DECISION

 

FDNY Fire Safety Education Fund, Inc. v. City Novelties a/k/a Kevin Cahill a/k/a Cityfirefighter

Claim Number: FA0311000210223

 

PARTIES

Complainant is FDNY Fire Safety Education Fund, Inc. (“Complainant”), represented by Lisa Rosenburgh, of Salans, Rockefeller Center, 620 Fifth Ave., New York, NY 10020. Respondent is City Novelties a/k/a Kevin Cahill a/k/a Cityfirefighter (“Respondent”), represented by Kevin Cahill, 4 Commerce Street, Staten Island, NY 10314.

 

REGISTRARS AND DISPUTED DOMAIN NAMES

The domain names at issue are <fdny.com>, <fdnyfirefighters.com>, <fdnycalendars.com> and <4fdny.com>, registered with Network Solutions, Inc., and the <fdnyfiredepartment.com>, <fdnyfireman.com> and <fdnyfiremen.com> domain names, registered with Enom, 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.

 

Paul M. DeCicco as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 10, 2003; the Forum received a hard copy of the Complaint on November 13, 2003.

 

On November 13, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <fdny.com>, <fdnyfirefighters.com>, <fdnycalendars.com> and <4fdny.com> are registered with Network Solutions, Inc., and that Respondent is the current registrant of the names. On November 13, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <fdnyfiredepartment.com>, <fdnyfireman.com> and <fdnyfiremen.com> are registered with Enom, Inc., and that Respondent is the current registrant of the names. Network Solutions, Inc. and Enom, Inc. have verified that Respondent is bound by their respective registration agreements 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 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 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@fdny.com, postmaster@fdnycalendars.com, postmaster@fdnyfirefighters.com, postmaster@fdnyfiredepartment.com, postmaster@fdnyfireman.com, postmaster@fdnyfiremen.com and postmaster@4fdny.com by e-mail.

 

A Response was received on December 9, 2003. This Response was received one day after the deadline for a Response had lapsed. The Panel chooses to accept Respondent’s Response in this proceeding. There doesn’t seem to be any prejudice in accepting the Response and further the response was only one day late. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panel); see also Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a Panel may consider a Response which was one day late, and received before a Panelist was appointed and any consideration made).

 

On December 22, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

 

Complainant contends the following:

 

The Fire Department of the City of New York (the “FDNY”) is a government agency of the City of New York (the “City”), which protects the lives and property of New York City residents and visitors from fire and critical health threats. The City of New York, through its agency, the Fire Department of New York, uses the FDNY marks in connection with its official employee uniforms and apparel, on fire-fighting equipment and elsewhere in the conduct of its official business, including educational programs concerning fire safety. The FDNY was established in 1898 and has used the FDNY Marks to identify its services since that date. The City through its agency, the FDNY, owns and operates a website at <fdny.org>.

 

The City of New York grants Complainant the right to use and to license the FDNY Marks. In this regard, the Fund uses the FDNY Mark in connection with its educational activities and on a wide variety of authorized merchandise available to the public. Since October 2000, the Fund has offered such merchandise through its Fire Zone store, located in Rockefeller Center, at 34 W. 51st Street, New York, New York, and through its website at <fdnyfirezone.com>. Complainant licenses third parties to use the FDNY Marks on merchandise. The FDNY marks have been used by the Fund’s authorized licensees on various items of merchandise since at least as early as 1994.

 

In addition to the established common law rights in the FDNY marks which have been licensed to Complainant, the City is the owner of U.S. Registration No. 2,606,740 for the mark FDNY for “clothing, namely t-shirts, sweat shirts, hats, caps, baseball caps, jackets, shirts, head wear, warm up suits and wind resistant jackets, pants and shirts”.

 

Complainant has established trademark rights, as licensee, in the FDNY Marks, including the trademark consisting of the initials FDNY

 

Without authorization, permission or license from Complainant, Respondent registered the Domain Names on the following dates: <fdny.com> on September 26, 2000, <fdnycalendars.com> on June 28, 2002, <fdnyfirefighters.com> on June 15, 2002, <4fdny.com> on April 22, 2002, and <fdnyfiredepartment.com>, <fdnyfireman.com> and <fdnyfiremen.com> on August 15, 2002.

