The Office of the Kings
County District Attorney v. Dom Altam
Claim Number: FA1003001313554
PARTIES
Complainant is The Office of the Kings County District
Attorney (“Complainant”), represented
by Adam Zion, of The Office of the
Kings County District Attorney,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooklynda.com>, registered with 1 & 1
Internet Ag.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 16, 2010.
On March 19, 2010, 1 & 1 Internet Ag confirmed by e-mail to
the National Arbitration Forum that the <brooklynda.com> domain name is
registered with 1 & 1 Internet Ag and
that the Respondent is the current registrant of the name. 1 & 1
Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 March 25, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of April 14, 2010 by which Respondent could file
a Response to the Complaint, via e-mail to all entities and persons listed on
Respondent’s registration as technical, administrative, and billing contacts,
and to postmaster@ brooklynda.com. Also on March
25, 2010, the Written Notice of the Complaint, notifying Respondent of
the email addresses served and the deadline for a Response,
was transmitted to Respondent via post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts.
A timely Response was received and determined to be complete on April 13, 2010.
On April 20, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The mark at issue is the name BROOKLYN DA, which is a shortening for
the purpose of domain name structure of the title The Brooklyn D.A. This title is synonymous with the District
Attorney of Kings County, New York; Kings County being the jurisdictional name
for Brooklyn, New York. Although the
official name of this county is Kings, common usage and the US Post Office have
used the
The appellation “The Brooklyn DA” has long been the name by which the press,
the law enforcement community and ordinary citizens of
The domain name and service mark “Brooklyn DA” belongs to a
governmental agency providing critical public services to the City of
Although not registered, the BROOKLYN DA mark is distinct and uniquely
identifies the Brooklyn District Attorney.
It is not an ambiguous or generic mark.
As such it was the logical choice as the basis of the Brooklyn District
Attorney’s domain of <brooklynda.org>.
The mark of “Brooklyn DA” is accepted in the press, academia, criminal
justice community, and the community-at-large to exclusively refer to the
Brooklyn District Attorney, formally known as the Office of the Kings District
Attorney,
The Respondent’s domain name is identical with, and therefore
confusingly similar to the Complainant’s mark.
Respondent’s inclusion of the Complainant’s mark was purposeful and
done specifically to confuse an internet user who sought to access the Complainant’s
domain and website.
The respondent has no legitimate right or interest in the domain <brooklynda.com> which uses the
identical mark of the Complainant’s common-law mark of “Brooklyn DA.”
The Complainant has given the Respondent no license or permission to
use the mark BROOKLYN DA. Respondent has
taken the Complainant’s mark without authorization for the purpose of drawing
unsuspecting internet users to his site.
The Respondent is using the disputed domain to resolve a website that is
clearly designed to appear as if it is an authorized website of the Brooklyn
District Attorney.
The Respondent’s free speech rights are not infringed by a finding that
Respondent has no legitimate interest in the domain name.
The fact that the disputed domain name resolves to a website bearing a
photograph of the actual Brooklyn District Attorney, and contains a narrative
about the internal structure of the Brooklyn District Attorney’s office is
clear evidence that the Respondent was fully aware that the disputed domain
name belonged to the Complainant.
Respondent’s registration was an obvious attempt not only to capitalize
on the notoriety of the Complainant’s mark, but to divert internet users to his
website; a website that ultimately contained pornographic and indecent
images. Such a registration is one made
in bad faith.
Respondent’s use of the BROOKLYN DA mark in the disputed domain
negatively impacts on the Complainant’s legitimate interests of providing
important law enforcement, community education, crime victim assistance, and
employee recruitment information and is additional evidence of bad faith.
The Complaint was initially filed with the Forum on March 16, 2010,
without identity of the Registrant or any associated contact information
included. On March 19, 2010, the Forum
notified the Complainant of the contact information for the Respondent and
courtesy copied the Respondent.
Respondent then sent an e-mail to Complainant.
In the e-mail, Respondent attempted to control both Complainant’s mark
and the process through veiled threats and an insinuation that the
Complainant’s unreasonable behavior will lead to unforeseen consequences.
The respondent attempted to withdraw his prior conduct by arranging for
the automatic forwarding of webpage requests for Brooklynda.com to another
domain which now displays the same webpage, but with altered content. By this conduct, the Respondent has
acknowledged his infringement of Complainant’s mark through the displaying of
offensive pornographic images.
Respondent, having been summoned to the appropriate forum for
resolution of this dispute now seeks to avoid the consequences of his actions by
hiding the evidence, and seeking a negotiated settlement.
B. Respondent
The Complainant, representing the Kings County District Attorney,
cynically attempts to manipulate the emotions of the Panel.
Respondent’s email was a request to spare the Respondent from having to
write a reply to the complaint.
Respondent’s website redirects visitors to a different domain because
the registration information for <brooklynda.com>
is no longer private.
The domain
<brooklynda.com> was registered in 2000, a full ten years ago. The domain <brooklynda.org> has not been
registered for much longer.
Respondent’s website is a criticism or commentary site. No visitor, upon reading the prominent text,
could mistakenly conclude that this is the “official” website for Complainant.
The Complaint fails because “Brooklyn D.A.” cannot be considered a
trademark or service mark of the Complainant.
The Complainant asserts that simply by registering the domain name
<brooklynda.org>, the Complainant has made the phrase “Brooklyn District
Attorney” the exclusive property of the Complainant.
Complainant’s domain name has a descriptive phrase that has been in use
long before 1997 when <brooklynda.org> was registered. BROOKLYN DA is not a coined term with
unique trademark significance.
