The City University of New York v. Domains For Sale Inc.
Claim Number: FA0206000114477
Complainant is The City University of New York, New York, NY (“Complainant”) represented by Jane E. Davis. Respondent is Domains For Sale, Inc., New York, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johnjaycollege.com>, registered with Tucows, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 5, 2002; the Forum received a hard copy of the Complaint on June 6, 2002.
On June 6, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <johnjaycollege.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 June 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 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 July 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <johnjaycollege.com> domain name is identical to Complainant’s common law JOHN JAY COLLEGE mark.
Respondent has no rights or legitimate interests in the <johnjaycollege.com> domain name.
Respondent registered and used the <johnjaycollege.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant is an institution for higher learning and is the largest urban university in the United States. John Jay College of Criminal Justice is a senior college of Complainant, which was founded in 1964 and has been operating under the JOHN JAY COLLEGE moniker since 1966.
Complainant has established itself as a leader in criminal justice education, training and research. Complainant’s JOHN JAY COLLEGE offers undergraduate majors in police studies, fire science, forensic science, forensic psychology, correctional studies, deviant behavior and social control, legal studies, security management, criminal justice, criminal justice administration, computer information systems, criminology, government, judicial studies, and public administration. Graduate programs are offered for criminal justice, forensic science and forensic psychology, among others.
Respondent registered the <johnjaycollege.com> domain name on March 7, 2002 and links the domain name to a website located at <abortionismurder.org>. Complainant’s investigation revealed that the registrant of the domain name is John Barry, who is a notorious cybersquatter. John Barry has a history of registering domain names, such as <reedcollege.com>, and linking them to <abortionismurder.org>.
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 rights in the JOHN JAY COLLEGE mark by continually using the mark in connection with services offered in education and research since 1966. Through the mark’s association with Complainant’s services and longstanding continuous use, the mark has acquired secondary meaning as it identifies Complainant as the source. Therefore, Complainant holds rights in the JOHN JAY COLLEGE mark sufficient to bring a claim. 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 the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the UDRP to “unregistered trademarks and service marks”).
Respondent’s <johnjaycollege.com> domain name contains Complainant’s entire JOHN JAY COLLEGE mark with the absence of the spaces and addition of the generic top-level domain “.com.” Since spaces are impermissible in domain names and generic top-level domains are required in domain names, Respondent’s domain name is identical to Complainant’s mark. 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”).
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 <johnjaycollege.com> domain name and Respondent’s failure to respond, it may be presumed that Respondent has no such rights in the 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, since Respondent did not submit a Response, all reasonable inferences may be drawn 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 <johnjaycollege.com> domain name as a link to <abortionismurder.org>, which is a website that contains graphic pictures of aborted fetuses. Respondent’s use of the domain name in connection to the anti-abortion website will likely tarnish the goodwill associated with Complainant’s JOHN JAY COLLEGE mark. Respondent’s use of Complainant’s mark for its own unrelated political agenda does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a fair use pursuant to Policy ¶ 4(c)(iii). 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, Respondent has not demonstrated a right or legitimate interest in the disputed domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Complainant has used the JOHN JAY COLLEGE mark for a long time prior to Respondent’s registration of the <johnjaycollege.com> domain name. Respondent has no authorization from Complainant to use Complainant’s JOHN JAY COLLEGE mark for any reason. Respondent is not commonly known by the <johnjaycollege.com> domain name or the JOHN JAY COLLEGE moniker. Complainant’s investigation uncovered Respondent’s identity as being John Barry, who is well-known for his activities of registering domain names and linking them to the <abortionismurder.org> website. Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); 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
The determination of bad faith is not limited to the circumstances listed in Policy ¶ 4(b). The Panel may look at the totality of circumstances to determine whether or not Respondent registered and used the disputed domain name in bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Respondent’s tarnishing use of the Complainant’s JOHN JAY COLLEGE mark in the disputed domain name to advance its own political agenda without Complainant’s approval represents bad faith registration and use of the domain name pursuant to 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).
As previously stated, Respondent has engaged in a pattern of behavior of registering well-known marks and linking the domain names to the <abortionismurder.org> website. This behavior evidences bad faith, as Respondent has now done the same with Complainant’s established JOHN JAY COLLEGE mark. Therefore, Respondent registered and used the <johnjaycollege.com> domain name in bad faith under 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).
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 <johnjaycollege.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 24, 2002