 

Respondent has operated and continues to operate websites at <fdny.com>, <fdnycalendars.com> and <fdnyfirefighters.com>. At <fdnycalendars.com>, the user was able to purchase the official FDNY calendar and link to Respondent’s website at <cityfirefighter.com> in order to purchase additional merchandise, including calendars, shirts, lapel pins, hats, toy trucks, temporary tattoos and ceramic replica helmets, bearing the FDNY Marks. At least, Complainant does not authorize some of this merchandise.

 

As of October 4, 2002, the website at <fdnyfirefighters.com> was titled FDNY Firefighters, and contained a link to Respondent’s website at <cityfirefighter.com>. Respondent is not now operating, and does not appear to have operated in the past, websites at <fdnyfiredepartment.com>, <fdnyfireman.com>, <fdnyfiremen.com> and/or <4fdny.com>.

 

On December 5, 2002 Complainant sent a letter to Respondent advising him of Complainant’s claims and requesting that he identify the source of merchandise bearing the FDNY marks sold on his website. A similar letter was sent on March 6, 2003 and telephone contact made. There was no response to Complainant’s communications.

 

Complainant again contacted Respondent on August 20, 2003, this time by a Deputy Fire Commissioner, and advised Respondent that he was not permitted to sell merchandise on websites using domain names including FDNY marks.

 

Respondent responded only by changing the content of websites at <fdny.com>, <calendars.com> [sic] and <fdnyfirefighters.com>. The <fdny.com> site still contains at least some of the merchandise not authorized by Complainant.

 

The website at <fdnycalendars.com> is still titled FDNY Calendars.com, and the user is still able to purchase the official FDNY calendar and to link to purchase other FDNY merchandise. However, the home page now contains a banner ad for Respondent’s website at <fdny.com> and the link to purchase other merchandise now redirects the user to Respondent’s website at <fdny.com>.

 

The Domain Names, used and registered by Respondent, are nearly identical and/or confusingly similar to the famous FDNY Mark. The FDNY Mark was both famous and distinctive at the time that Respondent registered the Domain Names, and Respondent was familiar with this famous mark. Moreover, federal registration of the FDNY Mark confers constructive notice thereof.

 

Respondent has no rights or legitimate interests in the disputed Domain Names. Complainant has not licensed or otherwise authorized Respondent’s use of its trademark in any manner, including use in Respondent’s Domain Names. Respondent has never been commonly known by the Domain Names, as a legal entity or otherwise. Finally, Respondent has not used the Domain Names in connection with any bona fide offering of goods or services and has not made any legitimate noncommercial or fair use of the Domain Names.

 

Although Respondent is a New York City firefighter, his status alone does not permit him to use the FDNY Marks in a commercial manner. Further, the FDNY has not licensed or otherwise authorized Respondent to use the FDNY Marks in any manner.

 

Respondent’s use of the domain names <fdny.com>, <fdnycalendars.com> and <fdnyfirefighters.com> cannot be considered legitimate, fair or bona fide because the products sold on these websites include unauthorized, infringing FDNY merchandise. As such, Respondent’s actions do not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. While Respondent is linking to a website, which may sell authorized as well as unauthorized FDNY merchandise, such activity does not give Respondent proprietary rights in Complainant’s FDNY Mark and does not confer the right to use the trademark as a domain name.

 

Respondent’s use of the FDNY Mark attracts potential consumers of authorized FDNY merchandise to Respondent’s websites, thus diverting Internet users searching for authentic FDNY merchandise offered for sale by Complainant and its licensees. Respondent’s activities thus are in violation of paragraph 4(c)(iii) of the Policy.

 

Respondent has not used the domain names <4fdny.com>, <fdnyfiredepartment.com>, <fdnyfireman.com> and/or <fdnyfiremen.com> for any purpose.

 

Respondent seeks to take advantage of the owner of a famous mark, and intentionally attempts to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s FDNY Marks as to the source, sponsorship, affiliation or endorsement of the websites, or of merchandise available for sale on the websites. As such, Respondent’s activities correspond to those listed in paragraph 4(b)(iv) of the Policy as evidence of bad faith use and registration of a domain name.

 

Respondent’s use of the domain names <fdny.com>, <fdnycalendars.com> and <fdnyfirefighters.com> to resolve to websites which offer for sale unauthorized products indicates a bad faith motive in registering the domain names for the purpose of disrupting the business of a competitor, pursuant to paragraph 4(b)(iii) of the Policy. Respondent has registered the Domain Names in order to prevent Complainant from reflecting the mark in corresponding domain names, and Respondent has engaged in a pattern of such conduct, having registered and passively held other “infringing” domain names.

