DECISION

TXDC, LP v. Anti-Globalization Domains

Claim Number:  FA0311000209903

PARTIES

Complainant is TXDC, LP (“Complainant”), represented by Molly Buck Richard, Kristy Mothersbaugh & Heather C. Brunelli of Thompson Knight LLP, 1700 Pacific Ave., Suite 3300, Dallas, TX 75201.  Respondent is Anti-Globalization Domains  (“Respondent”), 5444 Arlington Ave. #g14, Bronx, NY 10471.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <baileybankbiddle.com> and <baileybankandbiddle.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 10, 2003; the Forum received a hard copy of the Complaint on November 10, 2003.

On November 10, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain names <baileybankbiddle.com> and <baileybankandbiddle.com> are registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the names. 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 November 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 4, 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@baileybankbiddle.com and postmaster@baileybankandbiddle.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 12, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <baileybankbiddle.com> and <baileybankandbiddle.com> domain names are confusingly similar to Complainant’s BAILEY BANKS & BIDDLE marks.

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

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

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

FINDINGS

Complainant is the holder of four registrations with the United States Patent and Trademark Office (“USPTO”) for the BAILEY BANKS & BIDDLE mark and for marks containing the BAILEY BANKS & BIDDLE mark (collectively, the “BAILEY BANKS & BIDDLE marks”).  Complainant’s registrations for the BAILEY BANKS & BIDDLE marks include USPTO Reg. No. 1,123,513 (registered on July 31, 1979), Reg. No. 1,436,870 (registered on April 14, 1987), Reg. No. 2,311,315 (registered on January 25, 2000) and Reg. No. 2,649,127 (registered on November 12, 2002).  Complainant uses its marks in connection with jewelry and retail jewelry stores.

Currently, Complainant has more than 110 retail store locations in the United States and Puerto Rico.  Complainant also operates an online business located at the <baileybanksandbiddle.com> domain name.  At its website, Complainant provides a store directory and information on the jewelry products sold in its stores.

Respondent registered the <baileybankandbiddle.com> and <baileybankbiddle.com> domain names on February 27, 2002 and December 23, 2001, respectively.  Respondent is using the domain names to redirect Internet users to a very graphic and disturbing website at the <abortionismurder.org> domain name.  When Internet users try to exit the <abortionismurder.org> website, another pop-up window displaying additional graphic images opens.

Complainant has not authorized Respondent to use its BAILEY BANKS & BIDDLE marks.  

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

The Panel finds that Complainant has established rights in the BAILEY BANKS & BIDDLE marks through registration of the mark with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

In the <baileybankandbiddle.com> domain name, Respondent replaced the ampersand in Complainant’s marks with the word “and.”  Similarly, Respondent incorporated the significant portions of Complainant’s entire mark in the <baileybankbiddle.com> domain name, however it eliminated the ampersand from Complainant’s mark.  In addition, Respondent eliminated the letter “s” from the BAILEY BANKS & BIDDLE marks in both domain names.  It is clear that Respondent registered the domain names to take advantage of common typographical errors made by Internet users.  Such minor differences between the domain names and Complainant’s marks are not sufficient to distinguish the domain names from Complainant’s marks.  Thus, the Panel concludes that both the <baileybankandbiddle.com> and <baileybankbiddle.com> domain names are confusingly similar to Complainant’s BAILEY BANKS & BIDDLE marks.  See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from MCKINSEY & COMPANY does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark MCKINSET & COMPANY); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

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

Rights or Legitimate Interests

Respondent failed to submit any circumstances to the Panel demonstrating that it has rights or legitimate interests in the <baileybankandbiddle.com> and <baileybankbiddle.com> domain names.  The only evidence presented to the Panel is Complainant’s allegation that Respondent does not have rights or legitimate interests in the domain names.  Consequently, the Panel finds that Respondent lacks rights or legitimate interests in the domain names.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); 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”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Respondent has not been authorized by Complainant to use its marks for any purpose.  Furthermore, Respondent has not produced any evidence that it is commonly known by the <baileybankandbiddle.com> domain name or the <baileybankbiddle.com> domain name.  As there is no evidence before the Panel proving that Respondent is commonly known by either of the domain names, the Panel finds that Respondent does not have rights or legitimate interests in either domain name pursuant to Policy ¶ 4(c)(ii).  See 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"); see also 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).

When Internet users inadvertently type the <baileybankandbiddle.com> or <baileybankbiddle.com> domain names, they are redirected to the <abortionismurder.org> website.  Unsuspecting Internet users who are routed to the <abortionismurder.org> website are subjected to graphic images and anti-abortion propoganda.  Redirecting visitors seeking Complainant’s website to a graphic anti-abortion website does not demonstrate that Respondent was using of the domain names in connection with a bona fide offering of good or services or that Respondent was making a legitimate noncommercial or fair use of the domain names.  Thus, the Panel finds that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶¶ 4(c)(i) and (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 Am. Nat’l  Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (Respondent used the disputed domain name to divert Internet users to websites, such as an anti-abortion website, which are not associated with or authorized by Complainant.  “Appropriating Complainant’s mark for these purposes cannot equate to a bona fide offering of goods and services, and does not evidence legitimate noncommercial or fair use of the domain name”).

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

Registration and Use in Bad Faith

Policy ¶ 4(b) lists a number of circumstances that demonstrate bad faith registration and use of a domain name under the Policy.  However, the Policy clearly states that the Panel can consider other facts that also evidence bad faith.  Consequently, the Panel chooses to look beyond the circumstances listed under Policy ¶ 4(b) in rendering its decision.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶ 4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).

Respondent registered domain names that are common typographical errors of Complainant’s marks and is using the domain names to purposely reroute unknowing Internet users, who are searching for Complainant’s website, to a website featuring anti-abortion rhetoric.   Respondent’s reliance on the typing errors of Internet users attempting to reach Complainant’s website in order expose those users to politically-charged content is a classic demonstration of typosquatting, which is evidence that the domain names were registered and used in bad faith.  Accordingly, the Panel finds that Respondent registered and used the domain names in bad faith.  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith).

Respondent is using Complainant’s BAILEY BANKS & BIDDLE marks to redirect Internet users to a website dedicated to voicing anti-abortion views that are not necessarily endorsed by Complainant.  Panels have repeatedly held that the use of another’s mark to intentionally divert unknowing Internet users to politically-charged websites, particularly the <abortionismurder.org> website, is evidence of bad faith under the Policy.  Thus, the Panel concludes that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See McClatchy Mgmt.  Servs., Inc. v. Please DON'T Kill Your Baby, 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”); see also 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).

Accordingly, 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 <baileybankbiddle.com> and <baileybankandbiddle.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  December 22, 2003

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