City of Providence, Providence, RI, USA; Providence Police Department v. 1903 60th Place E.
Claim Number: FA1212001477555
Complainant is City of Providence, Providence, RI, USA; Providence Police Department (“Complainant”), represented by Sean Creegan of Providence City Solicitor's Office, Rhode Island, USA. Respondent is 1903 60th Place E. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <providencepolice.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she 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.
Dr. Katalin Szamosi as Panelist.
Complainant submitted the Complaint to the National Arbitration Forum electronically on December 27, 2012; the National Arbitration Forum received payment on January 2, 2013.
On December 28, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <providencepolice.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2013 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@providencepolice.com. Also on January 4, 2013, 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.
A timely Response was received and determined to be complete on January 17, 2013.
On January 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Katalin Szamosi 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that Respondent’s <providencepolice.com> domain name is identical with the PROVIDENCE POLICE service mark for which the City of Providence in the State of Rhode Island owns a protectable interest. In support of this Complainant asserts that
· the Providence Police Department is one of the oldest police departments in the United States, with its origins dating back to the Revolutionary War in 1775, when night watchmen first walked the city, and 1848, when the first badge was issued;
· “Day Men” were instituted citywide in 1851 and the police force was formally chartered in 1864;
· the Providence Police Department is the second largest law enforcement entity in New England;
· it has common law rights in the PROVIDENCE POLICE mark as a result of its exclusive and continuous use of the mark since 1864 on public uniforms, vehicles, buildings and correspondence and attached evidence of use;
· the contested domain name was registered by Complainant at least ten years before Respondent registered exactly the same domain name;
· the contested domain name is identical to the PROVIDENCE POLICE mark.
Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name. In support of this Complainant asserts that
· there is no proof or evidence that Respondent, Mykhaylo Perebiynis, is now or has ever been known by the PROVIDENCE POLICE service mark;
· the disputed domain name redirects Internet users looking for information about Complainant to a wholly unrelated gambling and blackjack tutorial website with no connection to Complainant, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to the Policy.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith. In support of this, Complainant contends that
· Respondent has registered the disputed domain name to prevent Complainant from reflecting the PROVIDENCE POLICE mark in a domain name and has engaged in a pattern of this type of behavior;
· Complainant initially owned the disputed domain name beginning in February 29, 2000, but when there was an oversight in the registration process, Respondent took advantage of the lapse and registered the domain name as his own;
· Respondent has been involved in similar acts of bad faith registration in the past and in support of this Complainant submitted a newspaper report of Respondent’s opportunistic registration of the <Bastille-Linux.org> domain name;
· Respondent chose a domain name that was identical with the longstanding and distinctive PROVIDENCE POLICE mark and should have been aware that the disputed domain name corresponded with the mark because there is no other organization, entity or person in the world that is called, named or otherwise referred to as the Providence Police Department.
B. Respondent
Respondent did not submit an official response; however in an e-mail sent to the National Arbitration Forum he asserts that
· the registrar “Network Solution” legally sold the disputed domain name on July 15, 2012 by auction NameJet;
· PROVIDENCE POLICE is not a registered trademark.
Complainant has common law rights in the PROVIDENCE POLICE mark as a result of its exclusive and continuous use of the mark since 1864.
The contested domain name was registered by Complainant at least ten years before Respondent registered exactly the same 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.
The Panel finds that Complainant has submitted sufficient evidence demonstrating exclusive and continuous use of the mark since1864. Additionally the Panel finds that <providencepolice.com> domain name was registered by Complainant at least ten years before Respondent. The Panel finds that Complainant has presented sufficient evidence of continuous and exclusive use of the mark to show that the mark has acquired secondary meaning, accordingly, the Panel finds that Complainant owns common law rights in the mark pursuant to Policy ¶ 4(a)(i); See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
The Panel notes that the disputed domain name only differs from the mark of the Complainant in the generic top-level domain (“gTLD”) “.com.”
Additionally the Panel notes that the Respondent did not refute the similarity between the mark and the disputed domain name, therefore the Panel finds that Respondent’s <providencepolice.com> domain name is confusingly similar to Complainant’s PROVIDENCE POLICE mark pursuant to Policy ¶ 4(a)(i).
As to the second 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).
The Panel finds that the WHOIS information for the disputed domain name identifies “1903 60th Place E,” as the registrant, therefore Respondent is not commonly known by the disputed domain name under Policy. Panel notes that this information appears to be an address and the Administrative Contact and Technical Contact sections both refer to a “Mykhaylo Perebiynis.”, however this does not change the view of the Panel that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) as the WHOIS information does not suggest any relationship between Respondent and the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant submitted sufficient evidence to support its contention that the disputed domain name redirects Internet users to a gambling and blackjack tutorial website, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name therefore the Panel finds that Respondent has shown no rights or legitimate interests according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant submitted sufficient evidence to show that Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
The Panel notes that Respondent’s knowledge of the PROVIDENCE POLICE mark at the time of the registration of the domain name in question is supported by the fact that Respondent was a police officer which he indicated in his e-mail sent to National Arbitration Forum on January 6, 2013.
The Panel finds that Respondent’s registration of the domain name, in the view of his knowledge of Complainant’s rights in the mark, indicates bad faith registration under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also 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 Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <providencepolice.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: February 12, 2013
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