Eagle Hill-Southport School, Inc. v. Abrams, J
Claim Number: FA1012001364298
Complainant is Eagle Hill-Southport School, Inc. (“Complainant”), represented by Mark R. Jacobs of Pryor Cashman, LLP, New York, USA. Respondent is Abrams, J (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eaglehillsouthport.com>, registered with NETFIRMS, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2010; the National Arbitration Forum received payment on December 20, 2010.
On December 20, 2010, NETFIRMS, INC. confirmed by e-mail to the National Arbitration Forum that the <eaglehillsouthport.com> domain name is registered with NETFIRMS, INC. and that Respondent is the current registrant of the name. NETFIRMS, INC. has verified that Respondent is bound by the NETFIRMS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2011 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@eaglehillsouthport.com. Also on December 28, 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 January 18, 2011.
On January 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Eagle Hill-Southport School, Inc. claims to be a non-profit school for intelligent students who experienced academic challenges because of specific learning disabilities. Eagle Hill-Southport School, Inc. claims to have acquired trademark rights in the name EAGLE HILL-SOUTHPORT through longstanding and widely publicized use of its name in connection with an academic institution.
Complainant contends that Respondent's domain name is identical to Complainant’s mark and operating name. Complainant further contends that Respondent has no rights or legitimate interests in the domain name. Finally, Complainant contends that Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent claims to be a former student of the Eagle Hill-Southport School. Respondent claims to have been physically abused at the Eagle Hill-Southport School. According to Respondent, his registration and use of the domain name cannot be done in bad faith, since would only try to notify the public of the neglect and abuse that allegedly took place at the Eagle Hill-Southport School.
1. Complainant is the holder of the common law trademark EAGLE HILL SOUTHPORT that it acquired through longstanding and publicized use of its name in connection with an academic institution, founded in 1985.
2. Respondent registered the domain name <EAGLEHILLSOUTHPORT.COM> on August 9, 2010.
3. On September 10, 2010, Complainant requested registrar of the disputed domain name to remove the content from the website linked to the disputed domain name, which Complainant considered to be defamatory and to provide Complainant with the name and contact information of the persons who contracted with registrant to create and activate the website on the disputed domain name.
4. On December 17, 2010, the website linked to the disputed domain name contained a message stating that the website was temporarily under construction “so that all documents can be scanned into Adobe pdf files for all to read.” The message continued: “The documents that will be posted accuse and find Eagle Hill Southport faculty/staff guilty of abusing students there. Be advised that this website was originally created to be a source for parents, students, and other concerned parties to view information on abuse that occurred at Eagle Hill. Eagle Hill complained and said my original content contained defamatory content and forced me to remove my notice that advised people that this page was only informational. Eagle Hill can expect a counter-suit if they continue to bully me.” (sic)
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."
Paragraph 4(a) of the Policy requires that 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.
Complainant contends that it uses the EAGLE HILL-SOUTHPORT mark in connection with its private educational institution which specializes in working with intelligent students who suffer from specific learning disabilities. Complainant has not registered the EAGLE HILL-SOUTHPORT mark, but previous panels have found that governmental trademark registration is not necessary to establish rights in a mark pursuant to Policy ¶ 4(a)(i). Earlier panels have asserted that federal registration is not required so long as a complainant can establish common law rights in a mark through proof of sufficient secondary meaning associated with the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name); see also Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Complainant argues that it has been operating under the EAGLE HILL-SOUTHPORT name since at least the mid 1980s. Complainant states that its school hosts children from various states in the US, as well as, children from countries around the world. Complainant asserts that it has a strong presence at yearly educational conferences and has had numerous articles written about its institution. The Panel finds that Complainant has provided sufficient evidence to establish common law rights in the EAGLE HILL-SOUTHPORT mark through continuous and extensive commercial use, predating Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).
Complainant alleges that Respondent’s <eaglehillsouthport.com> domain name is identical to Complainant’s EAGLE HILL-SOUTHPORT mark. The disputed domain name contains Complainant’s entire mark, merely removing the spaces and the hyphen, and adds the generic top-level domain “.com.” Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Previous panels have asserted that the removal of spaces or punctuation from a complainant’s mark is irrelevant in distinguishing it from a disputed domain name. Earlier panels have also found that the addition of a gTLD renders a disputed domain name identical to a complainant’s mark. See Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (“[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i) identical analysis.”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Accordingly, the Panel finds that Respondent’s <eaglehillsouthport.com> domain name is identical to Complainant’s EAGLE HILL-SOUTHPORT mark.
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 alleges that there is no evidence in the record to suggest that Respondent is commonly known by the <eaglehillsouthport.com> domain name. Complainant asserts that the WHOIS information identifies the domain name registrant as “Domain Privacy Group, Inc.” and lists the Respondent as “J. Abrams.” Complainant further argues that Respondent has not been authorized to use the EAGLE HILL-SOUTHPORT mark. According to the Panel, there is indeed nothing in the record to suggest that Respondent is commonly known by the <eaglehillsouthport.com> domain name. Also, Respondent has not established that it is commonly known by the disputed domain name. Therefore, the Panel opines that Respondent does not possess rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent uses the <eaglehillsouthport.com> domain name to display derogatory and purportedly false statements about Complainant’s school and its staff members. Complainant argues that while Respondent may have a right to free speech, the use of Complainant’s mark in connection with exercising this right, is generally not allowed. Therefore, the Panel finds that Respondent’s use is evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). 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 Direct Line Group Ltd. v. Purge I.T., D2000-0583, (WIPO Aug. 13, 2000) (finding that use of the complainant’s name and adoption of it in a domain name is inherently likely to lead some people to believe that the complainant’s are connected with it).
Previous panels have determined that when conducting a Policy ¶ 4(a)(iii) analysis, the totality of the circumstances may be considered and that it is not limited to the specific factors laid out in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). The Panel agrees with this.
Complainant argues that Respondent uses the <eaglehillsouthport.com> domain name in bad faith as the disputed domain name contains Complainant’s entire mark, along with derogatory information about Complainant, and likely confuses Internet users into thinking that they have reached an official site relating to Complainant. According to the Panel, Respondent may have the right to post criticism of Complainant on the Internet, but does not have the right to completely appropriate Complainant’s trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website. Such would be evidence of bad faith registration and use according to Policy ¶ 4(a)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website); see also Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website.”). According to the Panel, Respondent has created a likelihood of confusion as to the source or affiliation of its website by completely appropriating Complainant’s trademark in the disputed domain name and subsequently posted severe criticism on the Internet. Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eaglehillsouthport.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: February 1, 2011
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