DECISION

University of Chicago v. Domain Bargin

Claim Number:  FA0307000173375

PARTIES

Complainant is University of Chicago, Chicago, IL, (“Complainant”) represented by Bonnie J. Barnish and Dennis Claessens, of Owen, Wickersham & Erickson.  Respondent is Domain Bargin, Bronx, NY, (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <universityofchicagopress.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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 28, 2003; the Forum received a hard copy of the Complaint on July 31, 2003. 

On August 12, 2003, Intercosmos Media Group d/b/a directnic.com confirmed by e-mail to the Forum that the domain name <universityofchicagopress.com> is registered with Intercosmos Media Group d/b/a directnic.com, and that Respondent is the current regisrant of the name.  Intercosmos Media Group d/b/a directnic.com has verified that Respondent is bound by the Intercosmos Media Group 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 August 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 8, 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@universityofchicagopress.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 September 18, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 <universityofchicagopress.com> domain name is confusingly similar to Complainant’s UNIVERSITY OF CHICAGO mark and identical to Complainant’s UNIVERSITY OF CHICAGO PRESS mark.

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

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

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

FINDINGS

Complainant is a world-renowned educational institution.  Complainant registered the UNIVERSITY OF CHICAGO mark with the U.S. Patent and Trademark Office (“USPTO”) on January 13, 1995 (Reg. No. 1,876,527) and has used the mark continuously in commerce since 1891. 

Complainant asserts that it has established common law rights in the UNIVERSITY OF CHICAGO PRESS mark because the mark has been used since 1891.  The UNIVERSITY OF CHICAGO PRESS is the largest academic press in the United States.  In 1891 Complainant founded the UNIVERSITY OF CHICAGO PRESS and currently Complainant distributes more than forty journals worldwide.  Complainant has registered and uses the <uchicago.edu> and <press.uchicago.edu> domain names. 

Respondent registered the <universityofchicagopress.com> domain name on February 15, 2002.  Currently the domain name resolves to a website that advertises that the disputed domain name is for sale.  In the past the <universityofchicagopress.com> domain name resolved to the <abortionismurder.org> website which featured propaganda and pictures involving aborted fetuses.  Prior to receiving the Complaint, Respondent listed the registrant of the disputed domain name as Pro-Life Domains.  However, after receiving the Complaint, Respondent changed the name of the registrant from Pro-Life Domains to Buy This Domain even though all the contact information remained the same.  Respondent recently changed the name of the registrant to Domain Bargains.  [1] 

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 UNIVERSITY OF CHICAGO mark through registration with the USPTO and the mark’s use in commerce since 1891.  Complainant also has established common law rights in the UNIVERSITY OF CHICAGO PRESS mark through use of the mark for publications since 1891. 

Respondent’s <universityofchicagopress.com> domain name is confusingly similar to Complainant’s UNIVERSITY OF CHICAGO mark because Respondent has merely added the descriptive word “press” to the mark.  The word “press” describes one of the functions that Complainant performs.  Adding a word that describes the business of Complainant is insufficient to circumvent the Panel from finding that the disputed domain name is confusingly similar to Complainant’s mark.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Also, Respondent’s <universityofchicagopress.com> domain name is identical to Complainant’s UNIVERSITY OF CHICAGO PRESS mark.  The addition of the generic top-level domain “.com” is insufficient to distinguish the disputed domain name from Complainant’s mark.  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 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).

Therefore, the Panel concludes that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant urges that Respondent lacks rights or legitimate interests in the <universityofchicagopress.com> domain name.  Respondent did not provide the Panel with a Response in this proceeding.  Thus, the Panel may accept all reasonable allegations and inferences of the Complaint as true.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Due to Respondent’s failure to contest the allegations in the Complaint, the Panel presumes that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

In addition, the record fails to establish that Respondent is authorized or licensed to register or use domain names that incorporate Complainant’s marks.  The record also fails to establish Respondent as an “individual, business, or other organization” commonly known by the <universityofchicagopress.com> domain name.  Therefore, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  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).

Also, the <universityofchicagopress.com> domain name tarnishes Complainant’s mark because the disputed domain name resolves to the <abortionismurder.org> website which features political material involving aborted fetuses.  Internet users could mistakenly assume that the disputed domain name and the controversial content that it resolves to are endorsed by or affiliated with Complainant.  See Am. Nat’l Red Cross v. Domains a/k/a Best Domains a/k/a John Barry, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (Respondent used a disputed domain name to divert internet users to websites not associated with or authorized by Complainant, such as an anti-abortion website.  “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”); see also 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).

Additionally, Respondent’s attempt to sell the disputed domain name by displaying a for sale sign on the <universityofchicagopress.com> website is evidence that Respondent lacks rights or legitimate interests in the domain name.  See Am. Nat’l Red Cross v. Domains a/k/a Best Domains a/k/a John Barry, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also 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).

Therefore, the Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

It can be inferred that Respondent had actual or constructive knowledge of Complainant’s rights in the UNIVERSITY OF CHICAGO and UNIVERSITY OF CHICAGO PRESS marks because the marks are recognized worldwide, have been used in commerce since 1891 and one of the marks is registered with the USPTO.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l, Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

Furthermore, Respondent’s use of the <universityofchicagopress.com> domain name to resolve to the <abortionismurder.org> website, which features pictures of aborted fetuses tarnishes Complainant’s marks and is evidence of bad faith.  Complainant’s marks may be tarnished because Internet users could mistakenly assume that the disputed domain name and the controversial content that it resolves to are endorsed by or affiliated with Complainant.  See McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (finding “[b]y 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 Journal Gazette Co. v. Domain For Sale Inc. a/k/a Domain World, FA 122202 (Nat. Arb. Forum Oct. 9, 2002) (finding “Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites”).

In addition, Respondent’s attempt to sell the disputed domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

Therefore, the Panel concludes 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 <universityofchicagopress.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  September 24, 2003

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[1] In its Complaint, Complainant added the letter “a” to Respondent’s name, spelling Bargin as Bargain. Based on the frequency with which Respondent changes the registration name for the disputed domain name, the fact that Respondent’s physical and electronic contact addresses did not change, and the Forum’s proper notification, the Panel finds this error harmless and service was proper. Furthermore, the fact that Respondent changed its registration name for the disputed domain name does not affect the administrative proceeding. See British Broad. Corp. v. Data Art Corp., D2000-0683 (WIPO Sept. 20, 2000) (finding that, for the purposes of Policy 8(a) regarding the transfer of domain names, an administrative proceeding is considered to be “pending” following the filing of the Complaint. Therefore, if a registrant of a domain name transfers the domain name after the Complaint is filed, neither the change of registrant nor change of registrar affects the administrative proceeding.

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