DECISION

Douglas Forrester v. Chris Hoffman d/b/a Planned Childhood, Inc.

Claim Number:  FA0307000170644

PARTIES

Complainant is Douglas Forrester, Lawrenceville, NJ (“Complainant”) represented by John Carrino, of Law Offices of John Carrino. Respondent is Chris Hoffman d/b/a Planned Childhood, Inc., Pacific Palisades, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dougforrester.com>, registered with Gandi.

PANEL

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 23, 2003; the Forum received a hard copy of the Complaint on July 23, 2003.

On July 28, 2003, Gandi confirmed by e-mail to the Forum that the domain name <dougforrester.com> is registered with Gandi and that Respondent is the current registrant of the name. Gandi has verified that Respondent is bound by the Gandi 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 July 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 18, 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@dougforrester.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 August 27, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <dougforrester.com> domain name is identical to Complainant’s DOUG FORRESTER mark.

2. Respondent does not have any rights or legitimate interests in the <dougforrester.com> domain name.

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

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

FINDINGS

Complainant, Douglas Forrester, was a candidate for the United States Sentate in New Jersey during the 2002 election. His campaign was against the incumbant Senator Robert Torricelli. Nationwide media coverage surrounded the election campaign between these two individuals. Doug Forrester has and continues to use his mark today in the marketplace.

Respondent, Chris Hoffman d/b/a Planned Childhood, Inc., registered the <dougforrester.com> domain name on October 1, 2002, one day after Senator Robert Torricelli resigned. Respondent uses the disputed domain name to redirect Internet users to the <plannedchildhood.com> domain name, an anti-abortion and anti-Planned Parenthood website that also espouses the beliefs that certain Fortune 500 companies are connected with the pornography industry, that the End Times are tied to the political struggle currently transpiring in the Middle East and that the computer is in some way a Satanic instrument. Complainant has not given Respondent permission to use his name in this manner.

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 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.

Identical and/or Confusingly Similar

Complainant claims that it has common-law rights in the DOUG FORRESTER mark. It is well established that registration of a mark is not an essential element of proving that a complainant “has rights” in a mark pursuant to Policy ¶ 4(a)(i). See 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 Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that Complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that Complainant has common law rights to her name).

In determining whether or not Complainant has common law rights in the DOUG FORRESTER mark, the Panel notes that Respondent failed to contest the allegations and the evidence contained within the Complaint. In this dispute, the Panel has chosen to view the Complaint in a light most favorable to Complainant, and will accept all reasonable allegations and inferences in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

The Panel is convinced by Complainant’s uncontested allegations that it has established common-law rights in the DOUG FORRESTER mark sufficient to grant standing under the UDRP. Complainant alleges that the DOUG FORRESTER mark is considered distinctive through his use and exposure of the mark in the marketplace, and provides evidence of its use of the mark in connection with its fundraising activities during the 2002 New Jersey Senate campaign. With no evidence before the Panel to contradict this assertion, the Panel finds that Complainant has established rights in his name pursuant to Policy ¶ 4(a)(i). See Barnes v. Old Barn Studios Ltd., D2001‑0121 (WIPO March 26, 2001) (all that is required for a famous or very well-known person to establish a common law trademark is likelihood of success in an action for passing off in the event of use in trade without authority); see also McCarthy on Trademarks and Unfair Competition, § 13:1 (4th ed. 2002) (stating that the basic rules pertaining to the protection of personal names require actual proof of secondary meaning for protection); see also Diller v. Internetco Corp., D2000-1734 (WIPO March 9, 2001) (transferring the <barrydiller.org> domain name to Complainant, a well known businessperson in film, television, and interactive technology industries); see also Calvert v. Domain Strategy, Inc., FA 162075 (Nat. Arb. Forum Aug. 1, 2003) (transferring the <kencalvert.com> domain name to Complainant, a U.S. Congressman).

Respondent’s <dougforrester.com> domain name is identical to Complainant’s DOUG FORRESTER mark. The elimination of the space between the Complainant’s first and last name and the addition of a top-level domain are both irrelevant for the purposes of Policy ¶ 4(a)(i), as they are technical features of the domain name imposed upon Respondent by the Domain Naming System. 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that the <dougforrester.com> domain name is identical to Complainant’s DOUG FORRESTER mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

In this dispute, the Panel chooses to view Respondent’s failure to Respond to the allegations in the Complaint as evidence that Respondent admits having no rights or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent uses the disputed domain and the goodwill that Complainant has built up around his name to redirect Internet users to its website which espouses a variety of opinions that are not endorsed by Complainant. Such use of Complainant’s mark in a domain name cannot be considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Similarly, Respondent’s use of Complainant’s mark is not a “fair use” of Complainant’s mark, making Policy ¶ 4(c)(iii) inapplicable to Respondent. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); 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”).

As Respondent identifies himself as “Chris Hoffman,” the Panel has no compelling reason to find that Respondent is “commonly known by” the DOUG FORRESTER mark, and holds that Respondent may not avail itself of 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 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").

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

Registration and Use in Bad Faith

In determining if the disputed domain name was registered and used in bad faith, the Panel need not look only to the enumerated examples of bad faith listed in Policy ¶¶ 4(b)(i)-(iv). In this dispute, the Panel finds sufficient evidence showing that the <dougforrester.com> domain name was registered and used in bad faith from an analysis of the totality of the circumstances surrounding Respondent’s use and registration of the domain name. 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”).

Specifically, the Panel infers that Respondent’s registration of a domain name that is identical to Complainant’s mark and that was registered immediately after a widely covered event in Complainant’s Senate campaign transpired is evidence that Respondent had actual knowledge of Complainant’s rights in the DOUG FORRESTER mark when it chose to register the disputed domain name. Registration of a domain name with actual knowledge of a trademark holder’s rights in that mark, with an intent to capitalize on the goodwill surrounding that mark, has been consistently held to be evidence of bad faith registration of a domain name under the Policy. See 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 Ballesteros Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that Respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).

Respondent uses the disputed domain name to redirect Internet users to its politically charged website at the <plannedchildhood.com> domain name. That website forwards a wide variety of opinions and ideas that would appear to be endorsed by Complainant as a result of the use of Complainant’s mark in the disputed domain name. As Complainant has denied any support or endorsement of the views advocated at the <plannedchildhood.com> domain name, the end result is tarnishment of the goodwill surrounding Complainant’s mark. This amounts to bad faith use of the disputed domain name under the Policy. See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

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

DECISION

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

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

Honorable Paul A. Dorf, (Ret.), Panelist

Dated:  September 3, 2003

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