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Delray Beach Historical Society, Inc. v. Cirila Strawmyer [2004] GENDND 892 (16 July 2004)

1. The Parties

1.1 The Complainant is Delray Beach Historical Society, Inc. of Delray Beach, Florida, United States of America, represented by Arnold & Porter of Washington, DC, United States of America.

1.2 The Respondent is Cirila Strawmyer of Christiansted, Virgin Islands, United States of America.

2. The Domain Name and Registrar

2.1 The disputed domain name <delraybeachhistoricalsociety.org> is registered with eNom, Inc.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2004. On May 27, 2004, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the domain name at issue. On May 28, 2004, eNom, Inc. transmitted by e-mail to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom, Inc.’s partial response, the Center made a WHOIS printout, which showed that the disputed domain name was registered with eNom Inc., and that Respondent, Cirila Strawmyer was the current registrant of the disputed domain name, as well as the administrative, technical and billing contact. The Center verified that 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”).

3.2 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 June 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2004.

3.3 The Center appointed Jay Simon as the sole panelist in this matter on July 2, 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.

3.4 The case file was transmitted electronically to the Panel on July 2, 2004, and a hard copy was forwarded to the Panel that same day.

3.5 On July 5, 2004 the Panel, pursuant to Rule 12 of the Rules, requested additional information regarding the status of the mark DELRAY BEACH HISTORICAL SOCIETY. Upon re-reading the Complaint, the request was withdrawn on July 6, 2004.

4. Factual Background

4.1 Complainant, the Delray Beach Historical Society, Inc., is a non-profit historical preservation society incorporated under the laws of the State of Florida and has its principal place of business in Delray Beach, Florida. Complainant has used the mark DELRAY BEACH HISTORICAL SOCIETY since 1964.

4.2 Complainant was founded in 1964, as a society dedicated to preserving Delray Beach’s archives and historic sites, educating the community regarding the city’s heritage, and operating a museum (the Canon Cottages Museum), an archives room (the Harriet W. & George D. Cornell Archives Room), and the original Delray Beach F.E.C. Railway Station.

4.3 Complainant’s fundraising activities include an annual Antiques Show and Sale, which includes lectures by nationally known speakers and antiques dealers from the United States, Canada and Europe.

4.4 Complainant previously owned the disputed domain name, but allowed the registration to lapse, allegedly through inadvertence.

4.5 The Complaint in these proceedings is based on Respondent’s registration of the disputed domain name on June 17, 2002.

4.6 Complainant attempted to contact Respondent by e-mail on December 3, 2002, and again by a Federal Express letter on March 3, 2004. Respondent did not respond to the e-mail, and Federal Express informed Complainant, the next day, that the address provided by Respondent in the domain name registration did not exist.

4.7 Upon accessing the website for the disputed domain name, the Internet user (as confirmed by this Panel) is met with a barrage of pornographic pictures and links to other, similar sites some of which require fees to access.

4.8 Respondent did not file a response in these proceedings and was notified of its default by the Center. Thus, the allegations and evidence contained in and annexed to the Complaint are uncontested.

5. The Parties’ Contentions

A. Complainant

5.1 Complainant contends that it has exclusive rights in the mark DELRAY BEACH HISTORICAL SOCIETY, and that Respondent has copied that mark, thereby misappropriating a distinctive mark.

5.2 Complainant further contends that its domain name registration for the disputed domain name was allowed to lapse inadvertently.

5.3 Complainant contends that it has developed substantial goodwill in its mark through longstanding extensive use of the mark in the fields of historic preservation, education and related fields.

5.4 Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name; that Respondent has not sought or obtained any trademark registrations for Complainant’s name; that Respondent is not a licensee of Complainant nor has Respondent been authorized by Complainant to use the disputed domain name.

5.5 Complainant further contends that Respondent has not made any non-commercial or fair use of the disputed domain name, without intending to mislead the public for commercial gain.

5.6 Complainant contends that Respondent has registered and used the disputed domain name in bad faith because:

a) Respondent has intentionally attempted to attract, for commercial gain, Internet users to its sight by creating a likelihood of confusion with Complainant’s mark regarding the source, sponsorship, affilation, or endorsement of Respondent’s website or its products or services;

b) Respondent does not have Complainant’s permission to use its mark to promote Respondent’s products or services over the Internet or in any other channel of commerce;

c) Respondent has provided false contact information to the registrar;

d) Respondent’s use of a domain name to link to pornographic sites constitutes bad faith and such use has thereby tarnished Complainant’s mark; and

e) Respondent is using the disputed domain name to operate a pornographic website and that even in the absence of any use, mere registration of another’s mark may create confusion among Internet users searching for the domain name.

B. Respondent

5.7 Respondent has failed to respond to the Complaint and is in default in these proceedings.

6. Discussion and Findings

6.1 The Policy as effected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

a) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

b) that the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and

c) that the domain name has been registered and is being used in bad faith.

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element noted in Paragraph 6.1, above.

6.3 Respondent, having failed to respond to the Complaint in these proceedings is in default, and in accordance with Paragraph 14(b) of the Rules, “The panel shall draw such inferences...as it considers appropriate.”

