA0204000112563

PARTIES

Complainant is Taylor Corporation, North Mankato, MN (“Complainant”) represented by Kerry RJ Olson, of Gray, Plant, Mooty, Mooty & Bennett.  Respondent is Buy This Domain a/k/a John Barry, Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <invitationbydawn.com>, registered with eNom, 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 April 29, 2002; the Forum received a hard copy of the Complaint on April 30, 2002.

On May 3, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <invitationbydawn.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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@invitationbydawn.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 June 19, 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 <invitationbydawn.com> domain name is confusingly similar to Complainant’s INVITATIONS BY DAWN mark.

Respondent has no rights or legitimate interests in the <invitationbydawn.com> domain name. 

Respondent registered and used the <invitationbydawn.com> domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant holds rights in the INVITATIONS BY DAWN mark through registration with the United States Patent and Trademark Office as Registration Number 1,243,318.  Complainant has used its mark in connection with services featuring wedding invitations and accessories since 1980.  Beginning in 1997, Complainant offered the same services online via its <invitationsbydawn.com> website. 

On April 8, 2002, Respondent registered the <invitationbydawn.com> domain name.   Upon registering the domain name Respondent listed the registrant organization as “Buy This Domain” with the email address “dom4sale@aol.com.”  Respondent used the domain name as a link to an anti-abortion website, <abortionismurder.org>.  Following receipt of a cease and desist letter from Complainant, Respondent offered to sell the domain name through Respondent’s <jimfox.com> website, which is a website that offers domain names for sale.  Respondent has previously engaged in the practice of registering domain names and linking them to an anti-abortion website.

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 INVITATIONS BY DAWN mark through registration with the United States Patent and Trademark Office and continuous subsequent use.  Respondent’s <invitationbydawn.com> domain name is confusingly similar to Complainant’s mark for two reasons:  the domain contains Complainant’s mark (1) absent an “s” and (2) without the spaces. 

The omission of one letter of a mark in a domain name does not defeat a confusing similarity claim.  See Am. Airlines Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000) (finding <americanairline.com> "effectively identical and certainly confusingly similar" to Complainant's AMERICAN AIRLINES registered marks); see also Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> is confusingly similar to Complainant’s trademark, VICTORIA’S SECRET). 

Furthermore, spaces are not permitted in domain names; therefore, Respondent’s omission of spaces does not mitigate the confusing similarity between the domain name and Complainant’s mark.  See Surface Prot. Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name <mannbrothers.com> confusingly similar to Complainant’s MANN BROTHERS mark “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”); see also 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”); see also Am. Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the domain name <americangolf.net> is identical and confusingly similar to Complainant’s AMERICAN GOLF marks).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has demonstrated its rights to and interests in the INVITATIONS BY DAWN mark. Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no such rights or interests in the disputed 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, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent used the <invitationbydawn.com> domain name to direct Internet traffic to <abortionismurder.org>, which serves as a graphic anti-abortion website.  Such use does not constitute a bona offering of goods or services pursuant to Policy ¶ 4(c)(i).  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).

Respondent is not commonly known by INVITATIONBYDAWN or <invitationbydawn.com>.  Therefore, Respondent has not met the requirements of Policy ¶ 4(c)(ii).  See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Respondent’s use of the domain name does not constitute fair use pursuant to Policy ¶ 4(c)(iii) because the domain name uses Complainant’s mark as a means of diverting Internet traffic to the anti-abortion website.  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent listed the registrant organization as “Buy This Domain” and provided the email address “dom4sale@aol.com” when registering the <invitationbydawn.com> domain name.  Also, upon receiving a cease and desist order from Complainant, Respondent offered the domain name for sale to Complainant through <jimfox.com>, a commercial website offering domain names for sale.  This evidence demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)  (finding that the attempted sale of a domain name is evidence of bad faith).

Respondent has a history of registering domain names for purposes of linking them to his anti-abortion website and subsequently offering them for sale to the owner of the mark incorporated in the domain name.  By linking the <invitationbydawn.com> domain name to an anti-abortion website that contains graphic images, Respondent attempts to offend Complainant’s potential customers.  Such activity constitutes bad faith pursuant to Policy ¶ 4 (b)(iv).  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).

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 <invitationbydawn.com> domain name be transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: June 25, 2002

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