 

Given the fame and publicity of the FDNY Mark, and since Respondent is in fact a firefighter with the FDNY, Respondent clearly had actual knowledge of the trademark when it registered the Domain Names in dispute. In fact, and certainly not by coincidence, Respondent registered most of the Domain Names following the events of September 11, 2001, at a time the FDNY received unsurpassed publicity and recognition. As a result of the tremendous outpouring of public support for the FDNY, there has been a significant increase in FDNY merchandise sales, on which Respondent has apparently attempted to capitalize. In bad faith, Respondent has intentionally exploited the heroic efforts of the FDNY by incorporating the FDNY Mark into its Domain Names, to the benefit of Respondent and the detriment of the FDNY and Complainant.

 

As further evidence of bad faith, Respondent has failed to respond to Complainant’s letters and telephone calls, refusing to comply with Complainant’s demands and choosing not to respond to the allegations contained therein.

 

B. Respondent

 

Respondent contends that he obtained the domain name <fdny.com> by purchasing it from a Korean company that seemed to have owned it for years and used it in their business. Respondent has since built traffic at the current <fdny.com> website by effort and expenditure. Respondent further alleges that at the time he acquired the domain name <fdny.com> he searched for a trademark and there was no FDNY mark although there was one that was applied for and abandoned. He had observed that there were several hundred merchants selling FDNY merchandise and feels that he is being singled out because of his domain names.

 

With regard to <fdnycalendars.com> Respondent alleges that he registered the domain name after obtaining licensed FDNY calendars. As to <fdnyfirefighters.com> and <fdnyfireman.com>, he argues that he is a FDNY Fireman and FDNY Firefighter and that he has rights to use the FDNY mark. Respondent says that he has not used the <fdnyfirefighters.com>, <fdnyfireman.com> or the <fdnyfiremen.com> mark but has a future use for them.

 

Respondent claims he had a dialog with Complainant’s agents and representatives wherein he offered to return at least one of the domains if he was compensated for it, but that offer was refused.

 

Respondent contends that he started selling FDNY merchandise in late June 2002.

 

FINDINGS

Complainant has trademark rights in the mark FDNY. These trademark rights do not extend to calendars. While Complainant’s mark may be well known, the mark has not been shown to be a famous mark.

 

Without authorization, permission or license from Complainant, Respondent registered the Domain Names on the following dates: <fdny.com> on September 26, 2000, <fdnycalendars.com> on June 28, 2002, <fdnyfirefighters.com> on June 15, 2002, <4fdny.com> on April 22, 2002, and <fdnyfiredepartment.com>, <fdnyfireman.com> and <fdnyfiremen.com> on August 15, 2002.

 

At the time Respondent acquired the domain name <fdny.com> he searched for a trademark and there was no FDNY mark, although there was one that was applied for and abandoned. Respondent currently maintains websites at <fdny.com>, <fdnyfirefighters.com> and <fdnycalendars.com>. The <4fdny.com>, <fdnyfiredepartment.com>, <fdnyfireman.com> and <fdnyfiremen.com> domain names do not and have never resolved to any online presence.

 

Respondent is a New York City Firefighter. Respondent’s status alone does not permit him to use the FDNY marks in a commercial manner. Complainant has not licensed nor otherwise authorized Respondent to use the FDNY marks in any manner. Respondent’s status as a FDNY Firefighter/Fireman creates the presumption that he was aware that his employer, the Fire Department of the City of New York, had interests in the FDNY mark.

 

The domain names, used and registered by Respondent, are each nearly identical and/or confusingly similar to the FDNY mark for the purposes of this proceeding.

 

Respondent has rights and interest in the <fdnycalendars.com>, <fdnyfirefighters.com>, <fdnyfireman.com> and <fdnyfiremen.com> domain names, but does not have such rights in the <fdny.com>, <4fdny.com> or <fdnyfiredepartment.com> domain names.

 

 

Respondent registered and uses the <fdny.com>, <4fdny.com> and <fdnyfiredepartment.com> in bad faith.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has rights in the FDNY mark by virture of the fact that the City of New York and the Fire Department of the City of New York authorizes it to use and license the use of the FDNY mark. Common-law rights in the FDNY mark date back to 1898, and a registration of the mark on the Principal Register of the United States Patent and Trademark Office shows effective registration rights dating back to September 12, 2000. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also 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”).

