DECISION

Board of Regents of The University of Idaho v.

Anti-Globalization Domains a/k/a Pro-Life Domains

Claim Number:  FA0310000205127

PARTIES

Complainant is Board of Regents of the University of Idaho (“Complainant”), represented by Tracy Greene of University of Idaho P.O. Box 443158, Moscow, ID 83844-3158.  Respondent is Anti-Globalization Domains a/k/a Pro-Life Domains (“Respondent”) 5444 Arlington Avenue #G 14, Bronx, NY 10471.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <universityofidaho.com>, registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.

PANEL

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

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 24, 2003; the Forum received a hard copy of the Complaint on October 27, 2003.

On October 27, 2003, Intercosmos Media Group, Inc. d/b/a directNIC.com confirmed by e-mail to the Forum that the domain name <universityofidaho.com> is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a directNIC.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a directNIC.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 October 31, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 20, 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@universityofidaho.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 December 4, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 makes the following assertions:

1. Respondent’s <universityofidaho.com> domain name is identical to Complainant’s UNIVERSITY OF IDAHO mark.

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

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

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

FINDINGS

Complainant, the Board of Regents for the University of Idaho, is the administrative body for the University of Idaho—a state institute of learning established in 1890.  Complainant holds registrations with the State of Idaho Department of State in various trademarks for the UNIVERSITY OF IDAHO mark (File No. 14043, registered August 5, 1993 and renewed August 5, 2003, and File Nos. 14044-9, registered August 5, 2003).  Complainant holds the registrations for <universityofidaho.net> and <uidaho.edu>.

Respondent registered the <universityofidaho.com> domain name on April 17, 2002.  The disputed domain name resolves to <abortionismurder.org>, a pro-life web site.  Complainant alleges that Respondant previously posted images of an unborn fetus.  Subsequent to that, the website stated that the domain was for sale for $985, and the registrant’s name was “DomainForSale.com.” 

Additionally, the Respondant has registered the domain names <universityofindiana.com>, <universityofarkansas.com>, <universityoflouisiana.com>, and <universityofmassachusettes.com>.  Under the names “Domain Names for Sale,” “Buy This Domain Name,” “Pro-Life Domains,” “John Barry,” “km,” “mf,” and “Mike Flynn,” Respondent has registered and lost the rights to over forty other domain names incorporating famous marks.  These domain names include <henryfordhospital>, <olymiccommittee.com>, <silveroakwinery>, <nationalabortionfederation.com> and others.

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 held trademark registrations with the Idaho Department of State for the UNIVERSITY OF IDAHO mark at least since 1993, first using the mark in commerce in 1970.  Registration with the State of Idaho is sufficient to establish Complainant’s rights in a mark.  See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that Complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that Complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that Complainant had sufficient standing to bring a claim under the UDRP).

Respondent’s <universityofidaho.com> domain name is identical to Complainant’s UNIVERSITY OF IDAHO mark.  The only difference between the two is the addition of the generic top-level domain (“gTLD”) “.com.”  A domain name that adds a gTLD does not distinguish the domain name from the trademark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

Accordingly, the Panel finds that the <universityofidaho.com> domain name is identical to Complainant’s UNIVERSITY OF IDAHO mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has asserted that Respondent has no rights or legitimate interests in respect to the domain name.  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 identical mark for political expression.

Respondent’s use of the UNIVERSITY OF IDAHO mark in its domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor does it constitute fair use, pursuant to Policy ¶¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use").

Respondent, Anti-Globalization, is not commonly known by the disputed domain name, given the WHOIS contact information for the disputed domain.  In addition, Complainant has not licensed or authorized Respondent to use the <universityofidaho.com> domain name.  Thus, it is reasonable for the Panel to infer that Policy ¶ 4(c)(ii) does not apply to Respondent.  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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

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

Registration and Use in Bad Faith

Complainant alleges that Respondent has registered and used the disputed domain name in bad faith.  Respondent intended to mislead Internet users by incorporating Complainant’s mark in its domain name.  Respondent used Complainant’s mark to increase the traffic to its website and create a likelihood of confusion as to the source and affiliation of the website’s anti-abortion content, constituting bad faith under Policy ¶ 4(a)(iii).  See Journal Gazette Co. v. Domain For Sale Inc. a/k/a Domain World, FA 122202 (Nat. Arb. Forum Oct. 9, 2002) (“Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites”); see also McClatchy Mgmt. Serv., Inc. v. Please DON'T Kill Your Baby a/k/a William & Mark Purdy, FA 153541 (Nat. Arb. Forum May 28, 2003) (“By intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”).

Complainant alleges that Respondent has registered multiple domain names resembling famous marks.  Under the name “Anti-Globalization,” Respondent has registered <universityofindiana.com>, <universityofarkansas.com>, <universityoflouisiana.com>, and <universityofmassachusettes.com>.  In addition, under the names “Domain Names for Sale,” “Buy This Domain Name,” “Pro-Life Domains,” “John Barry,” “km,” “mf,” and “Mike Flynn,” Complainant asserts that Respondent registered <henryfordhospital>, <olymiccommittee.com>, <silveroakwinery>, and <nationalabortionfederation.com> and others.  See Henry Ford Health System v. Domain For Sale Inc., FA 105976 (Nat. Arb. Forum Apr. 30, 2002), Int’l Olympic Comm. & U.S. Olympic Comm. v. Domain For Sale, Inc. aka John Barry (Nat. Arb. Forum Oct. 1, 2002), Silver Oak Wine Cellars L.P. v. Domains aka Best Domains (Nat. Arb. Forum Mar. 10, 2003), Nat’l Abortion Fed’n v. Dom 4 Sale, Inc. f/k/a Pro-Life Domains, a/k/a John Barry (Nat. Arb. Forum Sept. 9, 2003).  This registration of famous marks constitutes a bad faith pattern of conduct under Policy ¶ 4(b)(ii).  See America 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); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

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 <universityofidaho.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  December 8, 2003

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