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Museum of Science v. Jason Dare [2004] GENDND 1362 (11 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Museum of Science v. Jason Dare

Case No. D2004-0614

1. The Parties

The Complainant is Museum of Science, Science Park, Boston, Massachusetts, of United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.

The Respondent is Jason Dare, San Francisco, California, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <computerclubhouse.net> (the “Domain Name”) is registered with Go Daddy Software, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2004. On August 5, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Domain Name. On August 5, 2004, Go Daddy Software transmitted by email to the Center its verification response identifying the registrant of the Domain Name as Jason Dare and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient (Jason Dare was not identified as the Respondent), the Complainant filed an amendment to the Complaint on August 11, 2004. The Center verified that the Complaint together with the amendment to 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 August 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2004.

Approximately five (5) days after the Center notified Respondent about the Complaint, on August 17, 2004, Respondent contacted the Center by e-mail requesting that the Center “clear up any rights [he] may have as a Domain Name Owner” and seeking information about “the matter.” That same day, the Center provided Respondent with a generous response directing him to relevant information that the Center had already provided to him, identifying publicly available sources of information that would assist him, and laying out in clear terms what the “matter” is about, what his responsibilities were, and the deadline for responding - September 1, 2004 (this date was mentioned a couple of times). Receiving no Response by September 1, 2004, on September 2, 2004, the Center notified the parties of Respondent’s default. On September 7, 2004, Respondent notified the Center by e-mail that he thought “the response needed to be submitted, by Sept 21^st” and he requested information about obtaining an extension of time. That same day the Center provided Respondent with the requested information and his options for attempting to have any Response he might eventually file considered by the Panel. Sixteen (16) days after his response was due, Respondent submitted a Response without providing any reason why he could not have filed the Response on time.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 27, 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 Computer Clubhouse was founded in 1993 by The Computer Museum (now part of Complainant), in collaboration with the MIT Media Laboratory. The Computer Clubhouse runs programs that use technology creatively to bridge the ““digital divide”” and make a difference in the lives of inner-city youth. Those programs are recognized internationally as a learning model and there are now 87 sites for the programs in the United States, Europe, Australia and South America. Hundreds of young people in Computer Clubhouses work with adult mentors on projects based on their own interests, creating computer-generated art, music, video, scientific simulations, animations, kinetic sculptures and robots, and Web pages. In the process, these young people become excited about learning and fluent with new technologies, developing the skills, confidence and experiences to help them succeed in their careers, contribute to their communities, and lead outstanding lives. Complainant owns United States Trademark Registrations Nos. 2,162,729 and 2,516,819 for COMPUTER CLUBHOUSE and COMPUTER CLUBHOUSE and Design, respectively (“the Marks”). Furthermore, Complainant registered a domain name including this trademark <computerclubhouse.org> on October 11, 2002.

From approximately February 10, 2002, to February 13, 2003, Respondent was employed by the Community Youth Center-SF in San Francisco, California (the “Youth Center”). Complainant has licensed the Youth Center to use the Marks in connection with the Center’s activities. Respondent is not and has never been a representative, employee or agent of Complainant, nor is he licensed to use the Marks. On or about March 2, 2002, Respondent registered the Domain Name. Complainant’s authorized representative sent a letter by Registered Mail to Respondent on April 27, 2004, requesting that Respondent discontinue using the Domain Name and transfer it to Complainant. Complainant never received a response to this letter. Complainant attempted twice to personally deliver another letter to Respondent on June 30, 2004, however both attempts were unsuccessful.

Sometime after Complainant sent the first letter to Respondent, Complainant learned the registrant for the Domain Name was changed to Domains by Proxy, Inc. of Scottsdale, Arizona. It appears that Domains by Proxy, Inc. offers a “privacy service,” whereby the true identity of the domain name registrant is concealed on the Whois database. Complainant’s authorized representative sent a letter by Registered Mail to Domains by Proxy, Inc. on July 8, 2004, alerting them to the dispute with the Respondent and requesting that Domains by Proxy, Inc. transfer the Domain Name to Complainant. Complainant’s representative received a telephone call from a representative of Domains by Proxy, Inc. on July 20, 2004, stating that they had contacted Respondent requiring him, according to the terms of its contract with him, to contact the Complainant or its representative. Upon hearing that Respondent had not contacted anyone, the representative of Domains by Proxy, Inc. stated that Respondent was then in violation of his contractual agreement with them and that they were canceling his privacy service. As of July 21, 2004, the Respondent was shown again as the sole registrant of the Domain Name.

