DECISION

FDNY Fire Safety Education Fund, Inc. v. Roger Miller

Claim Number: FA0302000145235

PARTIES

Complainant is FDNY Fire Safety Education Fund, Inc., New York, NY (“Complainant”) represented by Lisa Rosenburgh, of Salans.  Respondent is Roger Miller, Hawleyville, CT (“Respondent”) represented by Patrick W. Fletcher, of Fletcher Law Offices.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fdny.biz>, registered with Register.Com.

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.) is Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 11, 2003; the Forum received a hard copy of the Complaint on February 12, 2003.

On February 11, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <fdny.biz> is registered with Register.Com and that the Respondent is the current registrant of the name.  Register.Com has verified that Respondent is bound by the Register.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 February 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 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@fdny.biz by e-mail.

A timely Response was received and determined to be complete on March 4, 2003.

Complainant’s additional submission was timely received on March 10, 2003.

On March 19, 2003, 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.  However, in the event the Panel finds that Respondent’s use and registration of the domain name <fdny.biz> violates only the RDRP, Complainant requests cancellation of the domain name registration.

PARTIES’ CONTENTIONS

A. Complainant

The domain name <fdny.biz> is identical or confusingly similar to the FDNY Mark in which Complainant FDNY Fire Safety Education Fund, Inc. has rights.  Respondent has no rights or legitimate interests in the domain name.  Respondent registered and used the domain name in bad faith.

B. Respondent

Respondent, Roger Miller, concedes that Complainant has established rights in the FDNY mark and that the <fdny.biz> domain name is identical to Complainant’s mark.

Respondent contends that before any notice of the present dispute, he made demonstrable preparations to use the <fdny.biz> domain name in connection with a bona fide offering of services.  Specifically, Respondent alleges that the letters F, D, N and Y are the initials of the nicknames of Respondent and three of his friends, namely, Fuzzman, Discoman, Nobleman and Yodalman.  Respondent claims that these individuals have been commonly known by these names for more than twelve years.  Respondent alleges that he registered the <fdny.biz> domain name with the intent to direct the domain name to <fdny.bigstep.com>, which resolves to a website where Respondent and his associates could exchange information.  Respondent argues that he has no intention to sell his rights in the <fdny.biz> domain name to Complainant and maintains that he has never offered the domain name registration for sale.

C. Additional Submissions

Complainant notes that Respondent registered the <firemen.biz> domain name on the same date as the registration for <fdny.biz> was effectuated.  Complainant contends that this fact supports Complainant’s allegation that Respondent registered the subject domain name in order to create an association between himself and the Fire Department of the City of New York.

Complainant contends that Respondent’s use and registration of the domain name <fdny.biz> violates the .BIZ Registration Restrictions as he is not using the domain name for a business or commercial use.

Respondent is the holder of several domain names that violate the intellectual property rights of famous third parties. 

FINDINGS

FDNY Fire Safety Education Fund, Inc. (the “Fund” or “Complainant”) is a non-profit corporation duly organized and existing under the laws of the State of New York.

The Fire Department of the City of New York (the “FDNY”) is a government agency of the City of New York (the “City”), which protects the life and property of New York City residents and visitors from fire and critical health threats.

The City is the sole owner of all trademarks, logos, name and insignias of the Fire Department of the City of New York, including, but not limited to, the acronym FDNY (collectively the “FDNY Marks”).

The City, through its agency, the FDNY, uses the FDNY Marks in connection with its official employee uniforms and apparel, on fire-fighting equipment and elsewhere in the conduct of its official business, including educational programs concerning fire safety.  The FDNY was established in 1898 and has used the FDNY Marks to identify its services since that date.  Moreover, the City through its agency, the FDNY, owns and operates a web site at <fdny.org>. 

The Fund is a not-for-profit organization dedicated to promoting public safety and supporting the FDNY.  The Fund’s activities include:  providing assistance to the families of fallen firefighters; offering classes and demonstrations on fire safety to children and families; supporting fire safety public awareness campaigns; providing smoke detectors and batteries to persons who cannot afford them; and purchasing training and safety equipment for firefighters. 

The Fund has been granted by the City the right to use and to license the FDNY Marks.  The Fund uses the FDNY Marks in connection with its educational activities and on a wide variety of authorized merchandise available to the public.  Since October 2000, the Fund has offered such merchandise through its Fire Zone store, located in Rockefeller Center, at 34 W. 51st Street, New York, New York, and through its web site at <fdnyfirezone.com>.  Visitors from throughout the world come to the Fire Zone store during trips to New York City and shop on its web site. 

