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Bronx Arts Ensemble, Inc. v. Vilma Morales, e:bOOm, S.A [2004] GENDND 1094 (30 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Bronx Arts Ensemble, Inc. v. Vilma Morales, e:bOOm, S.A

Case No. D2004-0493

1. The Parties

The Complainant is Bronx Arts Ensemble, Inc., the Bronx, New York, United States of America, represented by Chadbourne & Parke, LLP, United States of America.

The Respondents is Vilma Morales, e:bOOm, S.A., of Lisboa, Portugal.

2. The Domain Name and Registrar

The disputed domain name <bronxartsensemble.org> is registered with Universal Registration Services, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2004. On July 5, 2004, the Center transmitted by email to Universal Registration Services, Inc. a request for registrar verification in connection with the domain name at issue. On July 6, 2004, Universal Registration Services, Inc. transmitted by email to the Center its verification response confirming that the Respondent Morales at e:boom S.A. is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Complaint also mentions Mark Foster as a Respondent. Mr. Foster was recently listed as a contact in the WhoIS database for <eboomsa.com>. This proceeding was properly constituted by naming the registrant as appeared in the WHOIS database for the disputed domain name and confirmed by the Registrar. It was thus unnecessary to include Mr. Foster as Respondent and this Complaint will proceed with Vilma Morales at e:bOOm, S.A as Respondent.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2004.

The Center appointed Daniel J. Gervais as the Sole Panelist in this matter on August 20, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is Bronx Arts Ensemble, Inc, a not-for-profit corporation from the Bronx, New York, United States of America. Bronx Arts Ensemble is a well-known and award-winning not-for-profit organization, which provides music educational programs and performances to the community and particularly to children. Bronx Arts Ensemble has been incorporated in 1975 and has been operating under the same name since 1975.

The disputed domain name <bronxartsensemble.org> had been originally registered in 1989 by individuals who were associated with the Complainant, and the Complainant had actively used the disputed domain name. In fact, the disputed domain name <bronxartsensamble.org> is still featured in numerous independent listings as Complainant’s domain name.

The individuals who registered the domain name are no longer associated with the Complainant and they failed to inform the Complainant that the disputed domain name <bronxartsensemble.org> was up for renewal. The Respondent registered the disputed domain name <bronxartsensamble.org> on October 20, 2002, upon Complainant’s failure to renew. The Respondent is using the domain name to provide links to explicit pornographic websites.

As soon as the Complainant became aware of the registration of the disputed domain name it contacted the Respondent on several occasions, requesting that the Respondent cease using the dispute domain name. The Complainant has not received any response to this communication.

5. Parties’ Contentions

A. Complainant

The Respondent registered and is using a domain name that is identical and confusingly similar to Complainant’s mark. The Respondent is using the disputed domain name to provide links to explicit pornographic websites.

The Complainant’s mark is well-known and has been widely used by the Complainant in connection with its services since 1975. The Respondent could not have been unaware of the Complainant’s rights in the mark. The disputed domain name is identical and confusingly similar to the Complainant’s mark and was registered and used by the Respondent in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A.1);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.A.2); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.A.3.).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

1. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the wording of paragraph 4(a)(i) in regard to trademark or service mark has been interpreted by numerous Panels in the past to include both registered marks and common law marks. See, inter alia, The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218; Brooklyn Institute of Arts and Sciences v. Fantastic Sites, Inc. National Arbitration Forum No. FA0009000095560. With respect to the latter, the Complaint must show (a) that the mark has been in continuous use (See, United Artists Theatre Circuit, Inc. v. Domains for Sale Inc, already cited; Keppel TatLee Bank Limited v. Lars Taylor, WIPO Case No. D2001-0168) and (b) that the mark achieved secondary meaning (association with the Complainant). (See, Australian Trade Commission v. Matthew Reader, WIPO Case No: D2002-0786; (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726).

The record confirms that Complainant has been continuously using the mark BRONX ART ENSEMBLE since 1975. The Complainant has extensively promoted its services and the record confirms that the marks are undoubtedly associated with the Complainant. Therefore, the Panel finds that the Complainant has rights in the above-mentioned mark.

As to the second question, the Panel finds that the domain name is identical and confusingly similar to the Complainant’s mark. The disputed domain name <bronxartsensamble.org> fully incorporates the Complainant’s mark BRONX ART ENSEMBLE and the generic top-level domain reference “.org.” The only difference between the Complainant’s mark BRONX ART ENSEMBLE and the disputed domain name <bronxartsensamble.org> is the addition of the generic top-level domain reference “.org.” As a rule, the addition of the generic top-level domain (gTLD) reference, which is necessary for a domain name to be operational, does not alter the mark, and is sufficient to establish functional identity to the complainant’s mark. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015, Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.

Consequently, the Panel finds that the disputed domain name <bronxartsensamble.org> is identical and confusingly similar to Complainant’s mark BRONX ART ENSEMBLE.

2. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant’s prior use of the BRONX ART ENSEMBLE mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests in using the domain name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. Quite contrary, the evidence suggests that the Respondent is using the disputed domain name for commercial gain, and that such use of the domain name may tarnish the Complainant’s mark. Users who visit the disputed domain name are offered links to explicit pornographic websites. It has been established by numerous Panels in the past that providing links to pornographic websites, at least without any additional fact to support a finding of legitimate interest, does not constitute a bona fide offering of goods or services. See Microsoft Corporation v. Phayze Inc., WIPO Case No. D2003-0750; Microsoft Corporation v. Party Night, Inc. d/b/a Peter Carrington, WIPO Case No. D2003-0501; Ferrero S.p.A. v. Alexander Albert W. Gore, WIPO Case No. D2003-0513; Goodrich Corporation v. bfg-fus.com, WIPO Case No. D2003-0477; Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423; Club Monaco Corporation v. Charles Gindi, WIPO Case No. D2000-0936.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

3. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

The domain name is identical to the Complainant’s mark BRONX ART ENSEMBLE. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis (trading as .com and manessis.com), WIPO Case No. D2001-1461. The Respondent did not choose to register the domain name <bronxartsensamble.org> by accident. It simply misappropriated a domain name upon an inadvertent failure by the Complainant to renew. The Policy does not condone such attempts to “catch” a domain name after an unintentional failure to renew, when the registrant has no right or legitimate interest thereto and no intention of making a fair use of same. Given the use of the domain name made by the Respondent, such behavior falls within the type of bad faith registration and use contemplated by paragraph 4(b)(iv). In addition, it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing or tarnishing the Complainant’s marks.

The Panel finds for the Complainant on this third element of the test.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bronxartsensamble.org> be transferred to the Complainant.

Daniel J. Gervais
Sole Panelist

Dated: August 30, 2004