 

The <fdny.com> domain name is clearly identical to the FDNY mark since the top-level domain is not considered with regard to identicalness. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The <fdnyfiredepartment.com> domain name is confusingly similar to the FDNY mark since that mark is incorporated into the domain name. The domain name merely adds the decriptive term fire department (the FD in FDNY) to the mark. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001). Likewise, the <4fdny.com> domain name is confusingly similar to the FDNY mark since the numerical 4 placed in front of the mark does little to denigrate the visual experience created by the mark alone. See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000). In communications parlance, the “4” adds noise, but doesn’t obscure or alter the FDNY “signal.”

 

The <fdnycalendars.com>, <fdnyfirefighters.com>,<fdnyfireman.com> and <fdnyfiremen.com> are descriptive. The addition of words after the FDNY mark distinguish <fdnyfirefighters.com>, <fdnyfireman.com> and <fdnyfiremen.com> domain names from the FDNY mark by describing something different than the FDNY business. See Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000). Indeed, these domain names, at face, describe Respondent, a Fire Department of New York Fire Fighter.

 

Nevertheless, the words firefighters, fireman, and firemen, concatenated to the Complainant’s mark are each related to Complainant’s business in an obvious manner. The additional word calendars may relate to Complainant’s business by connoting schedules of sponsored events rather than a theme, wall calendar. The juxtapositions then, rather than diminish confusion, enhance the likelihood that one might be confused as to the sponsor of the domain name. See Thrifty, Inc. and Thrifty Rent-a-Car System, Inc. v. Airportparkinglots.com, FA 129123 (Nat. Arb. Forum Jan. 2, 2003) (finding <thriftyairportparking.com> confusingly similar to the THRIFTY marks, particularly because those additions have connotations that relate to Complainant's business services) see also Foot Locker, Inc. v. Widmaer, FA 113283 (Nat. Arb. Forum June 17, 2002). (<champs-sports.com> and others: "The addition of generic words is especially confusing where the generic words bear an obvious relationship to Complainant's business").

 

Therefore, the Panel concludes that for the purposes of this proceeding, each of Respondent’s domain names is either identical or confusingly similar to Complainant’s mark.

 

Rights or Legitimate Interests

 

Respondent is not authorized to use the FDNY mark and is not commonly know as FDNY under Policy paragraph 4(c)(ii).

 

Before notice of the instant Complaint, Respondent used the <fdny.com> and <fdnycalendars.com> domain names in connection with the an offering of goods. In his defense, Respondent claims that he has built up a strong customer base with its <fdny.com> and <fdnycalendars.com> domain names, and has rights and legitimate interests in these domain names persumably pursuant to Policy ¶ 4(c)(i).

 

Complainant alleges that certain goods offered via Respondent’s websites come within the purview of its mark, but are not authorized goods. However Complainant offers no detail as to what goods being offered which it claims to be “unauthorized.” The selling of infringing goods implies that Respondent’s business is not a “bona fide” business and thus Respondent has no legitimate rights or interests in the domain names. Complainant concludes that Respondent’s use of the <fdny.com>, <fdnycalendars.com> and <fdnyfirefighters.com> domain names, without authorization by Complainant to use the FDNY mark, is further evidence that Respondent lacks rights or legitimate interests in the disputed domain names. Absent a specific agreement Respondent cannot use Complainant’s trademark in a domain name when Respondent, even though selling Complainant’s goods, has no permission to use the trademark in the domain name. See Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corp. v. Double Time Jazz, FA 113316 (Nat. Arb. Forum July 10, 2002).

 

The Panel agrees with Complainant, in part. Reponsdent is without rights or interest in the <fdny.com> domain name. However, the Panel disagrees with Complainant as to the <fdnycalendars.com> and <fdnyfirefighters.com> domain names.

 

Unlike the <fdny.com> website which has and continues to offer merchandise covered by the FDNY mark, the <fdnycalendars.com> domain name is primarily being used to sell paper calendars. The calendars persumably depict FDNY-related scenes and themes. Complainant’s registered mark does not appear to include or extend to “calendars.” Complainant has not plead that “calendars” are within the scope of the primary mark holder’s common law rights. Complainant’s federal registration has not been shown to cover calendars.[1] The fact that Complaint may license “official calendars” fails to evidence that Complainant has actual intellectual property rights in the licensed material. Similarly the existence of a licensed calendar (or other licensed goods for that matter), without more, does not disclose the particular nature (trademark, copyright, trade secret, or patent) of the particular intellectual property subject to the license.

