DECISION

The National Abortion Federation v. Dom 4 Sale, Inc., f/k/a Pro-Life Domains, a/k/a John Barry

Claim Number:  FA0307000170643

PARTIES

Complainant is The National Abortion Federation, Washington, DC (“Complainant”) represented by Maya Alexandri, of Wilmer, Cutler & Pickering.  Respondent is Dom 4 Sale, Inc. f/k/a Pro-Life Domains, a/k/a John Barry, Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

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

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 22, 2003; the Forum received a hard copy of the Complaint on July 28, 2003.

On July 23, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <nationalabortionfederation.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 July 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 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@nationalabortionfederation.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 August 28, 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 <nationalabortionfederation.com> domain name is confusingly similar to Complainant’s NAF NATIONAL ABORTION FEDERATION mark.

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

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

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

FINDINGS

Complainant, the National Abortion Federation, is a non-profit professional association of abortion providers, which includes as members almost 400 clinics, women’s health centers, Planned Parenthood facilities and private physicians. Complainant establishes clinical guidelines which set the standard of care for abortion providers and their patients and attempts to educate consumers and policymakers about safe abortion practices. Complainant first began using the NATIONAL ABORTION FEDERATION mark to denote these services in 1977, and has obtained serveral registrations for the NAF NATIONAL ABORTION FEDERATION mark on the Principal Register of the U.S. Patent and Trademark Office (e.g. U.S. Reg. No. 2.577,972, registered on June 11, 2002, with a filing date of February 1, 2001). Complainant also operates a website which incorporates its mark at the <nationalabortionfederation.org> domain name.

Respondent, Dom 4 Sale, Inc., f/k/a Pro-Life Domains, a/k/a John Barry, registered the <nationalabortionfederation.com> domain name on February 16, 2002, and is neither affiliated with Complainant nor licensed to use Complainant’s NAF NATIONAL ABORTION FEDERATION mark. Through July 18, 2003, Respondent used the disputed domain name to redirect Internet users to the <abortionismurder.org> domain name, which advocates views diametrically opposed to those of Complainant. At this domain name, the associated website displays images of aborted fetuses and various articles against the practice of abortion. On or about July 18, 2003, Respondent removed this redirection and instead hosted a webpage featuring cartoon bears juggling balls, along with the offer to sell the domain name registration for $985.

Respondent lists its address in the WHOIS contact information for the disputed domain name as 5444 Arlington Ave. #G14, Bronx, NY 10471, telephone number (718) 543-3664. This, along with the redirection of the disputed domain name to the <abortionismurder.org> domain name and subsequent offer to sell the domain name registration, is the signature address and method of operation traditionally used by the notorious cybersquatter John Barry, who has been hailed before at least twenty-nine administrative Panel’s in the past for cybersquatting activities. See e.g. Rochester Inst. of Tech. v. Domain For Sale Inc., FA 112475 (Nat. Arb. Forum  June 3, 2002) (finding that Respondent’s <rochesterinstituteoftechnology.com> domain name is identical to Complainant’s ROCHESTER INSTITUTE OF TECHNOLOGY mark, and transfering the domain name to Complainant); George Wash. Univ. v. Domain World, FA 122140 (Nat. Arb. Forum October 14, 2002) (finding that Respondent’s <georgewashingtonuniversity.com> domain name was confusingly similar to Complainant’s THE GEORGE WASHINGTON UNIVERSITY mark, and ordering transfer of the domain name). Having reviewed the evidence in the record, and having received no argument by Respondent to the contrary, the Panel agrees with Complainant that Respondent is indeed John Barry, which is relevant to the discussion below under Policy ¶ 4(a)(iii) “Registration and Use in Bad Faith.”

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 established rights in the NAF NATIONAL ABORTION FEDERATION mark through continuous use of the mark in commerce since 1977. As Complainant’s filing date for its valid registration of the NAF NATIONAL ABORTION FEDERATION mark on the Principal Register of the U.S. Patent and Trademark Office predates Respondent’s registration of the disputed domain name by over a year, this registration is additional evidence of Complainant’s rights in the mark. See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

Respondent’s <nationalabortionfederation.com> domain name is confusingly similar to Complainant’s NAF NATIONAL ABORTION FEDERATION mark. But for the elimination of the abbreviation NAF at the beginning of Complainant’s mark, the disputed domain name is identical to Complainant’s mark, and the elimination of this abbreviation does nothing to dispell any confusion between the mark and the domain name. 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 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”).

