Bob Jones University v. Mike Kane
Claim
Number: FA0409000324692
Complainant is Bob Jones University (“Complainant”), represented
by James M. Bagarazzi, of Dority & Manning,
P.O. Box 1449, Greenville, SC 29602-1449.
Respondent is Mike Kane (“Respondent”),
235 W. 102 Street, New York, NY 10025.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bobjonesuniversity.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com.
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 September 8, 2004; the Forum received a hard copy of the
Complaint on September 13, 2004.
On
September 8, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the Forum that the domain name <bobjonesuniversity.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc.
d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.com 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
September 14, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 4, 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@bobjonesuniversity.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
October 7, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bobjonesuniversity.com>
domain name is identical to Complainant’s BOB JONES UNIVERSITY mark.
2. Respondent does not have any rights or
legitimate interests in the <bobjonesuniversity.com> domain name.
3. Respondent registered and used the <bobjonesuniversity.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Bob
Jones University, was established in 1927 as a provider of educational
services. Complainant filed its
registration application for the BOB JONES UNIVERSITY mark with the United
States Patent and Trademark Office (“USPTO”) on September 27, 2002, and was
granted registration on April 6, 2004 (Reg. No. 2,829,330). The USPTO registration information lists the
first use of the BOB JONES UNIVERSITY mark as being as early as 1947 in
connection with “[e]ducation services namely, providing courses of instruction
at the college and university undergraduate and graduate level.”
Respondent
registered the domain name <bobjonesuniversity.com> on March 27, 2002. Respondent is using the disputed domain name
to host a website that contains an editorial paper entitled “The Kerry Files:
The Young Opportunist’s Handbook,” which is an examination of the 2004
presidential candidate John Kerry’s military service.
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
registered the BOB JONES UNIVERSITY mark with the USPTO on April 6, 2004. Generally, the registration of a mark with
an appropriate governmental authority is sufficient under the Policy for a
complainant to establish rights. See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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 Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
The successful
registration of a mark with the USPTO is prima facie proof of a complainant’s
continual use of the mark, which dates back to the complainant’s initial
application for registration. In the
instant case, however, Complainant filed its application for registration of
the BOB JONES UNIVERSITY mark on September 27, 2002, which is exactly six
months after Respondent registered the domain name <bobjonesuniversity.com>. See J. C. Hall Co. v. Hallmark Cards,
Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the
Principal Register is prima facie proof of continual use of the mark, dating
back to the filing date of the application for registration); see also FDNY
Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26,
2003) (finding that Complainant’s rights in the successfully registered FDNY
mark date back to the original registration application that was filed with the
U.S. Patent and Trademark Office).
Panels have
found that a complainant’s rights in a mark must predate the disputed domain
name’s registration to prevail under paragraph 4(a)(i) of the Policy. In the instant case, Respondent registered
the domain name prior to Complainant establishing its registration rights in
the BOB JONES UNIVERSITY mark. See Abt
Elecs., Inc. v. Motherboards.com, FA 221239 (Nat. Arb. Forum
Feb. 20, 2004) (rejecting the Travant Solutions Inc. approach to
Policy ¶ 4(a)(i) and agreeing with the "vast majority of
decisions" that Complainant's rights must predate Respondent's
registration of a domain name in order for Complainant to prevail).
Therefore, the question is whether Complainant had rights in the
BOB JONES UNIVERSITY mark prior to March 27, 2002, which is the day Respondent
registered the disputed domain name.
Absent a federal registration with the USPTO, a complainant may
establish rights in a mark under paragraph 4(a)(i) of the Policy by presenting
evidence that would prove the mark is distinctive, which is the threshold to
establishing common law rights in a mark.
A mark may be distinctive either through its inherent nature or through
a showing of secondary meaning associated with the mark. Here, the BOB JONES UNIVERSITY mark is not
inherently distinctive. Yet,
Complainant has stated in the Complaint that Bob Jones University was
established in 1927 and the USPTO registration information lists the first use
of the BOB JONES UNIVERSITY mark as being as early as 1947. In the absence of a Response, these two
facts establish that Complainant has used the BOB JONES UNIVERSITY mark
continuously and extensively in commerce since at least as early as 1947, well
before Respondent’s registration of the disputed domain name. Therefore, the Panel may find that
Complainant has established rights in the BOB JONES UNIVERSITY mark pursuant to
paragraph 4(a)(i) of the Policy. See
Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a
trademark be registered by a governmental authority for such rights to
exist.”); see also McCarthy on Trademarks and Unfair Competition, §
25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope”
in that “the reference to a trademark or service mark ‘in which the complainant
has rights’ means that ownership of a registered mark is not
required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy); see also Wal-Mart Stores, Inc. v. MacLeod,
D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to
register all possible domain names that surround its substantive mark does not
hinder Complainant’s rights in the mark. “Trademark owners are not required to
create ‘libraries’ of domain names in order to protect themselves”); see
also Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
the said name [<keppelbank.com>] in connection with its banking business,
it has acquired rights under the common law.”).
The domain name <bobjonesuniversity.com>
is identical to Complainant’s BOB JONES UNIVERSITY mark because the domain
name incorporates the mark in its entirety and has merely added the top-level
domain “.com,” which is immaterial in determining whether a domain name is
identical or confusingly similar to a third-party mark under the Policy. See Oki Data Americas, Inc. v. ASD Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a
Complainant’s registered mark is sufficient to establish identical or confusing
similarity for purposes of the Policy.”); see also Daedong-USA,
Inc., Kioti Tractor Division v. O’Bryan Implement Sales, FA 210302
(Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy
4(a)(i).”); see also Nevada State Bank v. Modern Ltd. – Cayman Web
Dev., FA204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level
domain is irrelevant when considering whether a domain name is identical or
confusingly similar under the Policy.”).
