DECISION

Bard College v. John Barry d/b/a Pro-Life Domains Not for Sale

Claim Number:  FA0312000220014

PARTIES

Complainant is Bard College, Annandale-on-Hudson, NY (“Complainant”) represented by Kyle W. Barnett, Esq., of Van DeWater & Van DeWater, LLP, PO Box 112, Poughkeepsie, NY 12602.  Respondent is John Barry d/b/a Pro-Life Domains Not for Sale, 5444 Arlington Ave. Apt. G14, Bronx, NY 10471-1239 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bardcollege.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 12, 2003; the Forum received a hard copy of the Complaint on December 12, 2003.

On December 12, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <bardcollege.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 December 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 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@bardcollege.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 January 13, 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.

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 <bardcollege.com> domain name is identical to Complainant’s BARD COLLEGE mark.

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

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

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

FINDINGS

Complainant has established common law rights in the BARD COLLEGE mark through continuous use since 1934 in connection with its educational services.

Respondent registered the disputed domain name, <bardcollege.com>, on January 11, 2002.

Respondent uses the domain names to direct Internet users to <abortionismurder.org>, which features graphic images of aborted fetuses, ostensibly conveying Respondent’s viewpoints relating to abortion practices.  Respondent’s address is the same address of the notorious cybersquatter John Barry, and Respondent’s name is one of his well-known aliases.  Respondent’s method of redirecting Internet users to the <abortionismurder.org> domain name is also the modus operandi for John Barry, and the Panel thus accepts Complainant’s uncontested asertion that Respondent and John Barry are the same person or entity.  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”).  

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 has established common law rights in the BARD COLLEGE mark through continuous use since 1934.  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 British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

The disputed domain name contains the BARD COLLEGE mark in its entirety.  The addition of a top-level domain name is irrelevant for the purposes of the Policy.  See Nikon, Inc. and Nikon Corp. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); 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);

Therefore, Policy ¶ 4(a)(i) is established.  

Rights or Legitimate Interests

Respondent has not asserted any rights or legitimate interests in the domain name.  Therefore, the Panel may accept all reasonable inferences of fact in the allegations of Complainant, without the benefit of a Response.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Vert. 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); 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, there is no evidence that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) because the WHOIS registration information fails to imply that Respondent is commonly known by the name.  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 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).

Respondent is not using the disputed domain names for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because it is diverting unsuspecting Internet users, who are attempting to find Complainant, to <abortionismurder.org>, a site wholly unrelated to Complainant’s mark.  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 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”).

Therefore, Policy ¶ 4(a)(ii) is established.

Registration and Use in Bad Faith

Respondent registered and uses the domain name in bad faith by appropriating Complainant’s BARD COLLEGE mark in its entirety, and luring Internet users seeking Complainant to a graphic site that depicts dead babies.  See McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby, 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. a/k/a Domain World, 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 has also evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii) because it registered the disputed domain name to cause confusion with Complainant’s BARD COLLEGE mark and prevented Complainant from reflecting its mark in that name.  As noted, Respondent has demonstrated a pattern of such behavior.  See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others).

Therefore, the Panel finds Policy ¶ 4(a)(iii) 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 <bardcollege.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  January 26, 2004

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