Board of Cooperative Educational Services
of Nassau County v. Modern Limited - Cayman Web Development c/o Web Master
Claim
Number: FA0501000400119
Complainant is Board of Cooperative Educational Services of
Nassau County (“Complainant”), represented by David R. Kay, of Brauner, Baron, Rosenzweig and Klein, LLP, 61 Broadway - 18th Floor, New York,
NY 10006. Respondent is Modern Limited - Cayman Web Development c/o Web Master (“Respondent”), PO Box 908, George Town, Grand Cayman
KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nassauboces.com>, registered with Address
Creation.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 18, 2005.
On
January 20, 2005, Address Creation confirmed by e-mail to the National
Arbitration Forum that the domain name <nassauboces.com> is
registered with Address Creation and that Respondent is the current registrant
of the name. Address Creation has verified that Respondent is bound by the Address
Creation 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
January 31, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 21, 2005 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@nassauboces.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 2, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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. Respondent’s <nassauboces.com>
domain name is identical to Complainant’s NASSAU BOCES mark.
2. Respondent does not have any rights or
legitimate interests in the <nassauboces.com> domain name.
3. Respondent registered and used the <nassauboces.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
Board of Cooperative Educational Services (“BOCES”) within Nassau County, NY,
which was established in 1967 pursuant to Section 1950 of New York Education
Law. Nassau County is one of the
largest suburban counties in New York.
Since its
establishment, Complainant has used the NASSAU BOCES mark in connection with
general instructional programs, alternative school services, career education,
special education, and management and instructional support services.
Complainant
provides its educational programs and services to all of its constituent school
districts, which are Nassau County’s 56 public school districts that together
have more than 300 schools and over 200,000 students. Complainant has a full and part-time staff of over 6,000, and
owns and/or rents over 1.35 million square feet of office and classroom space
at over 30 facilities.
Complainant
owned the registration for the <nassauboces.com> domain name until
January 2004, when the registration lapsed and Complainant failed to
re-register the domain name.
Respondent
registered the <nassauboces.com> domain name on April 11,
2004. Respondent is using the domain
name to host an online directory website that contains a variety of links to
educational resources, special education, schools, financial services, as well
as career services.
In the past,
numerous panels have found Respondent to be in violation of the Policy, and
have ordered Respondent to transfer multiple domain names. E.g. Keffer Dodge, Inc. v. Modern
Ltd.-Cayman Web Dev., FA 311382 (Nat. Arb. Forum Sept. 20, 2004); SiteComp, Inc. v.
Modern Ltd.-Cayman Web Dev., FA 280552
(Nat. Arb. Forum July 12, 2004); WeddingChannel.com Inc. v. Modern
Ltd.-Cayman Web Dev., FA 271153 (Nat. Arb. Forum Sept. 9, 2004); Shinders, Inc. v.
Modern Ltd. Cayman Web Dev., FA 218903 (Nat. Arb. Forum Jan. 29, 2004).
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.
Unregistered
marks are afforded protection under the Policy provided they are distinctive,
either inherently or through a showing of secondary meaning associated with the
mark. In the instant case,
Complainant’s longstanding use of the NASSAU BOCES mark in addition to the vast
number of customers that utilize Complainant’s services offered under the mark,
is sufficient for the Panel to conclude that Complainant has established
secondary meaning associated with the NASSAU BOCES mark. Governmental agents are just as capable of
maintaining trademark rights as private entities. See Restatement (Third) of Unfair Competition § 13, pp.
37-38, and Comment a (Tent. Draft No. 2, Mar. 23, 1990) (An identifying
mark is distinctive and capable of being protected if it either (1) is
inherently distinctive or (2) has acquired distinctiveness through
secondary meaning.); see also Ahmanson
Land Co. v. Curtis, D2000-0859 (WIPO Dec. 4, 2000)
(“In finding secondary meaning, courts consider factors such as the owner's
long, continued use of the mark and its widespread public recognition, the size
of the company, the number of customers, advertising expenditures, and
unsolicited media coverage of the services and the mark.”); see also 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 Ariz. State Parks Bd. v. Pink Banana Adventures,
FA 95084 (Nat. Arb. Forum Sept. 25, 2000) (finding that the Arizona State Parks
Board had trademark rights in the KARTCHNER CAVERNS mark); see also State Bar
of Cal. v. eWebNation.com, Inc., FA 97137 (Nat. Arb. Forum June 14, 2001)
(finding that The State Bar of California, a public corporation,
established rights in the THE STATE BAR OF CALIFORNIA mark as the result of the
mark’s acquired distinctiveness).
