DECISION

National Press Club v. High Traffic Domains inc a/k/a Cheap Domains Buy this domain for $1000 or less

Claim Number:  FA0304000154113

PARTIES

Complainant is the National Press Club, Washington, DC (“Complainant”) represented by David J. Ervin, of Collier Shannon Scott PLLC. Respondent is High Traffic Domains inc a/k/a Cheap Domains Buy this domain for $1000 or less, Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nationalpressclub.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant electronically submitted a Complaint to the National Arbitration Forum (the "Forum") April 7, 2003; the Forum received a hard copy of the Complaint April 7, 2003.

On April 18, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <nationalpressclub.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, 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 April 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 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@nationalpressclub.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 May 19, 2003, pursuant to Complainant's request to have the dispute decided by a single member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 documents submitted and in accordance with 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <nationalpressclub.com>, is identical to Complainant’s NATIONAL PRESS CLUB mark.

2. Respondent has no rights or legitimate interests in the <nationalpressclub.com> domain name.

3. Respondent registered and used the <nationalpressclub.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, the National Press Club, holds rights in the NATIONAL PRESS CLUB mark. Complainant holds several registrations for stylized versions of the mark (e.g., U.S. Reg. No. 2,399,568, registered on October 31, 2000), as well as several trademarks for the word mark (e.g., U.S. Reg. No. 2,399,588, registered on October 31, 2000). Complainant has continually operated under the NATIONAL PRESS CLUB mark since at least 1920 as a provider of services for the advancement of the profession of journalism. Complainant provides professional services and support, including research, training, news publications and restaurant, catering and entertainment services. Complainant’s membership includes seventeen consecutive former Presidents of the United States along with other famous newsmakers. Complalinant regularly hosts a Luncheon Speakers Series where influential speakers (such as Heads of State) address topics relevant to journalism. Complainant has maintained a presence on the web at the <press.org> domain name since June 1994.

Respondent, High Traffic Domains inc a/k/a Cheap Domains Buy this domain for $1000 or less, registered the <nationalpressclub.com> domain name on May 21, 2002, but is not licensed or authorized to use Complainant’s NATIONAL PRESS CLUB mark for any purpose. According to Yahoo.com’s People Search Database, Respondent’s contact address is that of the notorious cybersquatter John Barry. As in previous administrative proceedings involving John Barry (see Pulitzer, Inc. and St. Louis Post-Dispatch, LLC v. John Barry a/k/a Buy This Domain, FA 114673 [Nat. Arb. Forum Aug. 13, 2002]; The Journal Gazette Co. v. Domain For Sale Inc. a/k/a Domain World, FA 122202 [Nat. Arb. Forum Oct. 9, 2002], Respondent has redirected the disputed domain name to an anti-abortion website at the <abortionismurder.org> domain name. This page depicts graphic pictures of aborted human fetuses and provides links to editorials, videos, and other information related to abortions. Respondent has also redirected the disputed domain name to another opinion web page at the <thetruthpage.org> domain name, and an online pharmacy at the <pillstore.com> domain name. Currently, the disputed domain name redirects Internet users to a website that proposes to offer the <nationalpressclub.com> domain name registration for sale for $549.

DISCUSSION

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 will draw such inferences as the Panel 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.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the NATIONAL PRESS CLUB mark through registration of the mark with the U.S. Patent and Trademark Office and by continuous use of the mark for almost 90 years.

The domain name registered by Respondent, <nationalpressclub.com>, is identical to Complainant’s NATIONAL PRESS CLUB mark. Elimination of the spaces in a registered mark does not prevent a finding of identicality. The same logic holds true for the addition of the top-level domain “.com,” as both of these changes are a function of the standardized nature of domain names, and not deliberate introductions by Respondent such as would distinguish the name. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).

Accordingly, the Panel finds that the <nationalpressclub.com> domain name is identical to Complainant’s NATIONAL PRESS CLUB mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant carries the initial burden of demonstrating that Respondent has no rights or legitimate interests in the disputed domain name. Complainant can meet this burden by showing that Respondent cannot rely upon the examples of circumstances demonstrating rights or legitimate interests in a domain name listed in Policy ¶¶ 4(c)(i)-(iii). Such a showing establishes a prima facie case against Respondent, shifting the burden to Respondent.  Respondent did not file a Response to the Complaint and therefore has made no effort to meet its burden. See 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where a 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”).

Respondent, the notorious cybersquatter John Barry, is not “commonly known by” the disputed domain name. Both the name given in the WHOIS contact information for the disputed domain name and the fame surrounding Complainant’s longstanding use of the NATIONAL PRESS CLUB mark support the reasonable inference that Policy ¶ 4(c)(ii) does not apply to Respondent. See Tercent Inc. v. Lee 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 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").

Respondent has previously used the disputed domain name to redirect Internet users to various websites unrelated to the NATIONAL PRESS CLUB mark: the <abortionismurder.org>, <thetruthpage.org> and <pillstore.com> domain names. Some of these domain names tarnish Complainant’s mark by expressing a viewpoint under the mark that is inconsistent with Complainant’s desire to convey impartiality. Others are simply commercial in nature, taking advantage of Complainant’s mark to divert Internet users for Respondent’s financial gain. In each instance, Respondent’s redirection of Internet users from the disputed <nationalpressclub.com> domain name cannot be considered either “bona fide” or “noncommercial or fair” use, making Policy ¶ 4(c)(i) and (iii) inapplicable to Respondent. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); 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, Respondent’s use of the names was not in connection with the offering of goods or services or any other fair use).

Furthermore, Respondent’s current use of the domain name, purporting to offer the registration for sale, does not evidence a legitimate noncommercial or fair use of the domain name. The domain name is identical to Complainant’s mark and the sale offer for the domain name registration seems designed to force Complainant to purchase the domain name, this offer of sale fails to be a “bona fide” offering of goods or services. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <nationalpressclub.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered a domain name that is identical to Complainant’s NATIONAL PRESS CLUB mark. In the past, the disputed domain name created a likelihood of confusion as to whether Complainant sponsored or endorsed any of the content at the domain names to which Respondent redirected Internet users. With respect to the <pillstore.com> domain name, the Panel infers that Respondent’s reason behind its redirection was to receive referral fees from <pillstore.com>. In using a likelihood of confusion between Complainant’s mark and Respondent’s domain name for commercial gain, Respondent’s activities evidenced bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Currently, Respondent redirects Internet users to a website that purports to sell the disputed domain name for a price that undoubtedly exceeds Respondent’s out-of-pocket expenses with respect to the <nationalpressclub.com> domain name. Respondent has been known in the past to register domain names infringing on famous trademarks, and the Panel makes the reasonable inference that Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the NATIONAL PRESS CLUB mark. Thus, the Panel concludes that Respondent deliberately registered the disputed domain name so that it could ultimately sell its domain name registration to Complainant, the lawful holder of the trademark. Respondent’s previous uses of the domain name evidence bad faith in and of their own right, and also operated to make the purchase of the domain name by Complainant more desirable in that this purchase would prevent any additional activity by Respondent or a subsequent owner of the domain name registration that would tarnish Complainant’s mark. These facts support a finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

The Panel thus finds that Respondent registered and used the <nationalpressclub.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <nationalpressclub.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: June 2, 2003.

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