The Reed Institute v. Domain For Sale, Inc.
Claim Number: FA0204000109043
Complainant is The Reed Insitute, Portland, OR (“Complainant”) represented by Gary H. Lau, of Stoel Rives LLP. Respondent is Domain For Sale Inc., Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reedcollege.com>, registered with eNom.
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.
James Alan Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 3, 2002; the Forum received a hard copy of the Complaint on April 4, 2002.
On April 5, 2002, eNom confirmed by e-mail to the Forum that the domain name <reedcollege.com> is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 29, 2002 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 firstname.lastname@example.org 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 9, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James Alan Crary 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 name be transferred from Respondent to Complainant.
1. Since it has been held that the generic top-level domain such as “.com” does not affect the determination of identical or confusingly similar, Complainant contends that <reedcollege.com> is identical to Complainant’s REED COLLEGE mark.
2. Respondent is not licensed to use Complainant’s REED COLLEGE mark. Respondent has never been commonly known as REED COLLEGE. Furthermore, Respondent has redirected Internet users to an anti-abortion website that has no connection with Respondent. Finally, Respondent has offered to sell the disputed domain name to Complainant. Therefore, Respondent has no rights or legitimate interests in <reedcollege.com>.
3. Respondent’s name alone “Domain For Sale Inc.” is evidence that Respondent has registered the disputed domain name in bad faith. Second, Respondent has prevented Complainant from reflecting its mark in the corresponding domain name. Furthermore, Respondent’s offer to sell the disputed domain to Complainant for $985 is further evidence of bad faith registration. Finally, by linking the disputed domain name to a website that offers offensive images, Respondent has used the disputed domain name in bad faith.
No Response was submitted.
Since 1911, Complainant has used the REED COLLEGE mark to identify Complainant’s educational services, namely, providing instruction and training at the undergraduate and graduate levels. Complainant filed a trademark application for REED COLLEGE with the United States Patent and Trademark Office on March 12, 2002. Complainant has expended millions of dollars in marketing its educational services, and has established a reputation as a leading educational institution that regularly receives national attention. Recently The Rhodes Scholarship Trust recognized Complainant for having produced 31 Rhodes Scholars, a number that has been surpassed by only one other liberal arts college in the United States.
Respondent registered <reedcollege.com> on December 23, 2001. Respondent has linked the disputed domain name to a graphic anti-abortion website, <abortionismurder.com>. The operator of the <abortionismurder.com> website has informed Complainant that the operator has no connection with Respondent. The WhoIs page lists the registrant of the disputed domain name as “Domain For Sale inc.” and “John Barry.” In response to a cease and desist request, Respondent informed Complainant that a way to avoid further bad publicity for its school was to purchase the <reedcollege.com> registration from Respondent for $985.
Respondent has also registered the domain names of the following academic institutions: George Washington University <georgewashingtonuniversity.com>, John Jay College of Criminal Justice <johnjaycollege.com>, Bloomsburg University <bloomsburguniversity.com>, and The Culinary Institute of America <culinaryinstituteofamerica.com>.
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 the 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 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; and
(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 established its rights to the REED COLLEGE mark through continuous use since 1911. The disputed domain name <reedcollege.com> is identical to Complainant’s mark.
Because it is not permissible to include spaces in a domain name, <reedcollege.com> and REED COLLEGE are identical. 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 Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997) aff’d 152 F3d 920 (2nd Cir. 1998) cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical).
The generic top-level domain “.com” does not defeat Complainant’s claim that the disputed domain name and Complainant’s mark are identical. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com’”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has not filed a Response in this dispute. Therefore, the Panel infers that Respondent has no rights or legitimate interests in <reedcollege.com>. 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). Since a Response was not filed, the Panel presumes that all allegations in the Complaint are true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent has linked a domain name that is identical to Complainant’s mark to a website that offers offensive images promoting an anti-abortion political stance. There is evidence presented that Respondent has no connection with the “Abortion is Murder” website. Furthermore, Respondent has offered to sell the disputed domain name registration to Complainant to alleviate any further bad publicity generated from the website associated with the dispute domain name. This “hold ‘em up game” can hardly be considered a bona fide offering in connection with the disputed domain name pursuant to Policy ¶ 4(c)(i). See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that, by linking the confusingly similar domain name to an “Abortion is Murder” website and subsequently asking for compensation beyond out-of-pocket costs to transfer the domain name, Respondent has not demonstrated a right or legitimate interest in the disputed domain name); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering material that is calculated to mislead consumers and tarnish the Complainant’s mark).
The only evidence presented describes Respondent as “Domain For Sale inc.” or “John Barry.” There is no evidence that Respondent is commonly known as <reedcollege.com>. Thus, Respondent has not satisfied Policy ¶ 4(c)(ii). See 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).
Respondent has registered a domain name that is identical to Complainant’s mark and uses it to redirect Internet users to a website that has no connection with either Respondent or Complainant. This activity by Respondent is not considered a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s name “Domain For Sale Inc.” is evidence that Respondent’s intention when it registered the disputed domain name was to resell it. Thus, Respondent has registered the disputed domain name in bad faith. See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”).
Besides the inference made from Respondent’s “business” name, Respondent has demonstrated its intent to sell the domain name by offering it to Complainant for $985. This evidence makes it clear that Respondent has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the domain names for sale).
By registering a domain name that is identical to Complainant’s mark, Respondent has prevented Complainant from reflecting its mark in the corresponding domain name. Further, Respondent has engaged in similar activity with at least four other institutions of higher learning and has been involved in at least three UDRP proceedings under similar circumstances. See Sears, Roebuck & Co. v. Barry, FA 105210 (Nat. Arb. Forum Apr. 1, 2002) (finding that by linking <searsrobuck.com> and <searsdepartmentstore.com> to <abortionismurder.org>, Respondent had an intent to sell the disputed domains name and thus, registered the disputed domains in bad faith); see also Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith); see also Henry Ford Health System v. Domain For Sale, Inc., FA 105976 (Nat. Arb. Forum Apr. 30, 2002) (finding that, since Respondent has prevented Complainant from reflecting its mark in the disputed domain name and since Respondent has engaged in a pattern of such conduct, Respondent registered <henryfordhospital.com> in bad faith pursuant to Policy ¶ 4(b)(ii)). Thus Respondent has engaged in a pattern of such conduct and therefore, Respondent has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names, which infringe upon others’ famous and registered trademarks); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of conduct where Respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
Finally, Respondent has linked the disputed domain name (which is identical to Complainant’s mark) to a graphic and politically charged website. This use is evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Therefore, Respondent has used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <reedcollege.com> domain name be transferred from Respondent to Complainant.
James Alan Crary, Panelist
Dated: May 13, 2002
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