The Field Museum of Natural History v. John Barry d/b/a Buy This Domain
Claim Number: FA0205000114354
Complainant is The Field Museum of Natural History, Chicago, IL (“Complainant”) represented by Sana Hakim, of Bell, Boyd & Lloyd LLC. Respondent is John Barry d/b/a Buy This Domain, Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chicagofieldmuseum.com>, registered with Enom, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 20, 2002; the Forum received a hard copy of the Complaint on May 23, 2002.
On May 22, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain name <chicagofieldmuseum.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 May 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 13, 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 June 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
The <chicagofieldmuseum.com> domain name is confusingly similar to Complainant’s common law mark in FIELD MUSEUM.
Respondent has no rights or legitimate interests in the <chicagofieldmuseum.com> domain name.
Respondent registered and used the <chicagofieldmuseum.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant has used the marks THE FIELD MUSEUM and FIELD MUSUEM since as early as 1905 for museum, educational, research and scholarship services. Complainant is located in Chicago, Illinois. Complainant’s THE FIELD MUSEUM and FIELD MUSEUM common law marks have become synonymous with the Field Museum of Natural History of Chicago, Illinois.
Respondent registered the <chicagofieldmuseum.com> domain name on February 18, 2002. Respondent is using the <chicagofieldmuseum.com> domain name as a link to a website at <abortionismurder.org>. In correspondence with Complainant, Respondent offered to sell the domain name for $500.
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 common law rights to the FIELD MUSEUM mark through continuous use in commerce since 1905. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark FISHTECH, which it has used since 1982).
Respondent uses Complainant’s entire FIELD MUSEUM mark with the addition of the geographic identifier “Chicago” in its domain name. The addition of a geographic identifier to Complainant’s mark does not create a distinct domain name. Furthermore, the geographic identifier “Chicago” is strongly associated and often used in connection with Complainant’s FIELD MUSEUM mark, as Complainant’s museum is located in Chicago, Illinois. Therefore, Respondent’s <chicagofieldmuseum.com> is confusingly similar to Complainant’s FIELD MUSEUM mark. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to complainant’s CMGI mark); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also Am. Online, Inc. v. Asian On-Line This Domain For Sale, FA 94636 (Nat. Arb. Forum May 17, 2000) (finding that the domain names, which consist of “ao-l” and geographic location are confusingly similar to Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name and Respondent’s failure to respond, the Panel may presume Respondent has no such rights or 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). Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant. See 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 uses the <chicagofieldmuseum.com> domain name to link to a website at <abortionismurder.org>. This website contains anti-abortion materials with graphic pictures of fetuses. Respondent has no connection or rights in any mark related to the disputed domain name. Hence, it can be inferred that Respondent chose the disputed domain name to divert Internet users seeking Complainant’s site. Such a use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Therefore, Respondent has no rights or legitimate interests in the <chicagofieldmuseum.com> domain name. 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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).
Respondent is not commonly known as CHICAGO FIELD MUSEUM or <chicagofieldmuseum.com>; Respondent is known to this Panel as John Barry or alternatively, Buy This Domain. Furthermore, Respondent is not a licensee of Complainant and is not authorized to use Complainant’s FIELD MUSEUM mark. Therefore, Respondent has not met the burden of Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent listed its address on the WHOIS registration page as email@example.com and provided “Buy This Domain” for contact information. In correspondence with Complainant, Respondent offered to sell the <chicagofieldmuseum.com> domain name for $500, an amount in excess of Respondent’s out-of-pocket costs directly related to the domain name. This behavior evidences bad faith registration and use pursuant to Policy ¶ 4(b)(i). 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 Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).
Since Respondent has no affiliation with Complainant and no rights to use Complainant’s FIELD MUSEUM mark, it can be inferred that Respondent chose to use the <chicagofieldmuseum.com> domain name to attract and divert Internet users to the <abortionismurder.org> website. Respondent’s intentional use of Complainant’s mark in association with graphic and/or offensive images constitutes bad faith under Policy ¶ 4(a)(iii). See 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).
Furthermore, Respondent has a history of registering well-known marks and linking the domain names to <abortionismurder.org> (e.g., <searsdepartmentstore.com> and <henryfordhospital.com>). See Sears, Roebuck & Co. v. Barry, FA 105210 (Nat. Arb. Forum Apr. 1, 2002); see also Henry Ford Health Sys. v. Domain For Sale, Inc., FA 105976 (Nat. Arb. Forum Apr. 30, 2002). Thus, it can be inferred that Respondent knew of Complainant’s rights in the FIELD MUSEUM mark when it registered the <chicagofieldmuseum.com> domain name. Therefore, Respondent’s registration of the domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii). See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <chicagofieldmuseum.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 28, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page