The Office of the Kings County District Attorney v. Dom Altam
Claim Number: FA1003001313554
Complainant is The Office of the Kings County District
Attorney (“Complainant”), represented
by Adam Zion, of The Office of the
Kings County District Attorney,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooklynda.com>, registered with 1 & 1 Internet Ag.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2010.
On March 19, 2010, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <brooklynda.com> domain name is registered with 1 & 1 Internet Ag and that the Respondent is the current registrant of the name. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 March 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ brooklynda.com. Also on March 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 13, 2010.
On April 20, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The mark at issue is the name BROOKLYN DA, which is a shortening for
the purpose of domain name structure of the title The Brooklyn D.A. This title is synonymous with the District
Attorney of Kings County, New York; Kings County being the jurisdictional name
for Brooklyn, New York. Although the
official name of this county is Kings, common usage and the US Post Office have
The appellation “The Brooklyn DA” has long been the name by which the press,
the law enforcement community and ordinary citizens of
The domain name and service mark “Brooklyn DA” belongs to a
governmental agency providing critical public services to the City of
Although not registered, the BROOKLYN DA mark is distinct and uniquely identifies the Brooklyn District Attorney. It is not an ambiguous or generic mark. As such it was the logical choice as the basis of the Brooklyn District Attorney’s domain of <brooklynda.org>.
The mark of “Brooklyn DA” is accepted in the press, academia, criminal
justice community, and the community-at-large to exclusively refer to the
Brooklyn District Attorney, formally known as the Office of the Kings District
The Respondent’s domain name is identical with, and therefore confusingly similar to the Complainant’s mark.
Respondent’s inclusion of the Complainant’s mark was purposeful and done specifically to confuse an internet user who sought to access the Complainant’s domain and website.
The respondent has no legitimate right or interest in the domain <brooklynda.com> which uses the identical mark of the Complainant’s common-law mark of “Brooklyn DA.”
The Complainant has given the Respondent no license or permission to use the mark BROOKLYN DA. Respondent has taken the Complainant’s mark without authorization for the purpose of drawing unsuspecting internet users to his site. The Respondent is using the disputed domain to resolve a website that is clearly designed to appear as if it is an authorized website of the Brooklyn District Attorney.
The Respondent’s free speech rights are not infringed by a finding that Respondent has no legitimate interest in the domain name.
The fact that the disputed domain name resolves to a website bearing a photograph of the actual Brooklyn District Attorney, and contains a narrative about the internal structure of the Brooklyn District Attorney’s office is clear evidence that the Respondent was fully aware that the disputed domain name belonged to the Complainant.
Respondent’s registration was an obvious attempt not only to capitalize on the notoriety of the Complainant’s mark, but to divert internet users to his website; a website that ultimately contained pornographic and indecent images. Such a registration is one made in bad faith.
Respondent’s use of the BROOKLYN DA mark in the disputed domain negatively impacts on the Complainant’s legitimate interests of providing important law enforcement, community education, crime victim assistance, and employee recruitment information and is additional evidence of bad faith.
The Complaint was initially filed with the Forum on March 16, 2010, without identity of the Registrant or any associated contact information included. On March 19, 2010, the Forum notified the Complainant of the contact information for the Respondent and courtesy copied the Respondent. Respondent then sent an e-mail to Complainant.
In the e-mail, Respondent attempted to control both Complainant’s mark and the process through veiled threats and an insinuation that the Complainant’s unreasonable behavior will lead to unforeseen consequences.
The respondent attempted to withdraw his prior conduct by arranging for the automatic forwarding of webpage requests for Brooklynda.com to another domain which now displays the same webpage, but with altered content. By this conduct, the Respondent has acknowledged his infringement of Complainant’s mark through the displaying of offensive pornographic images.
Respondent, having been summoned to the appropriate forum for resolution of this dispute now seeks to avoid the consequences of his actions by hiding the evidence, and seeking a negotiated settlement.
The Complainant, representing the Kings County District Attorney, cynically attempts to manipulate the emotions of the Panel.
Respondent’s email was a request to spare the Respondent from having to write a reply to the complaint.
Respondent’s website redirects visitors to a different domain because the registration information for <brooklynda.com> is no longer private.
The domain <brooklynda.com> was registered in 2000, a full ten years ago. The domain <brooklynda.org> has not been registered for much longer.
Respondent’s website is a criticism or commentary site. No visitor, upon reading the prominent text, could mistakenly conclude that this is the “official” website for Complainant.