5. Parties’ Contentions

A. Complainant

The Domain Name is identical or at least confusingly similar to Complainant’s Marks. Respondent has no rights or legitimate interests in the Domain Name. Respondent registered and is using the Domain Name in bad faith. For all these reasons, the Domain Name should be transferred to Complainant.

B. Respondent

Based on the Panel’s ruling below, the Response was not considered.

6. Discussion and Findings

Late Filed Response

Under the Rules, the admissibility of evidence (e.g., whether a late-filed response will be considered), is solely within the discretion of the Panel. See Paragraph 10(a) and (d) of the Rules; see also WIPO Notification of Complaint and Commencement of Administrative Proceeding at paragraph 6 Default (““The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by the Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate.””). Paragraph 14(a) of the Rules provides: “In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules …, the Panel shall proceed to a decision on the complaint.”

From the time that Respondent registered the Domain Name with Go Daddy Software, Inc., he was apprised of the fact that the Policy “is incorporated by reference into [his] Registration Agreement,” and he agreed to abide by the Policy, which included submitting to this kind of mandatory administrative proceeding should a dispute, like the one here, arises. Information relating to Respondent’s rights and obligations in a domain name dispute including what a complainant needs to prove and how a respondent might demonstrate his rights to and legitimate interests in the disputed domain name were clearly set forth in the agreement with Go Daddy Software, Inc. See Appendix 2 to the Complaint. In letters to Respondent on April 27, 2004, and June 30, 2004, Respondent was informed about Complainant’s rights in the Marks and his infringement of those rights, and he was asked to transfer the Domain Name to Complainant. In both letters, Respondent was informed that in the event the matter could not be settled amicably, Complainant would institute this kind of administrative proceeding.

Although the initial Complaint was defective for failing to identify Respondent by name (Respondent’s address was correct), Respondent was on notice of this administrative proceeding and his rights and responsibilities as of August 5, 2004. When Complainant corrected its omission on August 11, 2004, a couple of days after being notified of the deficiency, Complainant notified both the Center and Respondent of the correction. The Center issued a Notification of Complaint on August 12, 2004, identifying Respondent by name (at the same address as the first Complaint) and clearly setting forth the deadline for filing a Response with the ramifications for not filing a timely response. The Center once again on August 17, 2004, provided Respondent with the deadline (September 1, 2004) and with instructions for responding.

Whether a Response filed late is admissible has been raised a number of times in previous cases. See, e.g., Oficiul National al Registrului Comertului v. Kurtyan Consulting S.r.l., WIPO Case No. DRO2004-0001 (June 3, 2004); 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 (April 1, 2003). Many panels have disregarded late-filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and Respondents will regularly submit late responses. The Panel agrees with those precepts. Respondent was given ample warning that his registration and use of the Domain Name created a dispute that would likely lead to a proceeding such as this one. Furthermore the Center provided Respondent with repeated notice and information about this proceeding including repeated notification about the deadline for filing a Response and the procedures for responding, yet Respondent failed to respond on time or show “good cause” why he was not able to respond timely. Accordingly, the Response will not be considered.

Merits of the Complaint

Paragraph 15(a) of the Rules instructs the Panel to 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.

Under Paragraph 4(a) of the Policy, the complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to the complainant’s trademark or service mark; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. As an initial matter, the Panel finds that Complainant has established rights in the Marks and the <computerclubhouse.org> domain name by using and registering them. Furthermore, Respondent’s <computerclubhouse.net> domain name incorporates Complainant’s COMPUTER CLUBHOUSE registered trademark in its entirety, which is sufficient to establish that the Domain Name is identical or confusingly similar to the Marks. See, e.g., Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (October 1, 2001). Also, it is well settled that the use of lower case letter format and the addition of a gTLD such as “.net” are not significant in determining whether a domain name is identical or confusingly similar to a complainant’s mark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy inquires as to whether the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

It is undisputed that Respondent has not been commonly known by the Domain Name nor is he licensed to use the Marks or Complainant’s domain name. Furthermore, Respondent’s use of the Domain Name is not a “bona fide” use because, as explained in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (October 12, 2000): “[U]se which intentionally trades on the fame of another can not constitute a “bona fide” offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” Because Respondent is using a domain name that is identical to Complainant’s domain name and Marks, his use is not a bona fide use. Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., WIPO Case No. D2004-0324 (June 18, 2004).