The Fund also licenses third parties to use the FDNY Marks on merchandise.  The FDNY Marks have been used by the Fund’s authorized licensees on various items of merchandise since at least as early as 1994.  All products sold by the Fund and/or its licensees bearing the FDNY Marks are manufactured to the Fund’s strict specifications for appearance and quality.  All proceeds from the sale of such authorized merchandise go directly to the Fund to be used in connection with its fire safety education programs and its other efforts in support of the FDNY.

In addition to the above established common law rights in the FDNY Marks which have been licensed to the Fund, the FDNY is the owner of U.S. Registration No. 2,606,740 for the mark FDNY for “clothing, namely t-shirts, sweat shirts, hats, caps, baseball caps, jackets, shirts, head wear, warm up suits and wind resistant jackets, pants and shirts”.  The FDNY Mark was registered with the United States Patent and Trademark Office effective August 13, 2002.

The FDNY is highly regarded by the public for exceptional service to the community and has received widespread publicity throughout its existence.  Due to the tragic events of September 11, 2001, the FDNY’s efforts have been the subject of even greater public recognition and awareness.  As a result of the FDNY’s exceptional service and reputation and the publicity it has received, the FDNY Marks have acquired considerable goodwill and value and are recognized throughout the United States and the world as designating the Fire Department of the City of New York.  The educational activities sponsored by the Fund, as well as the manufacture, distribution, advertising and sale of high-quality authorized merchandise bearing the FDNY Marks, has further increased the public’s awareness of the FDNY and has enhanced the goodwill and value of the FDNY Marks.

Without authorization, permission or license from Complainant, Respondent registered the domain name <fdny.biz> with Register.com on November 8, 2001.  This date is less than a month after the terrorist attacks of September 11, 2001, when the tragic loss and heroic efforts of the FDNY were detailed by the media on a daily basis.  Respondent also is the owner of the domain name <firemen.biz>.  Respondent registered this domain name on the same date that he registered the domain name <fdny.biz>.  Respondent registered the domain name <fdny.biz> in order to create an association between himself and the Fire Department of the City of New York.

Respondent does not currently operate a web site at <fdny.biz>.  As of February 6, 2003, the web site contained a holding page of NameBargain.com. 

Respondent claims that F, D, N, and Y are the initials of the nicknames of Respondent, Roger Miller, and three of his friends: Fuzzman, Discoman, Nobleman and Yodalman and that these individuals have been commonly known by these names for more than 12 years.  Respondent says that in November of 2001, he registered the domain name <fdny.bigstep.com> with the web-hosting company BIGSTEP to provide a website where Respondent and his aforementioned associates could keep in touch and relay information about their day-to-day lives and adventures.  Respondent claims to have registered the domain name <fdny.biz> with the intent to point said domain name to his <fdny.bigstep.com> website.

Respondent is also the registrant of the following domain names: <mikebloomberg.biz>, <warrenbuffet.biz>, <derekjeter.biz>, and <joetorre.biz>, among others. 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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, FDNY Fire Safety Education Fund, is a non-profit corporation duly organized and existing under the laws of the State of New York.  The Fire Department of the City of New York, commonly known as FDNY, was established in 1898 and has continuously used the FDNY Marks to identify its services for over a century.  The City of New York has granted it the right to use and license the FDNY Marks. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also 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).

Although the FDNY holds U.S. Patent and Trademark Office Reg. No. 2,606,740 for the FDNY mark, the registration was not effected until August 13, 2002 (nine months after Respondent’s <fdny.biz> domain name was registered). However, the FDNY’s successful registration of its mark on the Principal Register is evidence of its rights in the mark.

Complainant has established trademark rights, as licensee, in the FDNY Marks, including the trademark consisting of the initials FDNY.

Respondent’s <fdny.biz> domain name is identical to Complainant’s FDNY Mark.  The addition of the top-level domain .biz extension to the FDNY Mark does not alter the fact that the domain name is identical for the purposes of the Policy. See 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); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

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

Rights or Legitimate Interests

Complainant has not given Respondent any rights or legitimate interests in the FDNY Mark by way of express or implied authorization.  Further, because the FDNY Mark is distinct and identifies a particular source, Respondent is not commonly known by the “fdny” second-level domain. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); 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); 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).

