DECISION

Sterling Inc. v. Anti-Globalization Domains

Claim Number:  FA0311000210277

PARTIES

Complainant is Sterling Inc. (“Complainant”), represented by John J. Cunniff, of Renner Kenner Greive Bobak Taylor & Weber, First National Tower, Fourth Floor, Akron, OH 44308.  Respondent is Anti-Globalization Domains  (“Respondent”), 5444 Arlington Avenue, #g14, Bronx, NY 10471.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <markandmorgan.com>, registered with Intercosmos Media Group d/b/a DirectNic.com (hereinafter “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 November 12, 2003; the Forum received a hard copy of the Complaint on November 14, 2003.

On November 14, 2003, DirectNic.com confirmed by e-mail to the Forum that the domain name <markandmorgan.com> is registered with DirectNic.com and that Respondent is the current registrant of the name. DirectNic.com has verified that Respondent is bound by the 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 November 26, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 16, 2003 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@markandmorgan.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 December 29, 2003, 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 <markandmorgan.com> domain name is confusingly similar to Complainant’s MARKS & MORGAN mark.

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

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

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

FINDINGS

Complainant, Sterling Inc., is the owner of the service mark MARKS & MORGAN (U.S. Reg. Nos. 2,065,696 and 2,198,169) by reason of assignment filed in the U.S. Patent and Trademark Office on August 31, 2003 (Reel No. 002365, Frame No. 0436). Complainant uses the MARKS & MORGAN mark in association with retail jewelry store services, first used in commerce in August of 1995.

Respondent, Anti-Globalization Domains, registered the <markandmorgan.com> domain name on December 22, 2001, without license or authorization to use the MARKS & MORGAN mark for any purpose. Respondent uses the disputed domain name to redirect Internet users to the <abortionismurder.org> domain name, which espouses views against abortion. Respondent’s address is the same address of the notorious cybersquatter John Barry, and Respondent’s name is one of his well-known corporate alter-egos. Respondent’s method of redirecting Internet users to the <abortionismurder.org> domain name is also the modus operandi for John Barry, and the Panel thus finds that Respondent and John Barry are the same person or entity.

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 MARKS & MORGAN mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through use of the mark in commerce for over eight 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”).

Respondent’s <markandmorgan.com> domain name is confusingly similar to Complainant’s MARKS & MORGAN mark. Respondent has simply eliminated the letter “s” from the end of the word MARKS, and replaced the ampersand (which cannot be used in a domain name) with the equivilant word “and.” The disputed domain name remains similar in sight, sound, and commercial impression to Complainant’s mark. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).

Accordingly, the Panel finds that the <markandmorgan.com> domain name is confusingly similar to Complainant’s MARKS & MORGAN mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is using the disputed domain name to redirect Internet users to the <abortionismurder.org>. Respondent’s attempt to capitalize on the goodwill surrounding Complainant’s mark may mislead consumers into believing that Complainant endorses or supports the opinions reflected at the <abortionismurder.org> domain name, and thus tarnishes Complainant’s mark. In light of Respondent’s unauthorized use of Complainant’s mark for these ends, such use does not evidence rights or legitimate interests in the domain name. See 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 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”).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <markandmorgan.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s status as a U.S. resident, as evidenced by the address given in the WHOIS contact information, means that Respondent had at least constructive notice of Complainant’s rights in the MARKS & MORGAN mark prior to registering the disputed domain name. This, plus the striking similarity between the mark and the domain name, permit the inferrence that the domain name was registered in bad faith. Respondent’s subsequent use of Complainant’s mark in the domain name to redirect Internet users, seeking Complainant online, to <abortionismurder.org>, tarnishes Complainant’s mark, and evidences bad faith use of the domain name. 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,” which tarnished Complainant’s mark, evidence that the domain name was registered and used in bad faith).

The Panel thus finds that Respondent registered and used the <markandmorgan.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is 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 <markandmorgan.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  January 12, 2004

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