DECISION

Bob Jones University v. Mike Kane

Claim Number:  FA0409000324692

PARTIES

Complainant is Bob Jones University (“Complainant”), represented by James M. Bagarazzi, of Dority & Manning, P.O. Box 1449, Greenville, SC 29602-1449.  Respondent is Mike Kane (“Respondent”), 235 W. 102 Street, New York, NY 10025.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bobjonesuniversity.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.

James A. Carmody, Esq.,  as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 8, 2004; the Forum received a hard copy of the Complaint on September 13, 2004.

On September 8, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <bobjonesuniversity.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 September 14, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 4, 2004 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@bobjonesuniversity.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 October 7, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <bobjonesuniversity.com> domain name is identical to Complainant’s BOB JONES UNIVERSITY mark.

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

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

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

FINDINGS

Complainant, Bob Jones University, was established in 1927 as a provider of educational services.  Complainant filed its registration application for the BOB JONES UNIVERSITY mark with the United States Patent and Trademark Office (“USPTO”) on September 27, 2002, and was granted registration on April 6, 2004 (Reg. No. 2,829,330).  The USPTO registration information lists the first use of the BOB JONES UNIVERSITY mark as being as early as 1947 in connection with “[e]ducation services namely, providing courses of instruction at the college and university undergraduate and graduate level.”

Respondent registered the domain name <bobjonesuniversity.com> on March 27, 2002.  Respondent is using the disputed domain name to host a website that contains an editorial paper entitled “The Kerry Files: The Young Opportunist’s Handbook,” which is an examination of the 2004 presidential candidate John Kerry’s military service.

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 registered the BOB JONES UNIVERSITY mark with the USPTO on April 6, 2004.  Generally, the registration of a mark with an appropriate governmental authority is sufficient under the Policy for a complainant to establish rights.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

The successful registration of a mark with the USPTO is prima facie proof of a complainant’s continual use of the mark, which dates back to the complainant’s initial application for registration.  In the instant case, however, Complainant filed its application for registration of the BOB JONES UNIVERSITY mark on September 27, 2002, which is exactly six months after Respondent registered the domain name <bobjonesuniversity.com>.  See 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); see also FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the successfully registered FDNY mark date back to the original registration application that was filed with the U.S. Patent and Trademark Office).

Panels have found that a complainant’s rights in a mark must predate the disputed domain name’s registration to prevail under paragraph 4(a)(i) of the Policy.  In the instant case, Respondent registered the domain name prior to Complainant establishing its registration rights in the BOB JONES UNIVERSITY mark.  See Abt Elecs., Inc. v. Motherboards.com, FA 221239 (Nat. Arb. Forum Feb. 20, 2004) (rejecting the Travant Solutions Inc. approach to Policy ¶ 4(a)(i) and agreeing with the "vast majority of decisions" that Complainant's rights must predate Respondent's registration of a domain name in order for Complainant to prevail).

Therefore, the question is whether Complainant had rights in the BOB JONES UNIVERSITY mark prior to March 27, 2002, which is the day Respondent registered the disputed domain name.  Absent a federal registration with the USPTO, a complainant may establish rights in a mark under paragraph 4(a)(i) of the Policy by presenting evidence that would prove the mark is distinctive, which is the threshold to establishing common law rights in a mark.  A mark may be distinctive either through its inherent nature or through a showing of secondary meaning associated with the mark.  Here, the BOB JONES UNIVERSITY mark is not inherently distinctive.  Yet, Complainant has stated in the Complaint that Bob Jones University was established in 1927 and the USPTO registration information lists the first use of the BOB JONES UNIVERSITY mark as being as early as 1947.  In the absence of a Response, these two facts establish that Complainant has used the BOB JONES UNIVERSITY mark continuously and extensively in commerce since at least as early as 1947, well before Respondent’s registration of the disputed domain name.  Therefore, the Panel may find that Complainant has established rights in the BOB JONES UNIVERSITY mark pursuant to paragraph 4(a)(i) of the Policy.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law.”).

The domain name <bobjonesuniversity.com> is identical to Complainant’s BOB JONES UNIVERSITY mark because the domain name incorporates the mark in its entirety and has merely added the top-level domain “.com,” which is immaterial in determining whether a domain name is identical or confusingly similar to a third-party mark under the Policy.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Daedong-USA, Inc., Kioti Tractor Division v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy 4(a)(i).”); see also Nevada State Bank v. Modern Ltd. – Cayman Web Dev., FA204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to respond to Complainant’s allegations set forth in the Complaint.  Therefore, the Panel may accept all reasonable allegations in the Complaint as true.  The Panel may also construe Respondent’s failure to respond as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”); see also Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true).

The record does not contain any significant evidence that Respondent is commonly known by the domain name <bobjonesuniversity.com> pursuant to paragraph 4(c)(ii) of the Policy.  The only pertinent evidence is the WHOIS registration information, which lists the registrant of the domain name as “Mike Kane” and this name has no apparent correlation to the disputed domain name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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"); 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).

The registration of a domain name that is identical or confusingly similar to a third-party mark, that is used to host content completely unrelated to the domain name, and that is used simply to siphon Internet users away from an intended destination to an unrelated website, is neither a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.  In the instant case, Respondent registered a domain name that is identical to Complainant’s BOB JONES UNIVERSITY mark and has used the domain name to direct Internet users to an unrelated editorial page that relates to the United States Presidential campaign of 2004.  Moreover, Respondent has used the goodwill developed by Complainant in the BOB JONES UNIVERSITY mark in order to accomplish this end, which is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the bona fide offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Bank of Am. Corp. v. Northwest Free Community Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-Ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Policy ¶ 4(b), pertaining to bad faith registration and use, contains indicators of bad faith, but is non-exclusive.  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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (the Policy “indicates that its listing of bad faith factors is without limitation”).

Complainant has asserted that Respondent registered and used the disputed domain name in bad faith by capitalizing on the goodwill and reputation associated with Complainant’s BOB JONES UNIVERSITY mark to attract Internet users to a website, which contains an editorial page relating to the United States Presidential campaign of 2004—an obviously controversial subject area that may lead some Internet users to believe that Complainant’s educational institution may either be sponsoring or supporting the posted opinions.  The effect of such a belief would be to tarnish and/or dilute the BOB JONES UNIVERSITY mark.  The Panel finds that such a scenario is likely, that Complainant’s assertions are entirely reasonable, that there has been no refutation of such assertions, and the evidence suggests that, but for Complainant’s use of the BOB JONES UNIVERSITY mark, Respondent would not have registered the disputed domain name and thus Respondent registered and used the domain name in bad faith.  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide evidence to controvert Complainant's allegation that Respondent registered the name in bad faith and any future use of the name would only cause confusion with Complainant’s mark); see also Kraft Foods v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue.”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding bad faith registration and use where Respondent registered a domain name incorporating Complainant’s mark and Respondent failed to show circumstances in which such a registration could be done in good faith).

The foregoing also establishes that Respondent had knowledge of Complainant’s rights in the BOB JONES UNIVERSITY mark prior to registering the disputed domain name, which is also evidence of bad faith registration and use of the domain name.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here 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. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains Complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name).

Complainant has established Policy ¶ 4(a)(iii).

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 <bobjonesuniversity.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  October 21, 2004

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