 

Complainant fails to proffer evidence to demonstrate that the FDNY mark is “famous” under the Lanham Act such that it is entitled to protection and rights extending beyond the classes of goods for which the mark is actually used in commerce.[2] This Panel may not take judicial notice that Complainant’s mark is “famous.” This special category of trademarks was reserved for a select class of marks with such powerful consumer associations that even non-competing uses could impinge on their value. A party advocating that its mark is famous must produce evidence in support thereof. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (U.S. App. 1999). The record in this case does allow the Panel to conclude that Complainant’s mark is famous.

 

Additionally, this Panel sees merit in the finding in Koninklijke Philips Electronics N.V. v. Cun Siang Wang, D2000-1778 (WIPO Mar. 15, 2001) that “a trader in genuine branded goods can have a legitimate interest in using a domain name incorporating the brand name for a website promoting and selling the branded goods, provided that the trader does not use the domain name so as to cause confusion, for example by indicating that the website is approved by the brand owner.” Here, Respondent is selling licensed merchandise, which are most appropriately described as FDNY Calendars.

 

For the above reasons the Panel finds that Respondent has rights and interest in the <fdnycalendars.com> domain name.

 

Regarding the <fdnyfirefighters.com> domain name, it is undisputed that Respondent is a Fire Department of the City of New York Firefighter/Fireman. He thus may be considered to be commonly known as a representative member of the class of FDNY Firefighters. Perhaps, more significantly, the current website at <fdnyfirefighters.com> currently supports noncommercial advocacy for a memorial honoring firefighters murdered in the 9-11 attack, falls under Policy paragraph 4(c)(iii).

 

The current <fdnyfirefighters.com> website, as it appears as a facsimile in Complainant Exhibit 16, and as it is currently found at <fdnyfirefighters.com>, advocates for the non-profit “9-11 Fallen Heroes Memorial.” The Panel sees no commercial purpose in the website; there are no advertisements on the site, and no products may be ordered from the site which benefit Respondent. The site also promotes political speech to the extent that it includes a mechanism to petition New York Gov. Pataki with regard to the memorial. The website does not appear to be a sham, nor is there any evidence in the record that it is. Furthermore, there is nothing in the record or apparent upon review of the <fdnyfirefighters.com> website which suggests that the purpose or affect of the website denigrates Complainant’s mark or suggests the mark holder’s sponsorship.

 

 

That the <fdnyfirefighters.com> website may have been created after Respondent was notified of Complainant’s claims is not dispositive of the Panel’s conclusion. Policy paragraph 4(c)(iii)’s language --“you are making a legitimate noncommercial or fair use”-- is not specific to a particular point in time. Policy paragraph 4(c)(iii) is satisfied if Respondent makes legitimate noncommercial or fair use of the domain name after registration but prior to the time a Complaint was filed. See Salomon Smith Barney Inc. v. Salomon Internet Services. (D2000-0668, September 4, 2000). Indeed, from a policy prospective, domain name holders should be encouraged to modify existing websites to attempt to cure legal problems of which they are made aware.

 

Therefore, Respondent has legitimate rights and interest in the <fdnyfirefighters.com> domain name.

 

Complainant argues that Respondent’s failure to use the <fdnyfiredepartment.com>, <4fdny.com>, <fdnyfireman.com> and <fdnyfiremen.com> domain names is evidence that Respondent lacks rights or legitimate interests in these domain names. The Panel agrees with regard to <fdnyfiredepartment.com> and <4fdny.com>, but disagrees as to the latter two domain names.

 

As to <fdnyfiredepartment.com>, there is no evidence to suggest that Respondent is or ever was known as “FDNY Fire Department.” Similarly, Respondent appears to be without rights or interest in <4fdny.com>, which is a merely noisy but readable version of <fdny.com>. Additionally, there is no mention of this domain name in the Response.

 

While Respondent is not commonly know as FDNY, he is undeniably a FDNY Fireman and member of the class—FDNY Firemen. There has been no showing that either <fdnyfireman.com> or <fdnyfiremen.com> will mislead or confuse the public into believing they are sponsored by the Complainant. Nor is there any evidentiary showing that leads to a conclusion that Complainant is exclusively entitled to those descriptive domain names. Therefore, Respondent has legitimate rights and interest in <fdnyfireman.com> and <fdnyfiremen.com>.

