National Press Club v. High Traffic
Domains inc a/k/a Cheap Domains Buy this domain for $1000 or less
Claim
Number: FA0304000154113
Complainant is
the National Press Club, Washington, DC (“Complainant”) represented
by David J. Ervin, of Collier Shannon Scott PLLC. Respondent is
High Traffic Domains inc a/k/a Cheap Domains Buy this domain for $1000
or less, Bronx, NY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nationalpressclub.com>, registered with Enom,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
electronically submitted a Complaint to the National Arbitration Forum (the
"Forum") April 7, 2003; the Forum received a hard copy of the
Complaint April 7, 2003.
On
April 18, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <nationalpressclub.com> is registered with Enom, Inc. and
that Respondent is the current registrant of the name. Enom, Inc. verified that
Respondent is bound by the Enom, 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 18, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 8, 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@nationalpressclub.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
May 19, 2003, pursuant to Complainant's request to have the dispute decided by
a single member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 documents submitted
and in accordance with 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<nationalpressclub.com>, is identical to Complainant’s NATIONAL
PRESS CLUB mark.
2. Respondent has no rights or legitimate
interests in the <nationalpressclub.com> domain name.
3. Respondent registered and used the <nationalpressclub.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, the
National Press Club, holds rights in the NATIONAL PRESS CLUB mark. Complainant
holds several registrations for stylized versions of the mark (e.g.,
U.S. Reg. No. 2,399,568, registered on October 31, 2000), as well as several
trademarks for the word mark (e.g., U.S. Reg. No. 2,399,588, registered
on October 31, 2000). Complainant has continually operated under the NATIONAL
PRESS CLUB mark since at least 1920 as a provider of services for the
advancement of the profession of journalism. Complainant provides professional
services and support, including research, training, news publications and
restaurant, catering and entertainment services. Complainant’s membership
includes seventeen consecutive former Presidents of the United States along
with other famous newsmakers. Complalinant regularly hosts a Luncheon Speakers
Series where influential speakers (such as Heads of State) address topics
relevant to journalism. Complainant has maintained a presence on the web at the
<press.org> domain name since June 1994.
Respondent, High
Traffic Domains inc a/k/a Cheap Domains Buy this domain for $1000 or less,
registered the <nationalpressclub.com> domain name on May 21,
2002, but is not licensed or authorized to use Complainant’s NATIONAL PRESS
CLUB mark for any purpose. According to Yahoo.com’s People Search Database,
Respondent’s contact address is that of the notorious cybersquatter John Barry.
As in previous administrative proceedings involving John Barry (see
Pulitzer, Inc. and St. Louis Post-Dispatch, LLC v. John Barry a/k/a Buy This
Domain, FA 114673 [Nat. Arb. Forum Aug. 13, 2002]; The Journal Gazette
Co. v. Domain For Sale Inc. a/k/a Domain World, FA 122202 [Nat. Arb. Forum
Oct. 9, 2002], Respondent has redirected the disputed domain name to an
anti-abortion website at the <abortionismurder.org> domain name. This
page depicts graphic pictures of aborted human fetuses and provides links to
editorials, videos, and other information related to abortions. Respondent has
also redirected the disputed domain name to another opinion web page at the
<thetruthpage.org> domain name, and an online pharmacy at the
<pillstore.com> domain name. Currently, the disputed domain name
redirects Internet users to a website that proposes to offer the <nationalpressclub.com>
domain name registration for sale for $549.
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 will draw such
inferences as the Panel 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.
Complainant
established in this proceeding that it has rights in the NATIONAL PRESS CLUB
mark through registration of the mark with the U.S. Patent and Trademark Office
and by continuous use of the mark for almost 90 years.
The domain name registered by Respondent, <nationalpressclub.com>,
is identical to Complainant’s NATIONAL PRESS CLUB mark. Elimination of the
spaces in a registered mark does not prevent a finding of identicality. The
same logic holds true for the addition of the top-level domain “.com,” as both
of these changes are a function of the standardized nature of domain names, and
not deliberate introductions by Respondent such as would distinguish the name. See
Hannover
Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Wembley Nat’l
Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the
domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM
mark).
Accordingly, the
Panel finds that the <nationalpressclub.com> domain name is identical to Complainant’s
NATIONAL PRESS CLUB mark under Policy ¶ 4(a)(i).