Complainant has
established Policy ¶ 4(a)(i).
Respondent has
failed to respond to Complainant’s allegations set forth in the Complaint. Therefore, the Panel may accept all
reasonable allegations in the Complaint as true. The Panel may also construe Respondent’s failure to respond as an
implicit admission that Respondent lacks rights and legitimate interests in the
disputed domain name. See 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); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”); see also Am. Online, Inc. v. Clowers, FA
199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a
complainant’s allegations allows a panel to accept all of the complainant’s
reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a
complaint allows a panel to make reasonable inferences in favor of a
complainant and accept the complainant’s allegations as true).
The record does
not contain any significant evidence that Respondent is commonly known by the
domain name <bobjonesuniversity.com> pursuant to paragraph
4(c)(ii) of the Policy. The only
pertinent evidence is the WHOIS registration information, which lists the
registrant of the domain name as “Mike Kane” and this name has no apparent
correlation to the disputed domain name.
See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(finding that the WHOIS information, and its failure to imply that Respondent
is commonly known by the disputed domain name, is a 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); see also
RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
The registration
of a domain name that is identical or confusingly similar to a third-party
mark, that is used to host content completely unrelated to the domain name, and
that is used simply to siphon Internet users away from an intended destination
to an unrelated website, is neither a bona fide offering of goods or
services under paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial
or fair use under paragraph 4(c)(iii) of the Policy. In the instant case, Respondent registered a domain name that is
identical to Complainant’s BOB JONES UNIVERSITY mark and has used the domain
name to direct Internet users to an unrelated editorial page that relates to
the United States Presidential campaign of 2004. Moreover, Respondent has used the goodwill developed by
Complainant in the BOB JONES UNIVERSITY mark in order to accomplish this end,
which is not a bona fide offering of goods or services under paragraph
4(c)(i) of the Policy, or a legitimate noncommercial or fair use under
paragraph 4(c)(iii) of the Policy. See
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 bona fide offering
of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Communications
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 Disney Enterss, 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 Bank of
Am. Corp. v. Northwest Free Community 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).”); see
also Seiko Kabushiki Kaisha v. CS into Tech, FA
198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also Golden
Bear Int’l, Inc. v. Kangdeock-Ho, FA
190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent 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).”).
Complainant has
established Policy ¶ 4(a)(ii).
Policy ¶ 4(b),
pertaining to bad faith registration and use, contains indicators of bad faith,
but is non-exclusive. See Digi Int’l
v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that
Policy paragraph 4(b) sets forth certain circumstances, without limitation,
that shall be evidence of registration and use of a domain name in bad faith); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be
illustrative, rather than exclusive.”); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (the
Policy “indicates that its listing of bad faith factors is without
limitation”).
Complainant has
asserted that Respondent registered and used the disputed domain name in bad
faith by capitalizing on the goodwill and reputation associated with
Complainant’s BOB JONES UNIVERSITY mark to attract Internet users to a website,
which contains an editorial page relating to the United States Presidential
campaign of 2004—an obviously controversial subject area that may lead some
Internet users to believe that Complainant’s educational institution may either
be sponsoring or supporting the posted opinions. The effect of such a belief would be to tarnish and/or dilute the
BOB JONES UNIVERSITY mark. The Panel
finds that such a scenario is likely, that Complainant’s assertions are
entirely reasonable, that there has been no refutation of such assertions, and
the evidence suggests that, but for Complainant’s use of the BOB JONES
UNIVERSITY mark, Respondent would not have registered the disputed domain name
and thus Respondent registered and used the domain name in bad faith. See CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to
provide evidence to controvert Complainant's allegation that Respondent
registered the name in bad faith and any future use of the name would only
cause confusion with Complainant’s mark); see also Kraft Foods v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that
Respondent [chose] to register a well known mark to which he has no connections
or rights indicates that he was in bad faith when registering the domain name
at issue.”); see also Albrecht v. Natale, FA 95465 (Nat. Arb.
Forum Sept. 16, 2000) (finding bad faith registration and use where Respondent
registered a domain name incorporating Complainant’s mark and Respondent failed
to show circumstances in which such a registration could be done in good
faith).
The foregoing
also establishes that Respondent had knowledge of Complainant’s rights in the
BOB JONES UNIVERSITY mark prior to registering the disputed domain name, which
is also evidence of bad faith registration and use of the domain name. 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
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) ("Where an alleged infringer chooses a mark he knows to be similar
to another, one can infer an intent to confuse."); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with
Complainant and its products that the use of the domain names by Respondent,
who has no connection with Complainant, suggests opportunistic bad faith); see
also Albrecht v. Natale, FA 95465
(Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where
there is no reasonable possibility, and no evidence from which to infer that
the domain name was selected at random since it entirely incorporated
Complainant’s name); see also Cellular
One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when
(1) the domain name contains Complainant’s mark in its entirety, (2) the mark
is a coined word, well-known and in use prior to Respondent’s registration of
the domain name, and (3) Respondent fails to allege any good faith basis for
use of the domain name).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bobjonesuniversity.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
October 21, 2004
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page