Princeton University Press v. Good
Domains
Claim Number: FA0209000124993
PARTIES
Complainant
is Princeton University Press,
Princeton, NJ (“Complainant”) represented by Sankar Suryanarayan, of Princeton
University. Respondent is Good Domains, Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <princetonuniversitypress.com>,
registered with Enom.
PANEL
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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 10, 2002; the Forum received a hard copy of the
Complaint on September 11, 2002.
On
September 13, 2002, Enom confirmed by e-mail to the Forum that the domain name <princetonuniversitypress.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
September 19, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 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 postmaster@princetonuniversitypress.com 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
October 28, 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Submission makes the
following assertions:
1. Respondent’s <princetonuniversitypress.com> domain name is identical to Complainant’s registered PRINCETON UNIVERSITY
PRESS mark.
2. Respondent does
not have any rights or legitimate interests in the <princetonuniversitypress.com> domain
name.
3. Respondent
registered and used the <princetonuniversitypress.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, Princeton University Press,
owns U.S. Reg. No. 1,385,940 for its PRINCETON UNIVERSITY PRESS mark,
registered with the U.S. Patent and Trademark Office (“USPTO”) on March 11,
1986. The mark is used for publication and distribution of printed matter,
electronic (digital) books and other printed and educational materials by
Complainant.
Respondent is John Barry, known by the
Panel for taking domain names and linking them to the
<abortionismurder.org> website. Respondent registered the <princetonuniversitypress.com>
domain name on February 14, 2002, and is not licensed or otherwise authorized
to make any use of the PRINCETON UNIVERSITY PRESS mark for any purpose.
Respondent’s domain name displays a web page with the slogan “Abortion is
Murder”, a series of links related to the political issue of abortion and
several graphic photographs of aborted fetuses. Questions, comments, or
suggestions about the website are directed to admin@abortionismurder.org.
DISCUSSION
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 rights in its
PRINCETON UNIVERSITY PRESS mark through registration on the Principal Register
of the USPTO.
Respondent’s <princetonuniversitypress.com> domain name is identical to
Complainant’s registered PRINCETON UNIVERSITY PRESS mark. As spaces are impermissible in domain name
registrations and a generic top-level domain (such as “.com”) is required for
every domain name, neither of these differences have any effect on whether
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”); 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).
Accordingly, the Panel finds that the <princetonuniversitypress.com> domain
name is identical to Complainant’s registered mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon Complainant. Under
Policy ¶¶ 4(c)(i-iii), Respondent can rely on an offering of bona fide goods or
services connected with the disputed domain name, the fact that it has been
commonly known by the domain name, or that it is making a legitimate
noncommercial or fair use of the domain name to demonstrate a right or
legitimate interest in a domain name. If Complainant rebuts each of these
elements, it has satisfied its burden by successfully addressing any of the
specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore
shifting the burden to Respondent. 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).
It is neither a bona fide offering of
goods or services, nor an example of a legitimate noncommercial or fair use
under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name uses it to
divert Internet users to its own unrelated website. See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s
mark “as a portal to suck surfers into a site sponsored by Respondent hardly
seems legitimate”); 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).
Respondent is taking advantage of the identicality between Complainant’s
registered mark and the disputed domain name to spread its message on abortion.
This is not a bona fide offering of goods or services, nor legitimate
noncommercial use of the domain name.
Furthermore, Respondent does not appear
to have any rights in, nor is it commonly known by, the name PRINCETON
UNIVERSITY PRESS, and Complainant has not given Respondent permission or
consent to use its PRINCETON UNIVERSITY PRESS mark. Complainant registered its
mark years before the disputed domain name was registered and Complainant has
shown that Respondent is actually commonly known by the ABORTION IS MURDER
moniker. See 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). The fact that the website associated with the disputed domain name
never mentions the phrase “Princeton University Press”, has any content
remotely related to the phrase and directs comments by Internet users to
<abortionismurder.org> is additional evidence that Respondent is not
commonly known by the name.
Once a complainant has successfully
presented its prima facie case illustrating a respondent’s lack of
rights or legitimate interests in its domain name, the burden of demonstrating
rights and legitimate interests in the domain name shifts to the respondent.
As Respondent submitted nothing to the
Panel in Response to this Complaint, Respondent fails to meet that burden. See
Canadian Imperial Bank of Commerce v.
D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in its domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent’s <princetonuniversitypress.com> domain name was registered and used in bad faith. Although the Policy lists four circumstances
that are considered evidence of bad faith registration and use, the
circumstances described therein are not exhaustive, but merely illustrative of
situations clearly defining bad faith and registration. 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 Home Interiors & Gifts, Inc. v. Home
Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s
conduct does not fall within the ‘particular’ circumstances set out in ¶ 4(b),
does not mean that the domain names at issue were not registered in and are not
being used in bad faith”). One such situation not enumerated in the Policy is
opportunistic bad faith registration of a domain name. See 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).
A registered trademark operates as
constructive notice to the existence of a mark. It is evidence that a domain
name has been registered in bad faith when a Respondent registers a domain name
that is identical to a trademark despite actual or constructive notice of the
mark. See Singapore Airlines Ltd
v. P & P Servicios de Communicacion
S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name
‘singaporeairlines.com’ is so obviously connected with a well-known airline
that its very registration and use by someone with no connection to the airline
suggests opportunistic bad faith.
Indeed, it is hard to imagine a more blatant exercise in
‘cybersquatting.’”); see also 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).
Respondent’s registration and use of the <princetonuniversitypress.com>
domain name to promote the anti-abortion agenda by subjecting unsuspecting
Internet users to graphic images of aborted fetuses represents a bad faith
intent to trade off of the goodwill Complainant has established in its
registered PRINCETON UNIVERSITY PRESS mark. As Respondent knew or should have
known of Complainant’s registered mark, the Panel determines that Respondent’s
intent was to confuse Internet users as to Complainant’s affiliation or
sponsorship with the website and its politically charged content. 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)
Accordingly, the Panel finds that
Respondent both registered and used its domain name in bad faith, and Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <princetonuniversitypress.com> domain
name be TRANSFERRED from Respondent to Complainant.
James A.Crary, Panelist
Dated: November 4, 2002
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