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.4 Complainant has not registered the term DELRAY BEACH HISTORICAL SOCIETY but uses the term with the superscript “TM” thereby denoting trademark usage of the term in connection with Complainant’s activities. (The Panel notes in passing that Complainant’s brochure, Annex G, omits the superscript.) A registered trademark is not a necessary ingredient of proceedings under the Policy, and the Policy is open to disputes in which a Complainant has common law rights respecting its mark. By virtue of its longstanding activities, noted above, Complainant is well known in its area and its mark is worthy of common law protection.

6.5 There is no doubt that Respondent has copied Complainant’s mark, save for the spaces between the words and the gTLD suffix “.org”. It is well settled that the suffix does not affect the issue of whether or not a domain name is identical or confusingly similar to the mark of another. Similarly, the omission of spaces between words is of no significance; see Tarjeta Naranja S.A. v. MrDomino.com and Alejandro San Jorge, WIPO Case No. D2001-0295. This Panel finds that the disputed domain name is identical or confusingly similar to the mark in which Complainant has rights.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.6 Paragraph 4(c) of the Policy lists three non-exclusive methods for demonstrating rights to or a legitimate interest in a disputed domain name:

(a) before any notice of the dispute, Respondent’s use or preparation to use the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods and services; or

(b) Respondent has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(c) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

6.7 Respondent has failed to contest any of the allegations or evidence presented by Complainant, and while Complainant bears the burden of proof respecting each element in Paragraph 6.1, above, it is Respondent who is in the best position to provide evidence regarding any rights or legitimate interests it may have in the disputed domain name. Thus, Complainant having made the necessary assertions regarding the Respondent’s lack of rights or legitimate interests in the disputed domain name, it is now Respondent’s burden to come forward and refute the assertions and evidence presented by Complainant. Respondent has failed to do so. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Thus, Complainant’s assertions and evidence must be given substantial weight.

6.8 It is highly unlikely that Respondent can allege that it was commonly known by the domain name or a name corresponding to the domain name because it was Complainant that was known by that name for almost forty years and it was Complainant that had previously owned the disputed domain name. Neither is it likely that Respondent can allege that it is making a non-commercial or fair use of the disputed domain name since the web page posted by Respondent offers commercial goods and services, pornographic though they may be. That Complainant’s mark is being tarnished by Respondent’s use of the disputed domain name is without question or doubt on the part of this Panel.

6.9 Respondent has used the domain name prior to notice of these proceedings. Because of the nature of the use and the similarity between the disputed domain name and Complainant’s mark, such use cannot constitute a bona fide offering of goods or services. See Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com,” WIPO Case No. D2000-0847; The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Kahn, WIPO Case No. D2002-0701; and Victoria Rowell v. Telco, Regsnet and Jeff Martin, WIPO Case No. D2003-0712.

6.10 Further, where a mark is distinctive, as in the case here, and Complainant has not authorized or licensed its use to Respondent, Respondent cannot be said to have legitimately chosen the domain name in dispute here “unless it was seeking to create an impression of an association” with Complainant, and to deliberately use that name to attract unwitting Internet users to Respondent’s site. See Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172.

6.11 For the reasons enumerated above, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.12 Paragraph 4(b) of the Policy indicates several non-exclusive methods for showing bad faith registration and use of a domain name. Bad faith registration and use of a domain name may also be shown by other activities of a respondent, as well as by the totality of circumstances surrounding a respondent’s activities.

6.13 The uncontested evidence and allegations submitted by Complainant are more than adequate for this Panel to find that Respondent’s registration and use of the disputed domain name is in bad faith.

6.14 Thus, the uncontested evidence submitted by Complainant is sufficient to satisfy Paragraph 4(b)(iv) of the Policy to the effect that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, and the products or services that may be offered at that website. No such sponsorship, affiliation, or endorsement by Complainant of Respondent’s use of the disputed domain name exists.

6.15 There are other indicia of bad faith registration and use of the disputed domain name by Respondent:

a) The address given by Respondent when registering the disputed domain name does not exist, according to Complainant and Federal Express. See, for example, 15 U.S.C. Para. 1125 (d)(I) (b)(i) (VII) to the effect that providing material and misleading false contact information when registering a domain name, or the intentional failure to maintain accurate contact information may be considered when determining whether a respondent has acted in bad faith.

b) The website accessed by entering the disputed domain name contains a number of pornographic pictures, as well as links to other pornographic websites. The association of that website with Complainant’s name surely tarnishes the goodwill that Complainant has garnered by virtue of its educational and archival activities in its community for forty years.

6.16 There is precedent to the effect that associating Complainant with a pornographic website is, in and of itself, sufficient to constitute bad faith in so far as tarnishing and diluting a complainant’s mark is concerned. See CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148; World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256 (and cases cited therein).

6.17 On the basis of the evidence presented, this Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

7.1 For the foregoing reasons, in accordance with Paragraph 4(a) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain name <delraybeachhistoricalsociety.org> be transferred to Complainant.

Jay Simon
Sole Panelist

Dated: July 16, 2004