 

Registration and Use in Bad Faith

 

To prevail in a UDRP dispute a Complainant must satisfy all three prongs of Paragraph 4(a) of the Policy. The Panel finds above that Respondent has legitimate rights and interest in <fdnycalendars.com>, <fdnyfirefighters.com>, <fdnyfireman.com> and <fdnyfiremen.com> under Policy paragraph 4(a)(ii). Therefore, the Panel will only consider the domain names <fdny.com>, <4fdny.com> and <fdnyfiredepartment> concerning registration and use in bad faith under Paragraph 4(a)(iii) of the Policy.

 

Paragraph 4(a)(iii) necessitates that if a domain is to transfer from a Respondent, the at-issue domain name must have been registered and is being used in bad faith. As a firefighter with the New York Fire Department, Respondent had actual knowledge of his employer’s FDNY mark when he registered the disputed domain names. See generally, 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 Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where Respondent was employed by Complainant’s business, was fully aware of the name of her employer, and made no use of the infringing domain name).

 

To the extent that Respondent was unclear regarding the pertinent legal implications flowing from the FDNY mark, Respondent could have and should have made inquiry to his employer and/or consulted legal counsel before proceeding. As discussed elsewhere herein, Respondent does not have a right to use the FDNY mark unless specifically authorized to do so. Although Respondent’s trademark search tends to mitigate a finding of bad faith, it appears likely that the search which Respondent claims to have made was merely a “direct hit” search of the federal registry. In light of the nature of the close relationship between Respondent and the mark holder, the notoriety of the mark in Respondent’s local, his purchase of the <fdny.com> domain name in the secondary market for an amount impliedly in excess of that normally charged, and Respondent’s substantial investment in developing a commercial website at <fdny.com>, good faith registration required something more than such a cursory investigation into the rights of Complainant. The failure of Respondent to make any significant investigation indicates bad faith in registering the domain name. The subsequent registrations of the substantially similar domain names, <4fdny.com> and <fdnyfiredepartment.com>, are understood as part of a common scheme regarding Respondent’s business at <fdny.com>, thus they were not registered in good faith as well.

 

As mentioned above, a domain must have been registered and used in bad faith to satisfy Policy paragraph 4(a)(iii). Subsequent to receiving the several letters from Complainant, Respondent should have again sought the advice of counsel concerning his employer’s marks. But Respondent failed to substantively reply to Complainant’s claims. Not doing so evidences a lack of concern for the rights of Complainant and thereby indicates bad faith in the continued use of the <fdny.com> domain name as a commercial website reference.

 

Neither the <4fdny.com> nor <fdnyfiredepartment.com> domain names have been used by Respondent to reference an Internet website, mail service or other online presence. Nevertheless, “paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.” Telstra Corp. Ltd. v. Nuclear Marshmallows D2000-0003 (WIPO Feb. 18, 2000).

 

In the instant case, Respondent registered several domain names incorporating Complainant’s mark. Complainant urges that such conduct falls under paragraph 4(b)(ii) of the Policy and constitutes evidence of a pattern whereby Respondent registered domain names to prevent Complainant from registering or using such domain names. See Smoky Mountain Knife Works v. Carpenter, AF-230ab (eResolution July 3, 2000), citing Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 49 F.Supp.2d 496 (E.D. Va. 1999) (holding that “such a pattern of systematically registering multiple variants of Complainant’s trademark is a paradigmatic example of bad-faith registrations intended to foreclose Complainant from reflecting the mark in a corresponding domain name.”). Respondent has not rebutted Complainant’s contention. The Panel thus finds the circumstances described by Policy paragraph 4(b)(ii) are present. Policy paragraph 4(b) declares that the finding of such circumstances “shall be evidence of registration and use of a domain name in bad faith.” Therefore the Panel concludes that the domain names <4fdny.com> and <fdnyfiredepartment.com> are both registered and being used in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy as to only some of the at-issue domain names, the Panel concludes that relief shall be granted in part and denied in part.

 

Accordingly, it is Ordered that the <fdny.com>, <fdnyfiredepartment.com> and <4fdny.com> domain names be transferred from Respondent to Complainant; and the <fdnycalendars.com>, <fdnyfirefighters.com>, <fdnyfireman.com> and <fdnyfiremen.com> domain names shall remain status quo.

 

 

 

 

Paul M. DeCicco, Panelist
Dated: January 5, 2004

 

 

 

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page