The George Washington University v. Domain World a/k/a Domains For Sale a/k/a John Barry
Claim Number: FA0208000122140
Complainant is The George Washington Univerisy, Washington, DC (“Complainant”) represented by Kevin J. Kuzas, of Dow, Lohnes, & Albertson, PLLC. Respondent is Domain World a/k/a Domains For Sale a/k/a John Barry, Bronx, NY (“Respondent).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <georgewashingtonuniversity.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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 16, 2002; the Forum received a hard copy of the Complaint on August 19, 2002.
On August 21, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <georgewashingtonuniversity.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 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 10, 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 30 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. 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.
The <georgewashingtonuniversity.com> domain name is confusingly similar to Complainant's THE GEORGE WASHINGTON UNIVERSITY mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
Complainant has established itself as a premier institute of higher learning over the past two centuries. Complainant first opened its doors in 1821 as Columbian College. In 1904, Columbian College changed its name to THE GEORGE WASHINGTON UNIVERSITY. Complainant currently offers varied courses of study at both the graduate and undergraduate levels, with 22,000 students enrolled. Complainant has used THE GEORGE WASHINGTON UNIVERSITY mark in correlation to its education services, as well as its entertainment services (including athletic, dance, theatrical, musical and public lecture events). Complainant currently owns eleven registrations including its THE GEORGE WASHINGTON UNIVERSITY mark with the United States Patent and Trademark Office.
Respondent registered the disputed domain name on December 25, 2001. Respondent is the notorious cybersquatter John Barry who is known for taking domain names and linking them to the <abortionismurder.org> website. Respondent originally linked the <georgewashingtonuniversity.com> domain name to the <abortionismurder.org> website featuring images of aborted fetuses. As of the date the Complaint was begun by Complainant, the domain name resolved to <e-scripts-md.com> which provides “on-line medical consultations and prescriptions for weight loss management and other FDA approved medications.” Visitors to Respondent’s website are also accosted with various pop-up advertisements that promote products including sexual stimulants. Near the completion of the Complaint, the domain name resolved to <pillstore.com>. Respondent has also offered to sell the disputed domain name to Complainant.
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 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.
Identical and/or Confusingly Similar
Complainant has established that it has rights in the THE GEORGE WASHINGTON UNIVERSITY mark through registration of the mark with the United States Patent and Trademark Office, as well as its longstanding use beginning in 1904.
Complainant’s mark is confusingly similar to Respondent’s <georgewashingtonuniversity.com> domain name because it incorporates Complainant’s entire mark except for the “the.” The omission of the word “the” from the beginning of a mark does not create a distinct mark capable of overcoming a claim of confusing similarity. See Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response. Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); 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”).
Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).
Respondent is using the disputed domain name in order to divert Internet users to a website that sells prescription drugs and other products. Respondent is taking advantage of Internet users who are attempting to reach Complainant’s website by typing in <georgewashingtonuniversity.com>, and subjecting them to pop-up advertising and tarnishing advertising material. This type of behavior is not recognized to be in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with 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).
Because Respondent is a notorious cybersquatter known for his pattern of linking domain names to the <abortionismurder.org> website, it is presumed that Respondent is not commonly known by the disputed domain name and therefore has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). Furthermore, there is no evidence on record, and Respondent has not come forward with any evidence to prove that it is commonly known as <georgewashingtonuniversity.com>. Therefore, Respondent has failed to establish that it has any rights or legitimate interests in the disputed domain name. 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 Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
It can be inferred that Respondent is making a profit from the Internet users it is diverting to websites that solicit drug orders, such as <e-scripts-md.com> and <pillbox.com>. Respondent is diverting Internet users to these websites through the use of a domain name confusingly similar to Complainant’s mark. This opportunistic behavior on the part of Respondent is considered to be evidence of bad faith use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
Furthermore, Respondent has offered to sell the disputed domain name to Complainant, suggesting that Respondent intended to sell the domain name to Complainant when it registered the disputed domain name. The registration of a domain name with the intent to ultimately sell the registration to Complainant is considered to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
Based on Respondent’s pattern of registering infringing domain names and linking them to the <abortionismurder.org> domain name it can be inferred that Respondent knew of Complainant’s rights in the <georgewashingtonuniversity.com> domain name when Respondent registered it. Registration of a domain name, despite notice of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
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 <georgewashingtonuniversity.com> be transferred from Respondent to Complainant.
James A. Crary, Panelist
Dated: October 14, 2002
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