Cornell University v. Jim Grier, LLC
Claim Number: FA1301001481748
Complainant is Cornell University (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is Jim Grier, LLC (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nymakesworkpay.org>, registered with GoDaddy.com, LLC (R91-LROR).
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 January 23, 2013; the National Arbitration Forum received payment on January 24, 2013.
On January 24, 2013, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <nymakesworkpay.org> domain name is registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, LLC (R91-LROR) 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 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 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@nymakesworkpay.org. Also on January 24, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 19, 2013, 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:
1. Respondent’s <nymakesworkpay.org> domain name, the domain name at issue, is confusingly similar to Complainant’s NEW YORK MAKES WORK PAY mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has established common law rights in the NEW YORK MAKES WORK PAY mark through its continuous use of the mark since 2008.
Complainant provides a wide array of services and activities in connection with the NEW YORK MAKES WORK PAY program, a program Complainant operates in conjunction with the state of New York aimed at improving the rate of employment among people with disabilities and positively impacting individuals, employers, service providers, communities, funders, and policy makers by building skills, awareness, partnerships, and resources to achieve improved and lasting workforce participation for individuals with disabilities and self-sufficiency outcomes. Since 2008, Complainant has provided training and technical assistance services to over 40,000 New Yorkers through its NEW YORK MAKES WORK PAY program. Complainant registered the <nymakesworkpay.org> domain name on June 13, 2008. Complainant’s website formerly housed at the disputed domain name is a crucial resource for individuals with disabilities, their families, their service providers, and New York state policy makers. Prior to December 26, 2012, Complainant’s website received over 203,000 hits, and over 250,000 tools and resources were downloaded from its website. Links to Complainant’s website are included on the websites of over 20,000 organization, state agency, and federal agency websites. Complainant’s NEW YORK MAKES WORK PAY mark has been used prominently in over 250,000 postcards disseminated across the state of New York over the past two years, and has been featured in over 1,000,000 pieces of promotional literature. Complainant’s website has also been promoted through public transportation marketing initiatives, including bus-side banners in metropolitan New York City. Complainant also owns domain registrations for <nymakesworkpay.com>, <newyorkmakesworkpay.com>, and <newyorkmakesworkpay.org>. Complainant’s registration for the <nymakesworkpay.org> domain name was not due to expire until June 13, 2013. On or around December 26, 2012, Complainant learned that its registration for the <nymakesworkpay.org> domain name had been hacked, and the domain had been fraudulently transferred without Complainant’s knowledge or consent. In early January 2013, Complainant learned that the <nymakesworkpay.org> domain name now resolves to the adult-oriented website <lemonparty.tv>. There is no evidence that Respondent has been commonly known by the <nymakesworkpay.org> domain name. Respondent is in no way connected to Complainant, and has no authority, license, permission, or other arrangement from Complainant to use the NEW YORK MAKES WORK PAY mark. Respondent is making a commercial use of the <nymakesworkpay.org> domain name. Respondent did not submit a Response in this proceeding.
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.”).
Complainant does not hold a trademark registration for the NEW YORK MAKES WORK PAY mark. However, a trademark registration is not necessary for the establishment of rights in a mark under Policy ¶ 4(a)(i). See 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 has established common law rights in the NEW YORK MAKES WORK PAY mark through its extensive, substantial, and continuous use of the mark since 2008. Complainant claims that since 2008, it has provided training and technical assistance services to over 40,000 New Yorkers through its NEW YORK MAKES WORK PAY program. Complainant asserts that the program’s website has served as a crucial resource for individuals with disabilities, their families, their service providers, and New York state policy makers. Complainant states that prior to December 26, 2012, its website received over 203,000 hits, and over 250,000 tools and resources were downloaded from its website. Complainant claims that links to the NEW YORK MAKES WORK PAY program’s website have been included on the websites of over 20,000 organization, state agency, and federal agency websites. Complainant also contends that its NEW YORK MAKES WORK PAY program has been heavily promoted, with over 250,000 postcards and over 1,000,000 pieces of promotional literature prominently featuring the NEW YORK MAKES WORK PAY mark being disseminated across the state of New York over the past two years. Complainant also claims that the program’s website has been promoted through public transportation marketing initiatives, including bus-side banners in metropolitan New York City. Additionally, Complainant notes that it owns domain registrations for the <nymakesworkpay.com>, <newyorkmakesworkpay.com>, and <newyorkmakesworkpay.org> domain names. In light of this evidence, the Panel finds that the NEW YORK MAKES WORK PAY mark has achieved secondary meaning associated with Complainant and its NEW YORK MAKES WORK PAY program. Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i) dating back to Complainant’s first use of the mark in 1998. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning); see also Palm Desert Nat’l Bank, N.A. v. Manila Indus., Inc., FA 843468 (Nat. Arb. Forum Jan. 17, 2007) (“Complainant’s . . . registrations for the <palmdesertnationalbank.net> and <palmdesertnationalbank.org> domain names serve as further evidence of Complainant’s rights in the mark.”).
