Kansas City Kansas Community College v. John Barry d/b/a Domain For Sale Inc.
Claim Number: FA0208000117910
Complainant is Kansas City Kansas Community College, Kansas City, KS (“Complainant”) represented by Deryl W. Wynn. Respondent is John Barry d/b/a Domain For Sale Inc., Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kansascitykansascommunitycollege.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 8, 2002; the Forum received a hard copy of the Complaint on August 12, 2002.
On August 9, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <kansascitykansascommunitycollege.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 August 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 9, 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 September 27, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <kansascitykansascommunitycollege.com> domain name is identical to Complainant’s KANSAS CITY KANSAS COMMUNITY COLLEGE common law mark.
Respondent has no rights or legitimate interests in the <kansascitykansascommunitycollege.com> domain name.
Respondent registered and used the <kansascitykansascommunitycollege.com> domain name in bad faith.
Respondent has failed to submit a Response in this proceeding.
Complainant has provided educational services in the Kansas City, Kansas area under the auspices of the mark KANSAS CITY KANSAS COMMUNITY COLLEGE since 1923. Complainant’s educational mission is to provide life-long learning opportunities to the varied communities of Kansas City regional area.
Complainant’s KANSAS CITY KANSAS COMMUNITY COLLEGE remains committed to its mission by providing, inter alia, the following services:
- transfer education credits, so students can work towards a baccalaureate degree at a
- career education in technical and semi-professional fields;
- general education opportunities that encourage students to “expand their social,
cultural, ethical, and intellectual horizons” and that “provide for personal growth and
- community services available to the students and the surrounding community;
- a learning environment that stresses the skills required for effective learning;
programs to recognize the broad needs of the students, and tailor their education to
aid in achieving their education objective;
- the student support services required to achieve objectives: collaboration with
community agencies and services, “quality advising, counseling, financial aid, child
care, placement services, and special needs’ programs;”
- and, facilities that are “accessible, comfortable, safe, and which promote the teaching
and learning process.”
Respondent registered the <kansascitykansascommunitycollege.com> domain name on February 21, 2002. Complainant’s investigation has revealed that Respondent, John Barry, is notorious for registering domain names incorporating well-known marks and linking them to the <abortionismurder.org> website. In fact, Respondent has linked the <kansascitykansascommunitycollege.com> domain name to the <abortionismurder.org> website. In addition, Respondent offered to sell Complainant the registration rights in the subject domain name for $950, and Complainant notes that Respondent purchased registration rights in the subject domain name for $29.95.
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 provided ample evidence demonstrating its rights in the KANSAS CITY KANSAS COMMUNITY COLLEGE mark. Complainant has used the mark to denote its educational services since 1923 and remains committed to using the mark to advance and promote its educational goals. The ICANN Policy is broad in scope. A party need not have a registered mark to bring a claim; rather, a claim may be brought when a party establishes a vested, continued interest in a mark. Hence, Complainant’s longstanding and continuous use of the KANSAS CITY KANSAS COMMUNITY COLLEGE mark in association with its educational services gives Complainant standing to bring a claim. See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); 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).
Respondent’s <kansascitykansascommunitycollege.com> domain name incorporates Complainant’s entire KANSAS CITY KANSAS COMMUNITY COLLEGE mark. The only difference between the domain name and Complainant’s KANSAS CITY KANSAS COMMUNITY COLLEGE mark is the absence of spaces between the words of the mark and the addition of the generic top-level domain “.com.” These two changes are inconsequential and therefore the subject 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”); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has successfully alleged a prima facie case, which results in the burden shifting to Respondent to articulate its rights and legitimate interests in the <kansascitykansascommunitycollege.com> domain name. Respondent, however, has failed to even produce evidence in this proceeding and, therefore, the Panel will draw all reasonable inferences in favor of Complainant based on Complainant’s allegations. In addition, Complainant’s contentions are deemed true since Respondent has allowed them to remain uncontested. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).
Complainant has provided evidence that Respondent uses the <kansascitykansascommunitycollege.com> domain name to link Internet traffic to the anti-abortion website <abortionismurder.org> and that Respondent has attempted to sell the registration rights in the domain name to Complainant for a sum of $950. Respondent has registered and linked many infringing domain names to the <abortionismurder.org> website and Respondent has done the same with the subject domain name. Respondent is merely using the subject domain name to capitalize on the goodwill associated with Complainant’s mark with the hope that an Internet user would logically choose to type in Complainant’s college name as a domain name address. As a result, Internet users are immediately confronted with graphic images of aborted fetuses at the <abortionismurder.org> website. Respondent’s current use of the subject domain name and previous pattern of behavior proves that Respondent has no vested interest in the current domain name other than to ensnare Internet users for its own political agenda. In addition, the fact that Respondent attempted to sell the domain name registration to Complainant evidences a lack of rights or legitimate interest in the domain name. Therefore, Respondent has no rights or legitimate interest in the <kansascitykansascommunitycollege.com> domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). See 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); see also 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 Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
There exists no evidence that would tend to show that Respondent is commonly known by the <kansascitykansascommunitycollege.com> domain name. The fact is that Complainant has used the mark for nearly eighty (80) years to denote its educational services. Furthermore, it is clear that Respondent is notorious cybersquatter John Barry and, as such, has engaged in a practice of registering domain names that incorporate established marks. Complainant does not endorse Respondent’s infringing, tarnishing use of the subject domain name. Therefore, Respondent has no rights or legitimate interests in the subject 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 Respondent does not have rights in a domain name when 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 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).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <kansascitykansascommunitycollege.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent offered to sell the <kansascitykansascommunitycollege.com> domain name registration to Complainant for $950, which is undoubtedly an amount in excess of what Respondent’s costs were in association with the domain name. Respondent’s intent to sell the domain name registration to Complainant, the only party that could conceivably hold a vested interest in the domain name, amounts to bad faith registration and use of the domain name. 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 World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).
Viewing the totality of circumstances surrounding this case, it is clear that Respondent registered and used the domain name in bad faith. Respondent is a notorious cybersquatter who preys on parties that do not have their trademarks or service marks incorporated in a domain name. Respondent then incorporates unregistered marks in domain names in order to divert Internet traffic to the <abortionismurder.org> website, thereby subjecting unsuspecting Internet users to graphic pictures of aborted fetuses. As previously stated, Respondent does the same with the <kansascitykansascommunitycollege.com> domain name. Respondent’s recent infringing activity includes the domain names <rochesterinstituteoftechnology.com>, <chicagofieldmuseum.com> and <stlouispostdispatch.com>, all of which have been transferred to the rightful owners. Respondent’s past behavior makes it clear that it was fully aware of Complainant’s interests in the KANSAS CITY KANSAS COMMUNITY COLLEGE mark, and the inevitable confusion that would result when Internet users searching for Complainant were diverted to the graphic, tarnishing anti-abortion website. Therefore, Respondent’s actions evidence bad faith under Policy ¶ 4(a)(iii). See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); 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).
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 shall be hereby granted.
Accordingly, it is Ordered that the domain name <kansascitykansascommunitycollege.com> be transferred from Respondent to Complainant.
Tyrus R. Atkinson, Jr, Panelist
Dated: October 11, 2002.
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