DECISION

Joey Dipaolo a/k/a The Joey DiPaolo AIDS Foundation, Inc. v. Artur Genero a/k/a na

Claim Number:  FA0310000203168

PARTIES

Complainant is Joey Dipaolo a/k/a The Joey Dipaolo AIDS Foundation, Inc. (“Complainant”), represented by John S. Parnese 1110 South Avenue, Staten Island, NY 10314.  Respondent is Artur Genero a/k/a na (“Respondent”), 555 8^th Avenue #1001, New York, NY 10018.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <joeydipaoloaids.org>, registered with Network Solutions, Inc.

PANEL

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 Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 14, 2003; the Forum received a hard copy of the Complaint on October 17, 2003.

On October 14, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <joeydipaoloaids.org> is 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. 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 October 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 19, 2003 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@joeydipaoloaids.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 November 25, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.[1]

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <joeydipaoloaids.org> domain name is confusingly similar to Complainant’s JOEY DIPAOLO AIDS FOUNDATION mark.

2. Respondent does not have any rights or legitimate interests in the <joeydipaoloaids.org> domain name.

3. Respondent registered and used the <joeydipaoloaids.org> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, The Joey DiPaolo AIDS Foundation, is a Not for Profit Organization under the State of New York, providing public awareness concerning HIV/AIDS and providing counseling to young people stricken with this disease.  Complainant registered its service mark, THE JOEY DIPAOLO AIDS FOUNDATION, on October 27, 1998 with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,200,305).    Complainant was the holder of the disputed domain name, <joeydipaoloaids.org>, from 1997 until September 2003. 

Respondent, Artur Genero a/k/a na, registered <joeydipaoloaids.org> on September 2, 2003, soon after Complainant’s registration expired.  Complainant asserts that Respondent is diverting Internet traffic from the disputed domain name to pornographic websites that include pop-up and “mouse trapping” advertising.

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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(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.

Identical and/or Confusingly Similar

Complainant has rights in the JOEY DIPAOLO AIDS FOUNDATION service mark through registration with the USPTO and use in trade.  Respondent’s domain name <joeydipaoloaids.org> is confusingly similar to Complainant’s JOEY DIPAOLO AIDS FOUNDATION mark; the only difference is the omission of the word “foundation” and the addition of the generic top-level domain (“gTLD”) “.org.”  A domain name that omits a generic word and adds a gTLD does not distinguish the domain name from the trademark.  See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s WELLNESS INTERNATIONAL NETWORK; see also Koninklijke Philips Elec. NV v. Ramazan Goktas, D2000-1638 (WIPO Feb. 8, 2001) finding that the domain name <philips.org> is identical to Complainant’s PHILIPS mark.

Accordingly, the Panel finds that the <joeydipaoloaids.org> domain name is identical to Complainant’s JOEY DIPAOLO AIDS FOUNDATION mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”; see also 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 is using Complainant’s mark to divert Internet traffic to pornography.  Diversion to pornography is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See McClatchy Mgmt. Serv., Inc. v. Carrington a/k/a Party Night Inc., FA 155902 (Nat. Arb. Forum June 2, 2003) holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use; see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use.

Respondent is not commonly known as <joeydipaoloaids.org>, given its WHOIS registration information.  Because it is not known as the disputed domain name, the Panel can infer that the Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; 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.

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the disputed domain name soon after Complainant allowed its registration to lapse.  Subsequent registration of Complainant’s domain name, which is similar to Complainant’s mark, constitutes bad faith registration under Policy ¶ 4(a)(iii).  See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) finding that, where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary; see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) finding bad faith where Respondent took advantage of Complainant’s failure to renew a domain name.

Respondent registered and used the <joeydipaoloaids.org> domain name to attract Internet users to pornography and pop-up and “mouse trapping” advertising.  The Panel infers that Respondent not only knew of the mark before registration, but intentionally sought to use the mark when the corresponding domain name’s registration expired.  Acting in this manner, Respondent wanted to create commercial gain through a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website; this is bad faith registration and use under Policy ¶ 4(b)(iv).  See National Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name; see also Worldwinner.com, Inc. v. The Cupcake Patrol a/k/a John Zuccarini a/k/a RaveClub Berlin, FA 175289 (Nat. Arb. Forum Sept. 22, 2003).

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 relief shall be GRANTED.

Accordingly, it is Ordered that the <joeydipaoloaids.org> domain name be TRANSFERRED from Respondent to The Joey DiPaolo AIDS Foundation

Sandra Franklin, Panelist

Dated:  December 6, 2003

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[1] In addition, Complainant requests monetary damages; this kind of relief, however, is beyond the scope of the Policy. Complainant is free to pursue an appropriate action in another forum.

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