DECISION

New York City Police Foundation, Inc. v. Chris Hoffman

Claim Number:  FA0406000286046

PARTIES

Complainant is New York City Police Foundation, Inc. (“Complainant”), represented by Lisa Rosenburgh of Sullivan & Worcester LLP, 1290 Avenue of the Americas, New York, NY 10104.  Respondent is Chris Hoffman (“Respondent”), 1523 Main Street, Santa Monica, CA 90403.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nypd24-7.com> and <nypd247.com>, registered with Go Daddy Software, Inc.

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 June 11, 2004; the Forum received a hard copy of the Complaint on June 14, 2004.

On June 14, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <nypd24-7.com> and <nypd247.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 June 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 7, 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@nypd24-7.com and postmaster@nypd247.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 July 15, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <nypd24-7.com> and <nypd247.com> domain names are confusingly similar to Complainant’s NYPD mark.

2. Respondent does not have any rights or legitimate interests in the <nypd24-7.com> and <nypd247.com> domain names.

3. Respondent registered and used the <nypd24-7.com> and <nypd247.com> domain names in bad faith.

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

FINDINGS

Complainant, New York City Police Foundation, Inc., is a non-profit organization established in 1971 to improve public safety services in New York City and to strengthen the relationship between the New York City Police Department and the public.  Complainant has been granted, through current Police Commissioner Raymond W. Kelly, the right to use and license the NYPD marks owned by the City of New York. 

The City owns numerous trademarks with the United States Patent and Trademark Office for NYPD-related marks, including POLICE NYPD (Reg. No. 2,139,804 issued February 24, 1998 and Reg. No. 2,149,603 issued April 7, 1998), POLICE NYPD CITY OF NEW YORK POLICE (Reg. No. 2,143,609 issued March 10, 1998 and Reg. No. 2,147,995 issued March 31, 1998).  The City also holds pending trademark applications for the NYPD (App. No. 76/342,567 filed November 28, 2001) and POLICE DEPARTMENT CITY OF NEW YORK (App. No. 76/342,569 filed November 28, 2001) marks.  Furthermore, the NYPD mark and its related marks have been continuously and extensively used to identify the services of the New York Police Department since its establishment in 1845.

Complainant uses the NYPD marks to raise funds by selling NYPD merchandise, including key chains, hats, t-shirts, and numerous other souvenir items and has used the NYPD marks in this capacity since at least as early as November 1993.  Proceeds from the merchandise go directly to Complainant to be used in its efforts to support the New York City Police Department.  Following the terrorist attacks in New York City on September 11, 2001, public support for the New York City Police Department resulted in a significant increase in NYPD merchandise sales. 

Respondent registered the <nypd24-7.com> and <nypd247.com> domain names on May 12, 2004.  Respondent is using the disputed domain names to redirect Internet users to Respondent’s <plannedchildhood.org> website, which displays links, in part, to anti-abortion messages and to claims that computers are satanic instruments.      

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 with extrinsic proof in this proceeding that it has rights in the NYPD mark and numerous other NYPD-related marks through its applications and registrations with the United States Patent and Trademark Office and by continuous use of its marks in the public sector for nearly one hundred and sixty years.  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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that 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 SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

The <nypd24-7.com> and <nypd247.com> domain names registered by Respondent are confusingly similar to Complainant’s NYPD mark because the domain names incorporate Complainant’s mark in its entirety, adding only numeric designations.  The mere addition of numerals or numeric combinations to Complainant’s mark does not negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the

<nypd24-7.com> and <nypd247.com> domain names.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain names.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also 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).

Furthermore, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <nypd24-7.com> and <nypd247.com> domain names to redirect Internet users to a website that is completely unrelated to Complainant’s NYPD mark and which features, in part, anti-abortion messages and claims of a satanic link to the Internet.  Respondent’s use of domain names that are confusingly similar to Complainant’s NYPD mark to redirect Internet users interested in information regarding Complainant to a website that displays links to various websites and messages wholly unrelated to Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of a domain name 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 Am. Online, Inc. v. Tencent Comm. 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 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 offering of goods or services or any other fair use); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety).

Finally, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <nypd24-7.com> and <nypd247.com> domain names.  Furthermore, Complainant has not authorized or licensed Respondent to use its NYPD marks.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

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

Registration and Use in Bad Faith

While each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of a domain name, additional factors can also be used to support findings of bad faith registration and use.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

Both the <nypd24-7.com> and <nypd247.com> domain names use confusingly similar versions of Complainant’s NYPD marks and resolve to websites featuring a number of politically charged messages and links, including predominantly anti-abortion material.  The Panel finds that using domain names confusingly similar to Complainant’s mark to divert Internet users to a website displaying politically charged content such as abortion constitutes bad faith pursuant to Policy ¶ 4(a)(iii).  See McClatchy Mgmt. Servs., Inc. v. William and Mark Purdy II, Willaim S. 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”); see also Journal Gazette Co. v. Domain For Sale Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (“Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites”).

Respondent’s registration of the <nypd24-7.com> and <nypd247.com> domain names, which incorporate Complainant’s well-known NYPD mark, adding only a numeric combination, suggests that Respondent knew of Complainant’s rights in the NYPD mark.  Complainant’s NYPD mark has gained notoriety through an outpouring of support following the events of September 11, 2001, which led to a significant increase in NYPD merchandise sales.  Thus, the Panel finds that Respondent chose the disputed domain names based on the distinctive and well-known qualities of Complainant’s mark.  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 Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).

Accordingly, 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 <nypd24-7.com> and < nypd247.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  July 29, 2004

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