The Complaint fails because “Brooklyn D.A.” cannot be considered a trademark or service mark of the Complainant. The Complainant asserts that simply by registering the domain name <brooklynda.org>, the Complainant has made the phrase “Brooklyn District Attorney” the exclusive property of the Complainant.
Complainant’s domain name has a descriptive phrase that has been in use long before 1997 when <brooklynda.org> was registered. BROOKLYN DA is not a coined term with unique trademark significance.
To establish BROOKLYN DA as a “mark” of the Complainant, the Complainant would have to demonstrate that prior to the establishment of the website at <brooklynda.org> the Complainant had not been known as the Brooklyn D.A.
There is ample evidence that prior to 1997 the Complainant’s office had been referred to as the Brooklyn D.A.
Even if BROOKLYN DA were a “mark” of the Complainant it would still fail because the Respondent’s domain and website are used as a non-commercial commentary site.
UDRP complaints are routinely denied when the website criticizes or offers commentary about the complainant.
The Respondent has legitimate interests in the domain name. For ten years, the Respondent has paid for
registration and hosting of the website.
The website has been in use providing information about current issues
The Respondent has not registered the domain in bad faith. There is no allegation that the Respondent offered to sell the domain name to the Complainant. There is no allegation that the Respondent is gaining any economic benefit from the domain name.
The Respondent registered <brooklynda.com> because it is short and direct. There was no intent to unfairly steal the ‘customers’ of the Complainant.
For the reasons set forth below, the Panel finds for Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
Complainant does not provide evidence of a registered trademark incorporating the BROOKLYN DA mark. However, the Panel may find registration of a trademark is unnecessary provided Complainant can establish common law rights in the mark under Policy ¶ 4(a)(i) through the establishment of secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts it has common law rights in its BROOKLYN DA mark. Complainant asserts it holds the <brooklynda.org> domain name that it uses to provide the community with information about its district attorney’s office. Complainant has provided evidence of the use of the BROOKLYN DA mark in newspaper headlines to signify Complainant, dating back to at least 1967. Complainant also provides evidence of third-parties in the community who detail the association of the BROOKLYN DA mark with Complainant. The Panel finds Complainant’s evidence establishes secondary meaning sufficient to support a finding of common law rights in the mark and the Panel finds Complainant has established rights in the BROOKLYN DA mark under Policy ¶ 4(a)(i). 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 Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Complainant contends Respondent’s <brooklynda.com> domain
name is identical to Complainant’s BROOKLYN DA mark despite the omission of the
spacing and the addition of the generic top-level domain “.com.” The Panel agrees and the Panel finds
Respondent’s <brooklynda.com> domain name is identical to
Complainant’s BROOKLYN DA mark under Policy ¶ 4(a)(i). See
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends Respondent is not commonly known by the disputed domain name. Complainant points to the WHOIS information, which lists the registrant as “Dom Altam,” as evidence Respondent is not commonly known by the disputed domain name. The Panel finds Respondent is not commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant contends Respondent is using the disputed domain name to offer opinion and satirical information about Complainant and cases prosecuted by or associated with Complainant. The Panel finds Respondent’s use of Complainant’s mark in an identical disputed domain name in order to display opinion and satire regarding Complainant’s cases is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”).
Furthermore, Complainant contends Respondent’s use of the disputed domain name includes displaying adult-oriented material on the website resolving from the disputed domain name. The Panel finds Respondent’s use demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also McClatchy Mgmt. Servs., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that the respondent’s use of the disputed domain names to divert Internet users to a website that features adult-oriented material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).
Complainant has proven this element.
The Panel finds that the list of factors within Policy ¶ 4(b) are not exhaustive of the potential factors which may show evidence of a respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant contends Respondent is using the disputed domain name to offer opinion and satirical information about Complainant and cases prosecuted by or associated with Complainant. Complainant asserts and the Panel finds that Respondent’s use of Complainant’s mark to provide criticism of Complainant constitutes registration and use of the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Nw. Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (“Respondent registered the domain name for the purpose of bringing Internet users desiring to learn more about Complainant to Respondent's site for the intended purpose of publishing contrary and critical views of Complainant thus disrupting the business of Complainant. Registering a domain name identical with the mark of Complainant, for this purpose, is bad faith.”).
Furthermore, Complainant contends Respondent’s website resolving from the identical disputed domain name displays adult-oriented content. The Panel finds Respondent’s use of the disputed domain name evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Jon-Don Prods., Inc. v. CarpetSolutions, FA 95293 (Nat. Arb. Forum Aug. 24, 2000) (finding bad faith where the respondent threatened to use the domain name for adult-oriented material).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooklynda.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 30, 2010
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