Joey Dipaolo a/k/a The Joey DiPaolo AIDS
Foundation, Inc. v. Artur Genero a/k/a na
Claim
Number: FA0310000203168
Complainant is Joey Dipaolo a/k/a The Joey Dipaolo AIDS
Foundation, Inc. (“Complainant”), represented by John S. Parnese 1110 South Avenue, Staten Island, NY 10314. Respondent is Artur Genero a/k/a na (“Respondent”), 555 8th
Avenue #1001, New York, NY 10018.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <joeydipaoloaids.org>, registered with Network
Solutions, Inc.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 14, 2003; the Forum received a hard copy of the
Complaint on October 17, 2003.
On
October 14, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <joeydipaoloaids.org> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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
October 30, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
November 19, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@joeydipaoloaids.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
November 25, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra Franklin as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.[1]
A. Complainant makes the following assertions:
1. Respondent’s <joeydipaoloaids.org>
domain name is confusingly similar to Complainant’s JOEY DIPAOLO AIDS
FOUNDATION mark.
2. Respondent does not have any rights or
legitimate interests in the <joeydipaoloaids.org> domain name.
3. Respondent registered and used the <joeydipaoloaids.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
Joey DiPaolo AIDS Foundation, is a Not for Profit Organization under the State
of New York, providing public awareness concerning HIV/AIDS and providing
counseling to young people stricken with this disease. Complainant registered its service mark, THE
JOEY DIPAOLO AIDS FOUNDATION, on October 27, 1998 with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 2,200,305). Complainant was the holder of the disputed domain name, <joeydipaoloaids.org>,
from 1997 until September 2003.
Respondent,
Artur Genero a/k/a na, registered <joeydipaoloaids.org> on
September 2, 2003, soon after Complainant’s registration expired. Complainant asserts that Respondent is
diverting Internet traffic from the disputed domain name to pornographic
websites that include pop-up and “mouse trapping” advertising.
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."
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.
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 has
rights in the JOEY DIPAOLO AIDS FOUNDATION service mark through registration
with the USPTO and use in trade.
Respondent’s domain name <joeydipaoloaids.org> is
confusingly similar to Complainant’s JOEY DIPAOLO AIDS FOUNDATION mark; the
only difference is the omission of the word “foundation” and the addition of
the generic top-level domain (“gTLD”) “.org.”
A domain name that omits a generic word and adds a gTLD does not
distinguish the domain name from the trademark. See Wellness Int’l Network, LTD v.
Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) finding that the
domain name <wellness-international.com> is confusingly similar to
Complainant’s WELLNESS INTERNATIONAL NETWORK; see also Koninklijke Philips Elec. NV v. Ramazan Goktas, D2000-1638 (WIPO
Feb. 8, 2001) finding that the domain name <philips.org> is identical to
Complainant’s PHILIPS mark.
Accordingly, the
Panel finds that the <joeydipaoloaids.org> domain
name is identical to Complainant’s JOEY DIPAOLO AIDS FOUNDATION mark under Policy
¶ 4(a)(i).
Respondent has
failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations
and inferences in the Complaint as true.
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) holding that where Complainant has asserted that Respondent has no
rights or legitimate interests with respect to the domain name it is incumbent
on Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”; 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”).
Respondent is
using Complainant’s mark to divert Internet traffic to pornography. Diversion to pornography 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). See McClatchy Mgmt.
Serv., Inc. v. Carrington a/k/a Party Night Inc., FA 155902 (Nat.
Arb. Forum June 2, 2003) holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features
pornographic material, had been “consistently held” to be neither a bona fide
offering of goods or services . . . nor a legitimate noncommercial or fair use;
see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use.
Respondent is
not commonly known as <joeydipaoloaids.org>, given its WHOIS
registration information. Because it is
not known as the disputed domain name, the Panel can infer that the Respondent
has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. 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; see
also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark.
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the disputed domain name soon after Complainant allowed its
registration to lapse. Subsequent
registration of Complainant’s domain name, which is similar to Complainant’s
mark, constitutes bad faith registration under Policy ¶ 4(a)(iii). See
InTest Corp. v. Servicepoint,
FA 95291 (Nat. Arb. Forum Aug. 30, 2000) finding that, where the domain name
has been previously used by Complainant, subsequent registration of the domain
name by anyone else indicates bad faith, absent evidence to the contrary; see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000)
finding bad faith where Respondent took advantage of Complainant’s failure to
renew a domain name.
Respondent
registered and used the <joeydipaoloaids.org> domain name to
attract Internet users to pornography and pop-up and “mouse trapping”
advertising. The Panel infers that
Respondent not only knew of the mark before registration, but intentionally
sought to use the mark when the corresponding domain name’s registration
expired. Acting in this manner,
Respondent wanted to create commercial gain through a likelihood of confusion
as to the source, sponsorship, affiliation or endorsement of its website; this
is bad faith registration and use under Policy ¶ 4(b)(iv). See
National Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by
E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“it is now well known that
pornographers rely on misleading domain names to attract users by confusion, in
order to generate revenue from click-through advertising, mouse-trapping, and
other pernicious online marketing techniques”); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb.
27, 2002) holding that Respondent’s use of Complainant’s mark to post
pornographic photographs and to publicize hyperlinks to additional pornographic
websites evidenced bad faith use and registration of the domain name; see also Worldwinner.com, Inc. v. The
Cupcake Patrol a/k/a John Zuccarini a/k/a RaveClub Berlin, FA 175289 (Nat. Arb.
Forum Sept. 22, 2003).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <joeydipaoloaids.org> domain name be TRANSFERRED
from Respondent to The Joey DiPaolo AIDS Foundation
Sandra Franklin, Panelist
Dated:
December 6, 2003
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
[1] In addition, Complainant requests monetary damages; this kind of relief, however, is beyond the scope of the Policy. Complainant is free to pursue an appropriate action in another forum.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page