The Rectory School v. Shannon LeClerc
Claim
Number: FA0507000520459
Complainant is The Rectory School (“Complainant”), represented
by Elizabeth A. Alquist of Day, Berry & Howard LLP,
CityPlace, Hartford, CT 06103.
Respondent is Shannon LeClerc
(“Respondent”), PO Box 44, Grosenordale, CT 06244.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <therectoryschool.org>, registered with Abacus
America Inc d/b/a Names4Ever.
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
submitted a Complaint to the National Arbitration Forum electronically July 19,
2005; the National Arbitration Forum received a hard copy of the Complaint July
22, 2005.
On
July 26, 2005, Abacus America Inc d/b/a Names4Ever confirmed by e-mail to the
National Arbitration Forum that the domain name <therectoryschool.org>
is registered with Abacus America Inc d/b/a Names4Ever and that Respondent is
the current registrant of the name. Abacus
America Inc d/b/a Names4Ever verified that Respondent is bound by the Abacus
America Inc d/b/a Names4Ever registration agreement and thereby has agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
July 26, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 15,
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@therectoryschool.org by e-mail.
Having
received no Response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 22, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Thereafter,
on August 23, 2005, Respondent sent a purported Response by email to the
Forum. The Response was untimely and
not accompanied by Motion or Affidavit.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <therectoryschool.org>, is identical to Complainant’s
THE RECTORY SCHOOL mark.
2. Respondent has no rights to or legitimate
interests in the <therectoryschool.org> domain name.
3. Respondent registered and used the <therectoryschool.org>
domain name in bad faith.
B. Respondent’s late-failed Response did not
raise issues of merit that would suggest that the Panel should consider it.
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 ten years,
Complainant has spent more than $900,000.00 marketing its name through
advertisements, catalogues, travel, and receptions to recruit and retain its
student body.
Respondent registered the <therectoryschool.org>
domain name June 20, 2005.
Respondent is using the disputed domain name 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 child
abuse, drug use, infidelities, racist remarks, sexual relationships with
students, and child and animal pornography.
The Respondent’s
purported Response was not timely and did not raise issues that would suggest
that the Panel should give it weight or consideration.
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 untimely and non-compliant Response, the Panel will 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. The Panel is entitled to accept all
reasonable allegations and inferences set forth in the Complaint as true unless
the evidence is clearly contradictory. See Vertical Solutions Mgmt.,
Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent's failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); 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."); see also 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 panelist); see also UFCW
Int’l Union v. Union Automation,
FA 94665 (Nat. Arb. Forum June 8, 2000) (holding that the untimely response
without a motion or affidavit does not controvert the complainant’s allegations
and evidence and the panel may take all reasonable assertions in the complaint
as true); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (without an
adequate timely filed response, all reasonable inferences of fact in the
allegations of the complaint will be taken as true); see also SuNyx
Surface Nanotechnologies GmbH v. Primmer, D2002-0968 (WIPO Jan. 20, 2003)
(choosing not to consider either the complainant’s and the respondent’s
additional submissions that were received after the stated deadline where
neither set out any new facts or other circumstances that would justify the
late submission).
Paragraph 4(a)
of the Policy requires Complainant to 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 does
not need to have a registered mark with the United States Patent and Trademark
Office to establish rights under Policy ¶ 4(a)(i). A complainant can establish common law rights to gain 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 the complainant to demonstrate ‘exclusive rights’ but only that the
complainant has a bona fide basis for making the complaint in the first
place).
Complainant
established using extrinsic proof in this proceeding that it has rights in the
THE RECTORY SCHOOL mark under Policy ¶ 4(a)(i). Complainant’s evidence includes advertising materials and
expenditures. Complainant asserts that
it has spent millions of dollars promoting its mark, including more than
$900,000. in the last ten years to market its name through advertisements,
catalogues, travel, and receptions held to recruit and retain its student
body. The Panel finds that
Complainant’s evidence of its use of the 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 Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
[KEPPEL BANK] in connection with its banking business, it has acquired rights
under the common law.”).
The disputed
domain name that Respondent registered, <therectoryschool.org>, is
identical to Complainant’s THE RECTORY SCHOOL mark. The only difference is the addition of the generic top-level
domain “.org,” which does not significantly distinguish the domain name from
the mark. See Microsoft Corp. v.
Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain
name <microsoft.org> is identical to the complainant’s mark); see also
Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001)
(finding that the domain name <philips.org> is identical to the
complainant’s PHILIPS mark).
The Panel finds
that Complainant satisfied elements of Policy ¶ 4(a)(i).
Complainant
established that it has rights to and legitimate interests in the mark
contained within the disputed domain name.
Complainant supported these allegations with extrinsic proof in this
proceeding. Complainant alleged that
Respondent has no such rights to or legitimate interests in the <therectoryschool.org>
domain name. Once Complainant makes
a prima facie case in support of its allegations, the burden shifts to
Respondent to prove that it does have rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). Due to
Respondent’s failure to timely respond to the Complaint and Respondent’s
failure to raise issues of merit in the purported Response that would require
that weight or consideration be given to it, the Panel presumes that Respondent
has no rights to or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant asserts that respondent has no rights to
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”); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent does not have rights or legitimate interests is sufficient to
shift the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
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) and it is not a
legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶
4(c)(iii). See Pepsico, Inc. v. Leeds,
FA 117870 (Nat. Arb. Forum Sept. 27, 2002) (“Domain
names . . . per se are neither automatically entitled
to nor excluded from the protections of the First Amendment, and the
appropriate inquiry is one that fully addresses particular circumstances
presented with respect to each domain name.”); see also Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the
respondent’s showing that it “has a right to free speech and a legitimate
interest in criticizing the activities of organizations like the
Complainant . . . is a very different thing from having a right or
legitimate interest in respect of [a domain name that is identical to
Complainant’s mark]”).
Furthermore,
Respondent offered no proof and nothing in the record suggests that Respondent
is commonly known by the <therectoryschool.org> domain name. Respondent did not show either permission or
a license to use Complainant’s mark.
Further, on their face, the papers in the file establish that Respondent
is known as Shannon LeClerc. Thus, Respondent has not established rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the
respondent was not commonly known by the mark and never applied for a license
or permission from the complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent is not commonly known by the disputed domain
name or using the domain name in connection with a legitimate or fair use).
The Panel finds
that Complainant satisfied elements of Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent acted in bad faith in registering and using the domain
name that contains, in its entirety, Complainant’s well-known mark. Respondent is appropriating Complainant’s
mark to create a forum in which 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 the respondent’s
complaint website did not compete with the complainant or earn commercial gain,
the respondent’s appropriation of the 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 the
respondent registered the domain names <kwasizabantu.com>,
<kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the
respondent published negative comments regarding the complainant’s organization
on the confusingly similar website).
Furthermore,
because comments on Respondent’s websites refer to 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.org>
domain name was in bad faith pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”); see
also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb.
Forum Sept. 19, 2002) (“[I]t 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.”).
The
Panel finds that Complainant satisfied elements of 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.org> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 5, 2005
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