The Rectory School v. LeeAnn LeClerc
a/k/a LeeAnn Riva d/b/a LeClerc
Claim
Number: FA0404000250829
Complainant is The Rectory School (“Complainant”),
represented by Elizabeth A. Alquist, of Day, Berry & Howard LLP,
CityPlace, Hartford, CT 06103.
Respondent is LeeAnn LeClerc a/k/a LeeAnn Riva d/b/a LeClerc (“Respondent”), P.O. Box 44,
Grosvenordale, CT 06246.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <therectoryschool.net> and <therectoryschool.com>
registered with Key-Systems Gmbh.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 7, 2004; the Forum received a hard copy of the
Complaint on April 12, 2004.
On
April 14, 2004, Key-Systems Gmbh confirmed by e-mail to the Forum that the
domain names <therectoryschool.net> and <therectoryschool.com>
are registered with Key-Systems Gmbh and that Respondent is the current
registrant of the names. Key-Systems Gmbh has verified that Respondent is bound
by the Key-Systems Gmbh 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 20, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 10, 2004 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@therectoryschool.net and
postmaster@therectoryschool.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 24, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Sandra Franklin 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <therectoryschool.net>
and <therectoryschool.com> domain names are identical to
Complainant’s THE RECTORY SCHOOL mark.
2. Respondent does not have any rights or
legitimate interests in the <therectoryschool.net> and <therectoryschool.com>
domain names.
3. Respondent registered and used the <therectoryschool.net>
and <therectoryschool.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
Rectory School, is an independent boy’s junior high boarding school and coed
day school. Complainant has operated
under THE RECTORY SCHOOL mark since 1920.
Complainant has spent millions of dollars promoting its mark. In the past 10 years, Complainant has spent
over $900,000 marketing its name, including advertising, catalogues, travel,
and holding receptions to recruit and retain its student body.
Respondent, LeeAnn LeClerc a/k/a LeeAnn Riva d/b/a
LeClerc, registered the <therectoryschool.net> and <therectoryschool.com>
domain names on March 23, 2004 and March 3, 2004. Respondent is using the disputed domain names as a bulletin board
service where guests are invited to read and post information about the school. The categories include “Rectory truth or
Dare: get the REAL FACTS they dont [sic] want you to know!” and “The Water
Cooler: here you can talk about almost anything you want ANONYMOUSLY with no
repercussions.” The site makes
reference to faculty members and students, including statements about sexual preference,
child abuse, drug use, infidelity, child pornography, and beastiality. Some of the comments employ racist language.
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.
Generally, a
party does not need to register its mark with the U.S. Patent and Trademark
Office to establish rights under the Policy ¶ 4(a)(i). A party can establish common law rights and
have standing under the Policy. 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 Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) holding that ICANN Policy ¶ 4(a)(i) does not
require Complainant to demonstrate ‘exclusive rights’ but only that Complainant
has a bona fide basis for making the Complaint in the first place.
Complainant has
established rights in THE RECTORY SCHOOL mark under Policy ¶ 4(a)(i). Complainant’s evidence includes adverting
materials and expenditures. Complainant
asserts that it has spent millions of dollars promoting its mark, including
over $900,000 in the last 10 years to market its name through advertising,
catalogues, travel and holding receptions to recruit and retain its student
body. The Panel finds that
Complainant’s evidence of its use of its THE RECTORY SCHOOL mark establishes
rights in the mark. 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 Fishtech v. Rossiter,
FA 92976 (Nat. Arb. Forum Mar. 10, 2000) finding that Complainant has common
law rights in the mark FISHTECH which it has used since 1982.
Respondent’s <therectoryschool.net>
and <therectoryschool.com> domain names are identical to
Complainant’s mark. The only difference
is the addition of the “.net” and “.com” generic top-level domains (“gTLDs”),
which do not significantly distinguish the domain names from the mark. See
Little Six, Inc. v. Domain For Sale,
FA 96967 (Nat. Arb. Forum Apr. 30, 2001) finding that <mysticlake.net> is
plainly identical to Complainant’s MYSTIC LAKE trademark and service mark; see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) finding that the <bodybyvictoria.com> domain name is identical to
Complainant’s BODY BY VICTORIA mark.
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not submitted a Response. Therefore,
the Panel accepts all reasonable assertions as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence; see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint”).
Respondent is
wholly appropriating Complainant’s mark to provide a forum for comments about
Complainant. This is not a bona fide
offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use of the domain name, pursuant to Policy ¶
4(c)(iii). See Monty & Pat
Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (finding that “[T]he
Panel does not dispute Respondent’s right to establish and maintain a website
critical of (the Complainant) . . . . However, the panel does not consider that
this gives Respondent the right to identify itself as Complainant”); see also Direct Line Group Ltd. v. Purge I.T., D2000-0583, (WIPO Aug. 13,
2000) finding that Respondent’s use of Complainant’s name and adoption of it in
a domain name is inherently likely to lead some people to believe that
Complainant is connected with Respondent or the site.
Although
Respondent’s e-mail identifies it as “rectoryschools@yahoo.com” in the WHOIS
domain name registration information, the Panel finds that this does not
establish that Respondent is commonly known by the domain names, pursuant to
Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita,
FA 155461 (Nat. Arb. Forum June 17, 2003)
finding that Respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to its registration of the disputed domain
name”; see also Web
House USA, Inc. v. eDollarShop Hostmaster, FA 155180 (Nat. Arb. Forum June 10, 2003) finding that
Respondent was not “commonly known by” the <edollarshop.com>
domain name, despite naming itself “eDollarShop,” because Respondent’s website
was almost identical to Complainant’s “first in use” website and infringed on
Complainant’s marks.
The
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is
appropriating Complainant’s mark to create a forum where Respondent and
participants comment on and criticize Complainant. The Panel finds that Respondent’s appropriation of a domain name
identical to Complainant’s mark to criticize Complainant is evidence of bad
faith registration and use, pursuant to Policy ¶ 4(a)(iii). See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) stating that although Respondent’s complaint
website did not compete with Complainant or earn commercial gain, Respondent’s
appropriation of Complainant’s trademark with a view to cause “damage and
disruption to [Complainant] cannot be right, still less where the use of the
Domain Name will trick internet users intending to visit the trademark owner’s
site into visiting the registrant’s site”, and holding that the disputed domain
name was registered in bad faith; see also
Mission KwaSizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) finding that Respondent registered the domain
names <kwasizabantu.com>, <kwasizabantu.org>, and
<kwasizabantu.net> in bad faith where Respondent published negative
comments regarding Complainant’s organization on the confusingly similar
website.
In
addition, because comments on Respondent’s websites refer to Complainant, and
invite discussion about Complainant, the Panel finds that Respondent had actual
notice of Complainant’s rights in the mark.
The Panel finds that, because Respondent had notice of Complainant’s
rights in THE RECTORY SCHOOL mark, Respondent’s registration and use of the <therectoryschool.net>
and <therectoryschool.com> domain names amounts to bad faith
registration and use, pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v.
Suger, D2002-0187 (WIPO Apr. 24, 2002) finding that because the link
between Complainant’s mark and the content advertised on Respondent’s website
was obvious, Respondent “must have known about the Complainant’s mark when it
registered the subject domain name”; see also G.D. Searle & Co. v. Fred
Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“It can be inferred
that Respondent had knowledge of Complainant’s rights in the CELEBREX mark
because Respondent is using the CELEBREX mark as a means to sell prescription
drugs, including Complainant’s CELEBREX drug”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) holding that “there is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”.
The
Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <therectoryschool.net> and <therectoryschool.com>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: June 7, 2004
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