New York City Police Foundation, Inc. v.
Chris Hoffman
Claim
Number: FA0406000286046
Complainant is New York City Police Foundation, Inc. (“Complainant”),
represented by Lisa Rosenburgh of Sullivan & Worcester LLP,
1290 Avenue of the Americas, New York, NY 10104. Respondent is Chris
Hoffman (“Respondent”), 1523 Main Street, Santa Monica, CA 90403.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <nypd24-7.com> and <nypd247.com>,
registered with Go Daddy Software, Inc.
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 (the "Forum")
electronically on June 11, 2004; the Forum received a hard copy of the
Complaint on June 14, 2004.
On
June 14, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <nypd24-7.com> and <nypd247.com> are
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy Software, Inc. has verified that Respondent
is bound by the Go Daddy Software, 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
June 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding
(the "Commencement Notification"), setting a deadline of July 7, 2004
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@nypd24-7.com and postmaster@nypd247.com 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
July 15, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nypd24-7.com> and
<nypd247.com> domain names are confusingly similar to
Complainant’s NYPD mark.
2. Respondent does not have any rights or
legitimate interests in the <nypd24-7.com> and <nypd247.com>
domain names.
3. Respondent registered and used the <nypd24-7.com>
and <nypd247.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, New
York City Police Foundation, Inc., is a non-profit organization established in
1971 to improve public safety services in New York City and to strengthen the
relationship between the New York City Police Department and the public. Complainant has been granted, through
current Police Commissioner Raymond W. Kelly, the right to use and license the
NYPD marks owned by the City of New York.
The City owns
numerous trademarks with the United States Patent and Trademark Office for
NYPD-related marks, including POLICE NYPD (Reg. No. 2,139,804 issued February
24, 1998 and Reg. No. 2,149,603 issued April 7, 1998), POLICE NYPD CITY OF NEW
YORK POLICE (Reg. No. 2,143,609 issued March 10, 1998 and Reg. No. 2,147,995
issued March 31, 1998). The City also
holds pending trademark applications for the NYPD (App. No. 76/342,567 filed
November 28, 2001) and POLICE DEPARTMENT CITY OF NEW YORK (App. No. 76/342,569
filed November 28, 2001) marks.
Furthermore, the NYPD mark and its related marks have been continuously
and extensively used to identify the services of the New York Police Department
since its establishment in 1845.
Complainant uses
the NYPD marks to raise funds by selling NYPD merchandise, including key
chains, hats, t-shirts, and numerous other souvenir items and has used the NYPD
marks in this capacity since at least as early as November 1993. Proceeds from the merchandise go directly to
Complainant to be used in its efforts to support the New York City Police
Department. Following the terrorist
attacks in New York City on September 11, 2001, public support for the New York
City Police Department resulted in a significant increase in NYPD merchandise
sales.
Respondent
registered the <nypd24-7.com> and <nypd247.com>
domain names on May 12, 2004.
Respondent is using the disputed domain names to redirect Internet users
to Respondent’s <plannedchildhood.org> website, which displays links, in
part, to anti-abortion messages and to claims that computers are satanic
instruments.
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
established with extrinsic proof in this proceeding that it has rights in the
NYPD mark and numerous other NYPD-related marks through its applications and
registrations with the United States Patent and Trademark Office and by
continuous use of its marks in the public sector for nearly one hundred and sixty
years. See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that Complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist. Rights in the mark can be
established by pending trademark applications).
The <nypd24-7.com>
and <nypd247.com> domain names registered by Respondent are
confusingly similar to Complainant’s NYPD mark because the domain names
incorporate Complainant’s mark in its entirety, adding only numeric
designations. The mere addition of
numerals or numeric combinations to Complainant’s mark does not negate the
confusing similarity of Respondent’s domain names pursuant to Policy ¶
4(a)(i). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that adding the suffixes "502" and
"520" to the ICQ trademark does little to reduce the potential for
confusion); see also Omnitel
Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding
that the contested <omnitel2000.com> domain name is confusingly similar
to the OMNITEL trademark); see also Am.
Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000)
(finding that the addition of the numeral 4 in the domain name <4icq.com>
does nothing to deflect the impact on the viewer of the mark ICQ and is
therefore confusingly similar).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the
<nypd24-7.com> and <nypd247.com> domain
names. Due to Respondent’s failure to
respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain names. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). 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 Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names).
Furthermore,
where Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See 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”); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
Respondent is
using the <nypd24-7.com> and <nypd247.com> domain names
to redirect Internet users to a website that is completely unrelated to
Complainant’s NYPD mark and which features, in part, anti-abortion messages and
claims of a satanic link to the Internet.
Respondent’s use of domain names that are confusingly similar to
Complainant’s NYPD mark to redirect Internet users interested in information
regarding Complainant to a website that displays links to various websites and
messages wholly unrelated to Complainant is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of a domain name pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot
Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s
diversionary use of Complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s
mark “as a portal to suck surfers into a site sponsored by Respondent hardly
seems legitimate”); see also Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole
purpose in selecting the domain names was to cause confusion with Complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use); see also 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).
Finally,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <nypd24-7.com> and <nypd247.com>
domain names. Furthermore, Complainant
has not authorized or licensed Respondent to use its NYPD marks. Thus, Respondent has not established rights
or legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See 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); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
While each of
the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad
faith use and registration of a domain name, additional factors can also be
used to support findings of bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive.”).
Both the <nypd24-7.com>
and <nypd247.com> domain names use confusingly similar
versions of Complainant’s NYPD marks and resolve to websites featuring a number
of politically charged messages and links, including predominantly
anti-abortion material. The Panel finds
that using domain names confusingly similar to Complainant’s mark to divert
Internet users to a website displaying politically charged content such as
abortion constitutes bad faith pursuant to Policy ¶ 4(a)(iii). See McClatchy Mgmt. Servs., Inc.
v. William and Mark Purdy II, Willaim S. Purdy, FA 153541 (Nat. Arb. Forum
May 28, 2003) (“By intentionally taking advantage of the goodwill surrounding
Complainant’s mark to further its own political agenda, Respondent registered
the disputed domain names in bad faith”); see also Journal Gazette
Co. v. Domain For Sale Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002)
(“Respondent chose the domain name to increase the traffic flowing to the
<abortionismurder.org> and <thetruthpage.com> websites”).
Respondent’s
registration of the <nypd24-7.com> and <nypd247.com>
domain names, which incorporate Complainant’s well-known NYPD mark, adding only
a numeric combination, suggests that Respondent knew of Complainant’s rights in
the NYPD mark. Complainant’s NYPD mark
has gained notoriety through an outpouring of support following the events of
September 11, 2001, which led to a significant increase in NYPD merchandise
sales. Thus, the Panel finds that
Respondent chose the disputed domain names based on the distinctive and
well-known qualities of Complainant’s mark.
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively”); 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); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constituted bad faith).
Accordingly, 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 <nypd24-7.com> and < nypd247.com>
domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
July 29, 2004
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