The Jule Collins Smith Museum of Fine Art at Auburn University v. Khan, Zafar
Claim Number: FA1205001445535
Complainant is The Jule Collins Smith Museum of Fine Art at Auburn University (“Complainant”), represented by M. Maran White, Alabama, USA. Respondent is Khan, Zafar (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <julecollinssmithmuseum.com>, registered with Network Solutions, LLC.
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. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2012; the National Arbitration Forum received payment on May 23, 2012.
On May 24, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <julecollinssmithmuseum.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 May 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2012 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@julecollinssmithmuseum.com. Also on May 25, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
Respondent’s <julecollinssmithmuseum.com> domain name, the domain name at issue, is confusingly similar to Complainant’s JULE COLLINS SMITH MUSEUM mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has continuously used the JULE COLLINS SMITH MUSEUM mark in connection with a nationally known museum of fine art at Auburn University since October 2003. Although Complainant has apparently not obtained registration of the mark, a case is made for common law trademark status and a secondary meaning in the mind of the public for the mark. The <julecollinssmithmuseum.com> domain name is identical to the JULE COLLINS SMITH MUSEUM mark. Respondent is not commonly known by the <julecollinssmithmuseum.com> domain name. The domain name formerly resolved to a website that displayed content designed to mimic Complainant’s official website which featured links to the <ticketmayor.com> domain name that is owned by Respondent. The domain name currently resolves to Respondent’s <lawperiscope.com> site that advertises legal services. Respondent had actual and/or constructive knowledge of Complainant’s rights in the JULE COLLINS SMITH MUSEUM mark prior to the registration and use of the <julecollinssmithmuseum.com> domain name.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint 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.”).
In order to satisfy the required showing of Policy ¶ 4(a)(i), a complainant must demonstrate that it has rights in the mark that is allegedly being infringed. Complainant contends that Respondent is infringing on Complainant’s JULE COLLINS SMITH MUSEUM mark. While Policy ¶ 4(a)(i) provides for a showing of rights by proving that a mark has been registered with a federal trademark authority, the registration of a mark is not necessary to demonstrate rights. 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).
Complainant has long been using the JULE COLLINS SMITH MUSEUM mark. The mark coincides with the name of Auburn University’s museum of fine art and has acquired national recognition as the name of the museum. Complainant has provided screenshots of its website with information on the museum of fine art at Auburn University. The information on Complainant’s screenshots refers to the Auburn University museum as early as 1948 when artwork was purchased for eventual display. As early as 1997, the information on the screenshots discusses the securing of funding for the eventual museum and related planning decisions. The Wikipedia page describing the JULE COLLINS SMITH MUSEUM notes that the mark has been used since October 3, 2003. Continuous, ongoing use of a mark is sufficient to develop secondary meaning and establish a common law trademark. 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). Therefore, Complainant has common law rights in the JULE COLLINS SMITH MUSEUM mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <julecollinssmithmuseum.com> domain name is identical to the JULE COLLINS SMITH MUSEUM mark. Respondent’s deletion of spaces between words and addition of the generic top-level domain (“gTLD”) “.com” are irrelevant to a Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (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”). Therefore, the Panel finds that the <julecollinssmithmuseum.com> domain name is identical to the JULE COLLINS SMITH MUSEUM under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the JULE COLLINS SMITH MUSEUM mark. Respondent has not been authorized to use Complainant’s mark. Additionally, the WHOIS record for the <julecollinssmithmuseum.com> domain name lists “Khan, Zafar” as the domain name registrant. A lack of authorization and the WHOIS record is evidence of a lack of rights and legitimate interests. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent previously used the <julecollinssmithmuseum.com> domain name to display content similar to that shown on Complainant’s website and a link to Respondent’s website at the <ticketmayor.com> domain name that sold tickets to various events. The use or display of links to goods and services unrelated to the complainant is not a use that gives the respondent rights or legitimate interests in the disputed domain name. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). Therefore, Respondent’s previous use of the <julecollinssmithmuseum.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent’s current use of the <julecollinssmithmuseum.com> domain name is to redirect Internet users to the <lawperiscope.com> domain name where Respondent advertises legal services. The Panels in Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007), and Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002), held that the use of a disputed domain name to redirect Internet users to a website advertising goods and services unrelated to those that the complainant offers is not a protected use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Therefore, Respondent’s use of the <julecollinssmithmuseum.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent registered and is using the <julecollinssmithmuseum.com> domain name to create confusion and mistakes by Internet users regarding the source of the disputed domain name in order for Respondent to commercially gain. Respondent is using the <julecollinssmithmuseum.com> domain name to confuse Complainant’s patrons and to funnel traffic to Respondent’s various websites. Respondent previously used the domain name to link Internet users to Respondent’s ticket sale website and currently uses the disputed domain name to redirect Internet users to Respondent’s website advertising legal services unrelated to Complainant’s mark. Therefore, the Panel finds Respondent registered and is using the <julecollinssmithmuseum.com> domain name in bad faith by attempting to attract Internet users to the disputed domain name by causing a likelihood of confusion and take advantage of resulting mistakes pursuant to Policy ¶ 4(b)(iv). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).
Respondent must have had constructive and/or actual notice of Complainant's rights in the JULE COLLINS SMITH MUSEUM mark prior to registering the domain name. While constructive notice is frequently regarded as insufficient to support a finding of bad faith, the Panel finds that this Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <julecollinssmithmuseum.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 23, 2012
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