DECISION

American Library Association v. Pro-Life Domains Not For Sale

Claim Number:  FA0312000216775

PARTIES

Complainant is American Library Association (“Complainant”), represented by Brian P. O'Donnell, of Jenner & Block LLP, One IBM Plaza, Chicago, IL 60611.  Respondent is John Barry Pro-Life Domains Not For Sale  (“Respondent”), 5444 Arlington Avenue, #g14, Bronx, New York 10471.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americanlibraryassociation.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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 5, 2003; the Forum received a hard copy of the Complaint on December 8, 2003.

On December 10, 2003, Intercosmos Media Group, Inc. d/b/a directNIC.com confirmed by e-mail to the Forum that the domain name <americanlibraryassociation.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 December 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 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@americanlibraryassociation.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 January 13, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 <americanlibraryassociation.com> domain name is identical to Complainant’s AMERICAN LIBRARY ASSOCIATION mark.

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

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

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

FINDINGS

Founded in 1876, Complainant is the oldest and largest library association in the world.  It has used the AMERICAN LIBRARY ASSOCIATION trademark since 1876 on goods such as books, magazines, newsletters, handbooks, and book awards.  It has also used the AMERICAN LIBRARY ASSOCIATION service mark since 1970 for educational scholarships.  It registered the service mark on February 11, 2003 (Reg. No. 2,686,070). 

On February 15, 2002, Respondent registered the disputed domain name <americanlibraryassociation.com>.  Respondent does not have license or authorization to use Complainant’s mark.  Internet users who go to the website of the disputed domain name are redirected to <abortionismurder.org>, a graphic anti-abortion website.  The Respondent had also registered the disputed domain as “High Traffic Pro-Life Domains only $999.”  The administrative contact for the disputed domain name is John Barry.

Additionally Respondent has registered <universityofchicagopress.com>, <nationalabortionfederation.com>, <themodestobee>, <searsrobuck.com>, <searsdepartmentstore>, <bismarktribune.com>, <georgewashingtonuniversity>, <olympiccommittee.com>, <stlouispostdispatch.com>, <chicagofieldmuseum.com>, and <rochesterinstituteoftechnology.com>.  In these registrations, he is also known as the following domain names: “Domain for Sale, Inc.,” “Best Domains,” “Buy this Domain,” and “Domain World.”  See Univ. of Chicago v. Domain Bargain, FA173375 (Nat. Arb. Forum Sept. 24, 2003); Nat’l Abortion Fed’n v. Dom 4 Sale, Inc. a/k/a John Barry, FA170643 (Nat. Arb. Forum Sept. 9, 2003); McClatchy Mgmt. Servs., Inc. v. John Barry a/k/a Best Domains and Pro-Life Domains, FA162175 (July 25, 2003); Sears, Roebuck and Co. v. John Barry, FA105210 (Nat. Arb. Forum April 1, 2003); Lee Enters., Inc. v. John Barry, FA142045 (Nat. Arb. Forum Feb. 24, 2003); George Washington Univ. v. Domain World a/k/a Domains for Sale a/k/a John Barry, FA122140 (Nat. Arb. Forum Oct. 14, 2002); Int’l Olympic Comm. v. Domain For Sale, Inc. a/k/a John Barry, FA117893 (Nat. Arb. Forum Oct. 1, 2002); Pulitzer, Inc. v. John Barry a/k/a Buy This Domain, FA114673 (Nat. Arb. Forum Aug. 13, 2002); Field Museum of Natural History v. John Barry d/b/a Buy This Domain, FA114354 (Nat. Arb. Forum June 28, 2002); Rochester Inst. Of Tech. v. Domain For Sale, Inc. a/k/a John Barry, FA112475 (Nat. Arb. Forum June 2, 2002).  In all of these cases, the Panel has held against the Respondent—John Barry.

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 used the AMERICAN LIBRARY ASSOCIATION mark since 1876.  Ongoing use in commerce conveys rights in a common law mark: federal registration is not required.  See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Respondent’s <americanlibraryassociation.com> domain name is identical to Complainant’s AMERICAN LIBRARY ASSOCIATION mark.  The only difference between the two is the addition of the generic top-level domain (“gTLD”) “.com.”  A domain name that adds a gTLD does not distinguish the domain name from the trademark.  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 Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

Accordingly, the Panel finds that the <americanlibraryassociation.com> domain name is identical to Complainant’s AMERICAN LIBRARY ASSOCIATION mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has asserted that Respondent has no rights or legitimate interests in respect to the domain name.  Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent is using Complainant’s identical mark to direct unwitting users to graphic antiabortion photos.  Respondent’s use of the AMERICAN LIBRARY ASSOCIATION mark in its domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor does it constitute 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 eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) ("use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use").

Respondent, Pro-Life Domains Not For Sale, is not commonly known by the disputed domain name, given the WHOIS contact information.  In addition, Complainant has not licensed or authorized Respondent to use the <americanlibraryassociation.com> domain name.  Thus, it is reasonable for the Panel to infer that Policy ¶ 4(c)(ii) does not apply to Respondent.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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").

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleges that Respondent had registered the disputed domain name as “High Traffic Pro-Life Domains only $999.”  Because the disputed domain name is exactly the same as the Complainant’s mark, the Panel may infer that Respondent only intended to sell the domain name to the Complainant.  Respondent registered the domain name primarily for the purpose of selling to complainant for a price exceeding its out-of-pocket costs.  This constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”).

Complainant alleges that Respondent has registered and used the disputed domain name in bad faith.  Respondent intended to mislead Internet users by incorporating Complainant’s mark in its domain name.  Respondent used Complainant’s mark to increase the traffic to its website and create a likelihood of confusion as to the source and affiliation of the website’s anti-abortion content, constituting bad faith under Policy ¶ 4(a)(iii).  See Journal Gazette Co. v. Domain For Sale Inc. a/k/a Domain World, 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”); see also McClatchy Mgmt. Serv., Inc. v. Please DON'T Kill Your Baby a/k/a William & Mark Purdy, 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”).

Complainant alleges that Respondent has registered multiple domain names resembling famous marks.  Respondent has registered <universityofchicagopress.com>, <nationalabortionfederation.com>, <themodestobee>, <searsrobuck.com>, <searsdepartmentstore>, <bismarktribune.com>, <georgewashingtonuniversity>, <olympiccommittee.com>, <stlouispostdispatch.com>, <chicagofieldmuseum.com>, and <rochesterinstituteoftechnology.com> in his name as well as “Domain Bargain,” “Domain for Sale, Inc.,” “Best Domains,” “Buy this Domain,” and “Domain World.”  This registration of famous marks constitutes a bad faith pattern of conduct under Policy ¶ 4(b)(ii).  See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of conduct where Respondent registered many domain names unrelated to its business which infringe on famous marks and websites); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

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

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <americanlibraryassociation.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  January 27, 2004

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