DECISION

The Rectory School v. Andria Grey

Claim Number:  FA0404000257214

PARTIES

Complainant is The Rectory School (“Complainant”), represented by Elizabeth A. Alquist, of Day, Berry & Howard LLP, CityPlace, Hartford, CT 06103.  Respondent is Andria Grey (“Respondent”), P.O. Box 567, Webster, MA 01570.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <therectoryschool.org>, registered with Network Solutions, Inc.

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 April 16, 2004; the Forum received a hard copy of the Complaint on April 19, 2004.

On Apr 19, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <therectoryschool.org> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 April 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 17, 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@therectoryschool.org 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 May 24, 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 <therectoryschool.org> domain name is identical to Complainant’s THE RECTORY SCHOOL mark.

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

3. Respondent registered and used the <therectoryschool.org> domain name in bad faith.

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

FINDINGS

Complainant, The Rectory School, is an independent boy’s junior high boarding school and coed day school.  Complainant has operated under THE RECTORY SCHOOL mark since 1920.  Complainant has spent millions of dollars promoting its mark.  In the past 10 years, Complainant has spent over $900,000 marketing its name, including advertising, catalogues, travel, and holding receptions to recruit and retain its student body.

Respondent, Andria Grey, registered the <therectoryschool.org> domain name on March 23, 2004 and March 3, 2004.  Respondent is using the disputed domain name as a bulletin board service where guests are invited to read and post information about the school.  The categories include “Rectory truth or Dare: get the REAL FACTS they dont [sic] want you to know!” and “The Water Cooler: here you can talk about almost anything you want ANONYMOUSLY with no repercussions.”  The site makes reference to faculty members and students, including statements about sexual preference, child abuse, drug use, infidelity, child pornography, and beastiality.  Some of the comments employ racist language.

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

Generally, a party does not need to register its mark with the U.S. Patent and Trademark Office to establish rights under the Policy ¶ 4(a)(i).  A party can establish common law rights and have standing under the Policy.  See 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 Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place.

Complainant has established rights in THE RECTORY SCHOOL mark under Policy ¶ 4(a)(i).  Complainant’s evidence includes adverting materials and expenditures.  Complainant asserts that it has spent millions of dollars promoting its mark, including over $900,000 in the last 10 years to market its name through advertising, catalogues, travel and holding receptions to recruit and retain its student body.  The Panel finds that Complainant’s evidence of its use of its THE RECTORY SCHOOL mark establishes rights in the mark.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established; 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 <therectoryschool.org> domain name is identical to Complainant’s mark.  The only difference is the addition of the “.org” generic top-level domain (“gTLDs”), which does not significantly distinguish the domain names from the mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) finding that the domain name <microsoft.org> is identical to Complainant’s mark.

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not submitted a Response.  Therefore, the Panel accepts all reasonable assertions as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence; 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 wholly appropriating Complainant’s mark to provide a forum to comment on Complainant.  This is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) finding that “[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of (the Complainant) . . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant”; see also Direct Line Group Ltd. v. Purge I.T., D2000-0583, (WIPO Aug. 13, 2000) finding that use of Complainant’s name and adoption of it in a domain name is inherently likely to lead some people to believe that Complainant’s are connected with it.

Although Respondent’s e-mail identifies it as “rectoryschools@yahoo.com” in the WHOIS domain name registration information, the Panel finds that this does not establish that Respondent is commonly known by the domain name, pursuant to Policy ¶ 4(c)(ii).  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”; see also Web House USA, Inc. v. eDollarShop Hostmaster, FA 155180 (Nat. Arb. Forum June 10, 2003) (finding that Respondent was not “commonly known by” the <edollarshop.com> domain name, despite naming itself “eDollarShop,” because Respondent’s website was almost identical to Complainant’s “first in use” website and infringed on Complainant’s marks).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is appropriating Complainant’s mark to create a forum where Respondent and participants comment on and criticize Complainant.  The Panel finds that Respondent’s appropriation of a domain name identical to Complainant’s mark to criticize Complainant is evidence of bad faith registration and use, pursuant to Policy ¶ 4(a)(iii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) stating that although Respondent’s complaint website did not compete with Complainant or earn commercial gain, Respondent’s appropriation of Complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” and holding that the disputed domain name was registered in bad faith; see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) finding that Respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where Respondent published negative comments regarding Complainant’s organization on the confusingly similar website.

In addition, because comments on Respondent’s website refer to Complainant, and invite discussion about Complainant, the Panel finds that Respondent has actual notice of Complainant’s rights in the mark.  The Panel finds that, because Respondent had notice of Complainant’s rights in THE RECTORY SCHOOL mark, Respondent’s registration and use of the <therectoryschool.org> domain names amounts to bad faith registration and use, pursuant to Policy ¶ 4(a)(iii).  See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”; see also G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“It can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”.

The Panel finds that 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 <therectoryschool.org> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  June 7, 2004

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