To establish BROOKLYN DA as a “mark” of the Complainant, the
Complainant would have to demonstrate that prior to the establishment of the
website at <brooklynda.org> the Complainant had not been known as the
Brooklyn D.A.
There is ample evidence that prior to 1997 the Complainant’s office had
been referred to as the Brooklyn D.A.
Even if BROOKLYN DA were a “mark” of the Complainant it would still
fail because the Respondent’s domain and website are used as a non-commercial
commentary site.
UDRP complaints are routinely denied when the website criticizes or
offers commentary about the complainant.
The Respondent has legitimate interests in the domain name. For ten years, the Respondent has paid for
registration and hosting of the website.
The website has been in use providing information about current issues
pertaining to
The Respondent has not registered the domain in bad faith. There is no allegation that the Respondent
offered to sell the domain name to the Complainant. There is no allegation that the Respondent is
gaining any economic benefit from the domain name.
The Respondent registered <brooklynda.com>
because it is short and direct.
There was no intent to unfairly steal the ‘customers’ of the
Complainant.
FINDINGS
For the reasons set forth below, the Panel
finds for Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant does not provide evidence of a registered trademark incorporating the BROOKLYN DA mark. However, the Panel may find registration of a trademark is unnecessary provided Complainant can establish common law rights in the mark under Policy ¶ 4(a)(i) through the establishment of secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts it has common law rights in its BROOKLYN DA
mark. Complainant asserts it holds the
<brooklynda.org> domain name that it uses to provide the community with
information about its district attorney’s office. Complainant has provided evidence of the use
of the BROOKLYN DA mark in newspaper headlines to signify Complainant, dating
back to at least 1967. Complainant also
provides evidence of third-parties in the community who detail the association
of the BROOKLYN DA mark with Complainant.
The Panel finds Complainant’s evidence establishes secondary meaning
sufficient to support a finding of common law rights in the mark and the Panel
finds Complainant has established rights in the BROOKLYN DA mark under Policy ¶
4(a)(i). 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 Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc.,
FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant
established common law rights in the mark through continuous use of the mark
since 1995 for the purpose of Policy ¶ 4(a)(i)).
Complainant contends Respondent’s <brooklynda.com> domain
name is identical to Complainant’s BROOKLYN DA mark despite the omission of the
spacing and the addition of the generic top-level domain “.com.” The Panel agrees and the Panel finds
Respondent’s <brooklynda.com> domain name is identical to
Complainant’s BROOKLYN DA mark under Policy ¶ 4(a)(i). See
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends Respondent is not commonly known by the disputed domain name. Complainant points to the WHOIS information, which lists the registrant as “Dom Altam,” as evidence Respondent is not commonly known by the disputed domain name. The Panel finds Respondent is not commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant contends Respondent is
using the disputed domain name to offer opinion and satirical information about
Complainant and cases prosecuted by or associated with Complainant. The Panel finds Respondent’s use of
Complainant’s mark in an identical disputed domain name in order to display
opinion and satire regarding Complainant’s cases is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See 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); see
also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000)
(“[T]he Panel does not dispute Respondent’s right to establish and maintain a
website critical of Complainant . . . However, the panel does not consider
that this gives Respondent the right to identify itself as Complainant.”).
Furthermore, Complainant contends Respondent’s use of the disputed domain name includes displaying adult-oriented material on the website resolving from the disputed domain name. The Panel finds Respondent’s use demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also McClatchy Mgmt. Servs., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that the respondent’s use of the disputed domain names to divert Internet users to a website that features adult-oriented material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).
Complainant has proven this element.
The Panel finds that the list of factors within Policy ¶ 4(b) are not
exhaustive of the potential factors which may show evidence of a respondent’s
bad faith pursuant to Policy ¶ 4(a)(iii).
See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000)
(finding that the Policy “indicates that its listing of bad faith factors is without limitation”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19,
2000) (“[T]he Policy expressly recognizes that other circumstances can be
evidence that a domain name was registered and is being used in bad faith”).
Complainant contends
Respondent is using the disputed domain name to offer opinion and satirical
information about Complainant and cases prosecuted by or associated with
Complainant. Complainant asserts and the
Panel finds that Respondent’s use of Complainant’s mark to provide criticism of
Complainant constitutes registration and use of the disputed domain name in bad
faith under Policy ¶ 4(a)(iii). See
Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent’s
registration and use of a domain name nearly identical to Complainant’s mark to
criticize Complainant’s business practices is evidence of registration and use
of the <diners-club.net> domain name in bad faith pursuant to Policy ¶
4(a)(iii).”); see
also Nw. Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb.
Forum Mar. 28, 2001) (“Respondent registered the
domain name for the purpose of bringing Internet users desiring to learn more
about Complainant to Respondent's site for the intended purpose of publishing
contrary and critical views of Complainant thus disrupting the business of
Complainant. Registering a domain name identical with the mark of Complainant,
for this purpose, is bad faith.”).
Furthermore, Complainant contends Respondent’s website
resolving from the identical disputed domain name displays adult-oriented
content. The Panel finds Respondent’s
use of the disputed domain name evidences bad faith registration and use under
Policy ¶ 4(a)(iii).
See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar.
18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect
Internet users to adult-oriented websites was evidence that the domain names
were being used in bad faith); see also Jon-Don Prods., Inc. v. CarpetSolutions, FA
95293 (Nat. Arb. Forum Aug. 24, 2000) (finding bad faith where the respondent
threatened to use the domain name for adult-oriented material).
Complainant has proven this element.
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 <brooklynda.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 30, 2010
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