The Panel finds
that the <nassauboces.com> domain name is identical to
Complainant’s NASSAU BOCES mark because the entire mark is incorporated in the
name without modification, and the addition of the top-level domain “.com” is
immaterial under the Policy. 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); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level
domain is without legal significance).
Complainant
has established Policy ¶ 4(a)(i).
The Panel construes the fact of Respondent’s failure to
respond to the Complaint as an implicit admission that Respondent lacks rights
and legitimate interests in the disputed domain name. See
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that Respondents’ failure to respond can be construed as an admission that they
have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”)
Without the benefit of a response, the Panel
may accept all reasonable allegations set forth in the Complaint, unless
clearly contradicted by the evidence.
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 Vert. Solutions Mgmt., Inc. v.
Webnet-marketing, Inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to
respond allows all reasonable inferences of fact in the allegations of the
Complaint to be deemed true).
Using a domain name that is identical or
confusingly similar to a third-party mark to market goods or services that
compete with those offered in connection with the third-party mark has been
consistently found not to be a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the
Policy, nor a legitimate noncommercial or fair use pursuant to paragraph
4(c)(iii) of the Policy. In the instant
case, Respondent is using a domain name that is identical to Complainant’s
mark. Complainant’s mark is used in
connection with a variety of educational related services, including special
education services. Respondent is using
the domain name to market special education services, in addition to other
general educational services.
Therefore, the Panel concludes that Respondent is not using the disputed
domain name in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the
Policy. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Clear Channel Communications, Inc.
v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that
Respondent, as a competitor of Complainant, had no rights or legitimate
interests in a domain name that utilized Complainant’s mark for its competing
website); see also Chip Merch.,
Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the
disputed domain names were confusingly similar to Complainant’s mark and that
Respondent’s use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods).
Nothing in the record indicates that
Respondent is commonly known by the <nassauboces.com> domain name pursuant to paragraph
4(c)(ii) of the Policy. See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS
information, and its failure to imply that Respondent is commonly known by the
disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does
not apply); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Complainant has
established Policy ¶ 4(a)(ii).
Respondent has a
history of registering domain names in violation of the Policy. The fact that Respondent snapped up the
disputed domain name in the instant case, and proceeded to market services that
compete with those offered by Complainant under its NASSAU BOCES mark is
evidence that Respondent registered the domain name to prevent Complainant from
reflecting its mark in a corresponding domain name. Such action is evidence of bad faith pursuant to paragraph
4(b)(ii) of the Policy. See Australian Stock Exch. v. Cmty. Internet,
D2000-1384 (WIPO Nov. 30, 2000) (finding
bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple
infringing domain names containing the trademarks or service marks of
other widely known businesses); see also
Pep Boys Manny, Moe, &
Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding
that, where Respondent registered many domain names, held them hostage, and
prevented the owners from using them, the behavior constituted bad faith).
In conjunction
with the foregoing, the Panel also finds that Respondent used the disputed
domain name to intentionally attract Internet users to its website for
commercial gain by creating a likelihood of confusion with Complainant’s
mark. Such action is evidence of bad
faith pursuant to paragraph 4(b)(iv) of the Policy. See Am. Online, Inc.
v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent
intentionally attempted to attract Internet users to his website for commercial
gain by creating a likelihood of confusion with Complainant’s mark and offering
the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software
Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under
Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to
resolve to a website offering similar services as Complainant into the same
market); see also TM Acquisition
Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad
faith where Respondent used the domain name, for commercial gain, to
intentionally attract users to a direct competitor of Complainant).
Complainant has
established Policy ¶ 4(a)(iii).
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 <nassauboces.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 16, 2005
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