Respondent contends that F, D, N, and Y are the initials of the nicknames of Respondent (Roger Miller) and three of his friends: Fuzzman, Discoman, Nobleman and Yodalman, and that said individuals have been commonly known by these names for more than 12 years.  However, if true, this allegation only shows that Respondent and his three friends are commonly known as Fuzzman, Discoman, Nobleman, and Yodalman, and not the acronym FDNY.  Therefore, Respondent, Roger Miller, is not commonly known as FDNY.  See America Online, Inc. v. Kenny Anderson, FA103365 (Nat. Arb. Forum February 2, 2002) (although Respondent may have been known as Anderson, O’Brien & Levy, Inc., there is no evidence presented that it has been commonly known as the acronym AOL”).

Respondent does not currently operate a website in connection with the <fdny.biz> domain name; thus, Respondent’s inaction permits the inference that it lacks rights and legitimate interests in the domain name.  Because Respondent registered the subject domain name on November 8, 2001, a sufficient amount of time has elapsed to determine that Respondent is passively holding the domain name, which indicates a lack of rights in the domain name. See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a noncommercial purpose but had made no actual use of the domain name); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

Complainant contends that Respondent’s use and registration of the domain name <fdny.biz> violates the .BIZ Registration Restrictions.  The proceeding before the Panel is an UDRP proceeding, not a RDRP proceeding or combined UDRP/RDRP proceeding.  The RDRP allegations have been considered only to the extent they are relevant to the UDRP analysis. 

Registrations in the .BIZ TLD must be used or intended to be used primarily for bona fide business or commercial purposes.  Restrictions Dispute Resolution Policy (RDRP), Paragraph 4(a).  RDRP Paragraph 4(c)(iii) states that “the following shall not constitute a ‘bona fide business or commercial use’ of a domain name:  a.  Using or intending to use the domain name exclusively for personal, noncommercial purposes; or b. Using or intending to use the domain name exclusively for the expression of noncommercial ideas.”  Respondent states that he registered the domain name to provide and link to a website where Respondent and his friends could “keep in touch and relay information about their day to day lives and adventures.”  Such intended use is purely personal and/or noncommercial.  By Respondent’s own admission, his intended use of the domain name <fdny.biz> specifically violates the .BIZ Registration Restrictions and the RDRP. 

The Panel concludes that Respondent has not shown preparations to use the domain name in connection with a bona fide offering of goods and services pursuant to the UDRP Policy ¶ 4(c)(i).  Respondent is not making a legitimate noncommercial or fair use of the domain name without intent to tarnish the FDNY Marks pursuant to the Policy ¶ 4(c)(iii).  Nor is the Respondent commonly known by the domain name according to Policy ¶ 4(c)(iii).  Accordingly, Respondent has no rights or legitimate interests in the domain name <fdny.biz>. 

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

Registration and Use in Bad Faith

Respondent has passively held the domain name since the November 8, 2001 registration. Respondent’s passive holding constitutes bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>).

Respondent had knowledge of the FDNY trademark when he registered the domain name in dispute.  Respondent’s registration of the domain name, despite knowledge of Complainant’s rights in the mark, indicates bad faith registration under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

In the case of FDNY Fire Safety Education Fund, Inc. and New York City Police Foundation, Inc. v. Great Lakes Coins % 27 Collectibles, D2002-1445 (WIPO February 4, 2002), Complainant (along with the New York City Police Foundation, Inc.) was awarded the domain name <fdnyandnypd.com>.  The Panel took “judicial notice that the use of the Marks by Complainants and related entities is well known.”  Given the fame and publicity of the FDNY Mark, Respondent clearly had actual knowledge of the trademark when he registered the <fdny.biz> domain name.  In fact, and certainly not by coincidence, Respondent registered the domain name <fdny.biz> on November 8, 2001, shortly following the tragic events of September 11, 2001, at a time the FDNY received unsurpassed publicity and recognition. 

Respondent’s violation of the .BIZ Registration Restrictions, by registering the domain name <fdny.biz> for noncommercial purposes, is evidence of bad faith.  See Bayer Aktiengesellschaft v. Dangoz & Partners, D2002-1115 (WIPO February 3, 2003).  (“[T]he voluntary breach of the registrar’s Domain Name Services Agreement is evidence of bad faith”).

Respondent is the holder of several domain names that violate the intellectual property rights of famous third parties.  Respondent’s pattern of registering infringing domain names while preventing them from reflecting their marks in a domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also 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 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 ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <fdny.biz> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 26, 2003

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