Complainant
carries the initial burden of demonstrating that Respondent has no rights or
legitimate interests in the disputed domain name. Complainant can meet this
burden by showing that Respondent cannot rely upon the examples of
circumstances demonstrating rights or legitimate interests in a domain name
listed in Policy ¶¶ 4(c)(i)-(iii). Such a showing establishes a prima facie
case against Respondent, shifting the burden to Respondent. Respondent did not file a Response to the
Complaint and therefore has made no effort to meet its burden. See 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that where a 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”).
Respondent, the
notorious cybersquatter John Barry, is not “commonly known by” the disputed
domain name. Both the name given in the WHOIS contact information for the
disputed domain name and the fame surrounding Complainant’s longstanding use of
the NATIONAL PRESS CLUB mark support the reasonable inference that Policy ¶
4(c)(ii) does not apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
Respondent has previously used the disputed domain name to redirect
Internet users to various websites unrelated to the NATIONAL PRESS CLUB mark:
the <abortionismurder.org>, <thetruthpage.org> and
<pillstore.com> domain names. Some of these domain names tarnish
Complainant’s mark by expressing a viewpoint under the mark that is
inconsistent with Complainant’s desire to convey impartiality. Others are
simply commercial in nature, taking advantage of Complainant’s mark to divert
Internet users for Respondent’s financial gain. In each instance, Respondent’s
redirection of Internet users from the disputed <nationalpressclub.com> domain name
cannot be considered either “bona fide” or “noncommercial or fair” use, making
Policy ¶ 4(c)(i) and (iii) inapplicable to Respondent. See
Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that
Respondent’s commercial use of the domain name to confuse and divert Internet
traffic is not a legitimate use of the domain name); 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,
Respondent’s use of the names was not in connection with the offering of goods
or services or any other fair use).
Furthermore, Respondent’s current use of the domain name, purporting to
offer the registration for sale, does not evidence a legitimate noncommercial or fair use
of the domain name. The domain name is identical to Complainant’s mark and the
sale offer for the domain name registration seems designed to force Complainant
to purchase the domain name, this offer of sale fails to be a “bona fide”
offering of goods or services. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding Respondent’s conduct purporting to sell the domain name suggests it
has no legitimate use); see also Skipton
Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in
a domain name where Respondent offered the infringing domain name for sale and
the evidence suggests that anyone approaching this domain name through the
worldwide web would be "misleadingly" diverted to other sites).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<nationalpressclub.com> domain
name under Policy ¶ 4(a)(ii).
Respondent
registered a domain name that is identical to Complainant’s NATIONAL PRESS CLUB
mark. In the past, the disputed domain name created a likelihood of confusion
as to whether Complainant sponsored or endorsed any of the content at
the domain names to which Respondent redirected Internet users. With respect to
the <pillstore.com> domain name, the Panel infers that Respondent’s
reason behind its redirection was to receive referral fees from
<pillstore.com>. In using a likelihood of confusion between Complainant’s
mark and Respondent’s domain name for commercial gain, Respondent’s activities
evidenced bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract users to a website sponsored by Respondent).
Currently,
Respondent redirects Internet users to a website that purports to sell the
disputed domain name for a price that undoubtedly exceeds Respondent’s
out-of-pocket expenses with respect to the <nationalpressclub.com> domain name. Respondent has been known in the
past to register domain names infringing on famous trademarks, and the Panel
makes the reasonable inference that Respondent registered the disputed domain
name with full knowledge of Complainant’s rights in the NATIONAL PRESS CLUB
mark. Thus, the Panel concludes that Respondent deliberately registered the disputed
domain name so that it could ultimately sell its domain name registration to
Complainant, the lawful holder of the trademark. Respondent’s previous uses of
the domain name evidence bad faith in and of their own right, and also operated
to make the purchase of the domain name by Complainant more desirable in that
this purchase would prevent any additional activity by Respondent or a
subsequent owner of the domain name registration that would tarnish
Complainant’s mark. These facts support a finding that Respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Parfums Christain Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS
registration information contained the words, “This is domain name is for
sale”); see also World Wrestling
Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO
Jan. 14, 2000) (finding that Respondent used the domain name in bad faith
because he offered to sell the domain name for valuable consideration in excess
of any out-of-pocket costs).
The Panel thus
finds that Respondent registered and used the <nationalpressclub.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <nationalpressclub.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 2, 2003.
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