DECISION

Board of Regents of Washington State University v. pro life domains c/o John Barry

Claim Number:  FA0401000223033

PARTIES

Complainant is Board of Regents of Washington State University (“Complainant”), represented by Sherry L. Gordon, P.O. Box 641031, Pullman, WA 99164-1031.  Respondent is pro life domains c/o John Barry (“Respondent”), 5444 Arlington Ave. #g14, New York, NY 10471.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <washingtonstateuniversity.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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 2, 2004; the Forum received a hard copy of the Complaint on January 5, 2004.

On January 5, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <washingtonstateuniversity.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 January 13, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 2, 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@washingtonstateuniversity.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 February 4, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <washingtonstateuniversity.com> domain name is identical to Complainant’s WASHINGTON STATE UNIVERSITY mark.

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

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

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

FINDINGS

Complainant is a multi-campus university with its primary campus located in Pullman, WA.  Complainant has more than 21,000 graduate and undergraduate students statewide and in its distance education program.  Complainant changed its name to WASHINGTON STATE UNIVERSITY in 1959 and has continuously used its name since that time.  Complainant registered the WASHINGTON STATE UNIVERSITY mark with the U.S. Patent and Trademark Office (“USPTO”) on December 4, 1984 (Reg. No. 1,307,992).  Complainant’s mark has become known nationally through its football team’s recent appearances in national bowl games.

Respondent registered the <washingtonstateuniversity.com> domain name on January 13, 2002.  The domain name redirects Internet users to <abortionismurder.org>, an anti-abortion website.  The website contains graphic images of aborted fetuses, passages from the Bible and a banner advertisement that directs Internet users to a commercial advertisement for computer equipment. 

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 WASHINGTON STATE UNIVERSITY mark through registration with the USPTO and use in commerce since 1959.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982.

Respondent’s <washingtonstateuniversity.com> domain name is identical to Complainant’s WASHINGTON STATE UNIVERSITY mark because the domain name fully incorporates the mark and merely adds the generic top-level domain “.com.”  The addition of the generic top-level domain “.com” is insufficient to distinguish the disputed domain name from Complainant’s mark.  See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark; see also Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations in the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the <washingtonstateuniversity.com> 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.

Complainant asserts that Respondent is not authorized or licensed to register or use domain names that incorporate Complainant’s mark.  Moreover, nothing in the record suggests that Respondent is an “individual, business, or other organization” commonly known by the <washingtonstateuniversity.com> domain name.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the 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.

Furthermore, Respondent has used the <washingtonstateuniversity.com> domain name to redirect Internet users to the <abortionismurder.org> website, which provides a link to a commercial website.  The Panel presumes that Respondent receives click-through fees from the Internet vendor for promoting its business.  Respondent’s commercial use of the misleading domain name is evidence that the domain name is not being used to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Disney Enters, 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in the domain name.

Also, Respondent is not using the <washingtonstateuniversity.com> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because it is diverting unsuspecting Internet users, who are attempting to find Complainant, to <abortionismurder.org>, a site wholly unrelated to Complainant’s mark.  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, 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.

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The Panel infers that Respondent had actual or constructive knowledge of Complainant’s rights in the WASHINGTON STATE UNIVERSITY mark because the mark is recognized nationally, has been used in commerce since 1959 and is registered with the USPTO.  Registration of a domain name identical to a registered trademark, despite knowledge of the mark holder’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.

In addition, Respondent’s domain name, which resolves to a website with a banner advertisement, is identical to Complainant’s mark.  Respondent’s commercial use of the identical domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name; see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain.

Furthermore, Respondent’s use of the <washingtonstateuniversity.com> domain name to resolve to the <abortionismurder.org> website, which features pictures of aborted fetuses is evidence of bad faith.  Respondent takes advantage of the goodwill associated with Complainant’s mark to further its own political agenda.  Respondent’s misleading domain name may cause Internet users to 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) (“By 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., FA 122202 (Nat. Arb. Forum Oct. 9, 2002) (“Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites”).

The Panel finds 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 <washingtonstateuniversity.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  February 18, 2004

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