Accordingly, the Panel finds that the <nationalabortionfederation.com> domain name is confusingly similar to Complainant’s NAF NATIONAL ABORTION FEDERATION mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent initially used the disputed domain name to redirect Internet users to the <abortionismurder.org> domain name, a domain name that hosts content that is directly opposed to the activities of Complainant under the NAF NATIONAL ABORTION FEDERATION mark. Given the nature of Complainant’s mark and its widespread use of the mark in connection with activities in support of abortion providers, the Panel infers that Respondent was well aware of Complainant’s rights in this mark when it registered the disputed domain name and chose to redirect it to the <abortionismurder.org> domain name. It is clear in this case that Respondent was not making a bona fide offering of goods or services at the disputed domain name, making Policy ¶ 4(c)(i) inapplicable to Respondent. Likewise, Respondent’s use of Complainant’s mark to undermine the goodwill Complainant has built up around its mark is not a legitimate noncommercial or fair use of the domain name, making Policy ¶ 4(c)(iii) inapplicable to Respondent. See Pepsico, Inc. v. Leeds, FA 117870 (Nat. Arb. Forum Sept. 27, 2002) (“Domain names…per se are neither automatically entitled to nor excluded from the protections of the First Amendment, and the appropriate inquiry is one that fully addresses particular circumstances presented with respect to each domain name”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that Respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . .  is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”).

Respondent’s current use of the disputed domain name also fails to fall under either Policy ¶ 4(c)(i) or (iii). Respondent’s recent removal of the redirection to the <abortionismurder.org> domain name and replacement with a generic webpage offering its domain name registration for sale is evidence that Respondent is willing to dispense with the disputed domain name. As the disputed domain name is nearly identical to Complainant’s mark, it can be inferred that Respondent’s “market” for the disputed domain name consists entirely of Complainant, and in these circumstances this is further evidence that Respondent lacks rights or legitimate interests in the <nationalabortionfederation.com> domain name. See Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

In light of Respondent’s use of the disputed domain name, coupled with Complainant’s widespread use of its mark to promote a position diametrically opposed to the viewpoint expressed at the <abortionismurder.org> domain name, the Panel finds that Respondent is not “commonly known by” the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); 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 Respondent does not have rights or legitimate interests in the <nationalabortionfederation.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <nationalabortionfederation.com> domain name in bad faith. No plausable reason presents itself to the Panel permitting the inferrence that Respondent had less than actual knowledge of Complainant’s rights in the NAF NATIONAL ABORTION FEDERATION mark when it chose to register the disputed domain name. Respondent’s registration was thus done in bad faith. While it is difficult to imagine a circumstance where Respondent would be able to use the disputed domain name in good faith, its use of Complainant’s mark to espouse views that directly conflict with Complainant’s is clear evidence of bad faith use, as Internet users expecting to find Complainant’s website are instead being duped into viewing content of Respondent’s choosing. See 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); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (“Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner…  Respondent, if he ever was serious in the registration of this domain name, must have relied on the good chance he would attract [Complainant’s] customers”).

Further evidence of Respondent’s bad faith use and registration of the disputed domain name can be found under analysis of Policy ¶ 4(b)(ii). Respondent is a serial cybersqatter, with at least 29 UDRP decisions issued against him. This establishes a clear pattern of abusive registrations, fulfilling one prong of the two part test for bad faith under Policy ¶ 4(b)(ii). As Respondent’s <nationalabortionfederation.com> domain name is confusingly similar to Complainant’s NAF NATIONAL ABORTION FEDERATION mark and is nearly identical to Complainant’s <nationalabortionfederation.org> domain name, Respondent is preventing Complainant from reflecting its mark online at the “.com” top-level domain name. This prevention fulfills the second prong of Policy ¶ 4(b)(ii), and equates to registration and use of the disputed domain name in bad faith. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names; and the registration of multiple domain names that infringe on Complainant’s trademark(s) is evidence of a pattern of conduct).

The Panel thus finds that Respondent registered and used the <nationalabortionfederation.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is 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 <nationalabortionfederation.com> domain name be TRANSFERRED from Respondent to Complainant.

                                                 Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  September 9, 2003

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