National Geographic Society v Stonybrook Investments, LTD.
Claim Number: FA0012000096263
The Complainant is National Geographic Society, Washington, DC, USA ("Complainant") represented by Jessica M. Brodey, of Arent Fox Kintner Plotkin & Kahn. The Respondent is Stonybrook Investments, LTD., Belize City, BZ ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is nationalgeographics.com registered with Tucows.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.
Judge Ralph Yachnin, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 11, 2000; the Forum received a hard copy of the Complaint on December 11, 2000.
On December 13, 2000, Tucows.com confirmed by e-mail to the Forum that the domain name nationalgeographics.com is registered with Tucows.com and that the Respondent is the current registrant of the name. Tucows.com has verified that Respondent is bound by the Tucows.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 2001 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 Respondentís registration as technical, administrative and billing contacts, and to firstname.lastname@example.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 January 11, 2001, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin 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 Forumís Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant alleges the following:
Respondent did not submit a response in this matter.
Complainant owns the following trademarks, on which it bases its complaint:
NATIONAL GEOGRAPHIC, Reg. No. 524,810, in International Class 41, used in connection with exploring and discovering, gathering, compiling and disseminating information and knowledge of science and earth, based on a first use date of 1888.
NATIONAL GEOGRAPHIC, Reg. No. 701,405, in International Class 38, used in connection with monthly periodicals, books, maps, and other publications, based on a first use date of 1888.
NATIONAL GEOGRAPHIC, Reg. No. 735,312, in International Class 26, used in connection with terrestrial globe equipped with reversible stand and a nesting transparent spherical segmented overlay, based upon a first use date of March 13, 1961.
NATIONAL GEOGRAPHIC, Reg. No. 997,183, in International Class 41, used in connection with documentary television series, based upon a first use date of September 10, 1965.
NATIONALGEOGRAPHIC.COM, Reg. No. 2,346,583 in International Classes 41 and 42, for use in connection with providing information in the field of geography exploration and research via a global computer network and providing information in the field of geography education via a global computer network, based upon a first use date of June 20, 1996.
Respondent, Stonybrook Investments, LTD, obtained the disputed domain name through a transfer from Data Art Corp. At the time Data Art Corp. registered the domain name, Respondent, Stonybrook Investments, was listed as administrative contact for the disputed domain name. On April 22, 1999, Complainant sent a cease and desist letter to Data Art Corp, giving notice of a dispute regarding the domain name. Thereafter, Data Art Corp. transferred the registration of the domain name to Respondent. Complainant sent a cease and desist letter to Respondent, Stonybrook Investments, on October 26, 2000, again providing notice of the dispute.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
The Panel must first consider whether Complainant has rights in a mark which is identical or confusingly similar to the disputed domain name. A review of the evidence presented indicates that Complainant holds certificates of registration for numerous marks including NATIONAL GEOGRAPHIC and NATIONALGEOGRAPHIC.COM.
The domain name at issue, nationalgeographics.com, is confusingly similar to Complainantís NATIONAL GEOGRAPHIC and NATIONALGEOGRAPHIC.COM marks. The addition of the letter ësí does not detract from the similarity of the marks, and actually adds to the potential for confusion. See Bank of American Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondentís domain name wwwbankofamerica.com is confusingly similar to Complainantís registered trademark "Bank of America" because it "takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet"); Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter "s" from the Complainantís UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainantís mark).
Thus, Complainant has satisfied paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
Based on the evidence presented, the Panel finds that Respondent has no rights or legitimate interest in the domain names at issue. Respondent has not made a bona fide offering of goods or services using the name, and has demonstrated no preparation to do so. Respondent is not commonly known as nationalgeographics.com, as an individual, business, or otherwise. Respondent is not making a noncommercial or fair use of the domain name. See The Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proved).
Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
Respondent has obtained registration and used the domain name in bad faith. As noted above, Respondent obtained registration of the domain name after the original registrant received a cease and desist letter from Complainant. At that time, Respondent was acting as administrative contact for the nationalgeographics.com domain name. Thus, at the time Respondent took possession of the domain name, National Geographic had already put the parties on notice of its claimed exclusive rights in NATIONAL GEOGRAPHIC and NATIONALGEOGRAPHIC.COM. Therefore, the Panel concludes that Respondentís taking possession of the domain name with knowledge of Complainantís rights indicates registration in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).
Further, the registration of a domain name which is highly similar to Complainantís well known NATIONAL GEOGRAPHIC marks, combined with no good faith explanation, bolsters a finding of bad faith. See Dr. Karl Albrecht v. Eric 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 Complainantís name).
By using the domain name nationalgeographics.com to attract Internet users to a commercial site, OTCStreet.com, Complainant is creating a likelihood of consumer confusion about the source, sponsorship, affiliation or endorsement of its web site. Respondent is free to attract internet users to its web site, but it may not use the domain name nationalgeograpics.com to do so. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name statefarmnews.com in bad faith because Respondent intends to use Complainantís marks to attract the public to the web site without permission from Complainant).
The domain name nationalgeographics.com registered to Respondent shall be transferred to Complainant, National Geographic Society.
Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 11, 2001
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