The <nymakesworkpay.org> domain name is confusingly similar to Complainant’s NEW YORK MAKES WORK PAY mark. The disputed domain name abbreviates the term “NEW YORK” from Complainant’s mark as “ny,” eliminates the spaces between words in Complainant’s mark, and affixes the generic top-level domain (“gTLD”) “.org.” None of these alterations to Complainant’s mark are capable of distinguishing the disputed domain from Complainant’s mark under Policy ¶ 4(a)(i). See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel determines that the<nymakesworkpay.org> domain name is confusingly similar to Complainant’s NEW YORK MAKES WORK PAY mark pursuant to 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.”).
There is no evidence that Respondent has been commonly known by the <nymakesworkpay.org> domain name. Respondent is in no way connected to Complainant, and has no authority, license, permission, or other arrangement from Complainant to use the NEW YORK MAKES WORK PAY mark. The WHOIS information on record identifies Respondent as “Jim Grier, LLC,” which does not appear to resemble the <nymakesworkpay.org> domain name. Given the evidence presented by Complainant, coupled with Respondent’s failure to submit a Response rebutting Complainant’s claims, the Panel concludes that Respondent is not commonly known by the <nymakesworkpay.org> domain name within the meaning of Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant was the original registrant of the <nymakesworkpay.org> domain name, registering the domain on June 13, 2008. This registration was not set to expire until June 13, 2013, but that on or around December 26, 2012, Complainant learned that its registration for the <nymakesworkpay.org> domain name had been hacked, and the domain had been fraudulently transferred without Complainant’s knowledge or consent. Complainant states that in early January 2013, it learned that Respondent was using the <nymakesworkpay.org> domain name to resolve to the adult-oriented website <lemonparty.tv>. Respondent’s apparent hacking into Complainant’s domain name registration account in order to take control of the disputed domain name, which was previously registered by Complainant, provides evidence that Respondent’s use of the <nymakesworkpay.org> domain name constitutes neither a bona fide use pursuant to Policy 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii). See Ezquest, Inc. v. Baorui, FA 1445631 (Nat. Arb. Forum July 3, 2012) (finding that Respondent’s hijacking of Complainant’s domain name and fraudulent transfer to itself does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under the Policy); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”). Respondent’s use of the <nymakesworkpay.org> domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) on this basis.
Respondent’s use of the <nymakesworkpay.org> domain name to redirect Internet users to a website featuring adult-oriented material demonstrates Respondent’s failure to use the domain in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s redirection of the disputed domain to the adult-oriented website <lemonparty.tv> negates Respondent’s attainment of rights or legitimate interests in the <nymakesworkpay.org> domain pursuant to Policy ¶ 4(a)(ii). See Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to [adult-oriented material] is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant alleges that through its registration and use of a domain name that is confusingly similar to Complainant’s NEW YORK MAKES WORK PAY mark, Respondent is diverting Internet users seeking information about Complainant’s services and/or seeking access to Complainant’s website previously housed at the disputed domain to Respondent’s commercial site. Such diversion for commercial gain evidences registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). Respondent’s appropriation of a domain name that was previously held by Complainant and remains confusingly similar to Complainant’s mark evidences Respondent’s intent to create confusion with Complainant. Respondent generates some degree of commercial gain through its use of the <nymakesworkpay.org> domain, suggesting that such commercial gain motivated Respondent’s registration of the disputed domain. Accordingly, the Panel holds that Respondent has registered and used the <nymakesworkpay.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant also alleges that Respondent hacked into Complainant’s domain name registration account and fraudulently transferred the <nymakesworkpay.org> domain name from Complainant to Respondent without Complainant’s knowledge or consent. Complainant urges that this activity evidences bad faith as well. The Panel agrees, finding that Respondent’s wrongful acquisition of a domain name that was previously registered to Complainant exhibits bad faith registration and use. See Ezquest, Inc. v. Baorui, FA 1445631 (Nat. Arb. Forum July 3, 2012) (finding that hacking a complainant’s registration account is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”). Respondent’s registration and use of the <nymakesworkpay.org> domain name was in bad faith under Policy ¶ 4(a)(iii) on this basis as well.
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 <nymakesworkpay.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 22, 2013
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