Furthermore, Respondent is using the Domain Name to link to a website about the PACE (Progressive Academic Computer Enrichment Inc.) organization (“www.pacecenters.com”) which he appears to own or control. In fact Respondent is the administrative and technical contact for the <pacecenters.com> domain name. PACE’s business is described on the PACE website as a “community-oriented learning center focused on optimizing the effectiveness and enjoyment of learning.” One of the services PACE offers is a computer camp where “[c]hildren will be introduced to the world of keyboarding, homework tools, photo manipulation, computer mechanics, cartooning and animation, HTML coding, and much more.” The curriculum is advertised to promote “cooperative groupwork, peer interaction, expression, and interdependent tasking.” PACE also offers classes for children that focus “on increasing children’s academic knowledge and skills using computers.”

Respondent is using a domain name that is identical to Complainant’s Marks and domain name to divert Internet users from Complainant’s website to the PACE site where similar services are offered for sale. In view of the fact that the Domain Name is confusingly similar to the Marks and Complainant’s domain name, and Respondent is using it in connection with the promotion and sale of competing services, Respondent can not be using the Domain Name in good faith. Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589 (September 22, 2004).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth non-exclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

Respondent was at least on constructive notice of the Marks when he registered the Domain Name insofar as they were registered with the United States Patent and Trademark Office. Moreover, it is highly likely that Respondent had actual knowledge of Complainant’s COMPUTER CLUBHOUSE Marks and <computerclubhouse.org> domain name when he registered the <computerclubhouse.net> domain name because for about a year, Respondent worked for the Community Youth Center-SF which is licensed under the Marks by Complainant. Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., WIPO Case No. D2004-0324 (June 18, 2004). Despite the fact that Respondent is using a non-infringing domain name (<pacecenters.com>) to run a competing business, he deliberately adopted and is using an infringing domain name which redirects Internet users to Respondent’s website. World Wrestling Federation Entertainment, Inc. v. Aaron Rift, WIPO Case No. D2000-1499, December 29, 2000, (holding bad faith registration where respondent could have chosen a non-infringing domain name for a competing business).

Furthermore, persons using a search engine to locate Complainant are likely to be led to Respondent’s site due to the similarity of the Domain Names <computerclubhouse.net> versus <computerclubhouse.org>. Such conduct has been recognized by the U.S. Courts as an infringement of trademark rights. See Brookfield Communications Inc. v. West Coast Entertainment Corp., [1999] USCA9 225; 174 F.3d 1036 (9th Cir. 1999). Once at Respondent’s site, Internet users will find services for sale that are similar to those available on Complainant’s site. Respondent’s use of the Domain Name in a confusingly similar manner creates a strong likelihood of confusion between the source or sponsorship of Respondents’ goods and services and those offered by Complainant. See, e.g., SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, NAF Case No. FA94956 (July 11, 2000) (use of domain name identical or confusingly similar to complainant’s registered trademark on goods identical to those covered by complainant’s registered trademark infringes upon complainant’s trademark and constitutes bad faith); Miller Brewing Co. v. The Miller Family, NAF Case No. FA104177 (April 15, 2002) (use of complainant’s well-known trademark in the domain name creates likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s website, thereby constituting bad faith use of the domain name).

Further evidence of bad faith is Respondent’s handling of this matter. Complainant wrote to Respondent twice in an attempt to settle this matter, but Respondent refused to respond to one letter, and possibly tried to avoid personal delivery of a second letter. Then after receiving Complainant’s first letter, Respondent resorted to hiding his association with the Domain Name by switching the registrant from his own name to Domains by Proxy, Inc. When Complainant informed Domains by Proxy, Inc. about the dispute involving Respondent, they informed Complainant that they had contacted Respondent requiring him, in accordance with the terms of their agreement, to contact Complainant or its representative. Given this urging, Respondent did neither.

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(iii) has been satisfied.

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 <computerclubhouse.net> be transferred to the Complainant.

Harrie R. Samaras
Sole Panelist

Dated: October 11, 2004