DECISION

Montgomery County Community College v. mf

Claim Number:  FA0402000238651

PARTIES

Complainant is Montgomery County Community College (“Complainant”) represented by Tristram R. Fall, of Fox Rothschild LLP, 2000 Market Street, 10th Floor, Philadelphia, PA 19103-3291.  Respondent is mf (“Respondent”), 425 W. 58th St., New York, NY 10019.

REGISTRAR AND DISPUTED DOMAIN NAME

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

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 February 20, 2004; the Forum received a hard copy of the Complaint on February 23, 2004.

On February 23, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <montgomerycountycommunitycollege.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 February 24, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 15, 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@montgomerycountycommunitycollege.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 March 24, 2004, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <montgomerycountycommunitycollege.com> domain name is identical and confusingly similar to Complainant’s MONTGOMERY COUNTY COMMUNITY COLLEGE common law mark.

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

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

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

FINDINGS

Complainant, Montgomery County Community College, is a provider of educational services in Montgomery County, Pennsylvania. Complainant has provided educational services, including opportunities for students to earn Associate Degrees in a variety of subjects, since 1966. Complainant is known for small class sizes, individual attention to students and offering practical education at an affordable cost.

Respondent registered the disputed domain name on March 27, 2003. Respondent is using the domain name to divert Complainant’s potential customers to Internet sites unrelated to Complainant’s services.

When Complainant first learned that the disputed domain name was registered in the name of a third party, the registrant was listed as “Baby Safe” and the disputed domain name redirected Internet users to the website of the <abortionismurder.org> domain name, which contains graphic images of aborted fetuses. On February 4, 2004, counsel for Complainant sent a cease and desist letter to “Baby Safe.” A few days after sending the letter, the registrant for the disputed domain name was changed, as well as the website to which Internet users were directed to when entering the domain name into their browsers. On February 10, 2004, the registrant for the disputed domain name was changed to “protest domains.” The first and second registrants of the domain name shared the same address in Bronx, New York. On February 16, 2004, the registrant for the disputed domain name was again changed to “Freedom Domains.” Visitors to the domain name were now automatically redirected to <thetruthpage.homestead.com/thetruthpage.html>, which appeared to be the same as the website located at <selwynduke.com>. This website contained links to various political and social commentary and opinion articles. Finally, on February 20, 2004 the registrant for the disputed domain name changed to the current registrant, “mf.” Currently, Internet users who enter the disputed domain name into their browsers are not directed to any website.

While the WHOIS information for this proceeding changed multiple times, the changes resulted from the cease and desist letter sent by Complainant to Respondent. Thus, the Panel concludes that Respondent is the same party throughout the registrant changes.

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

Registration of a mark with a governmental authority is unnecessary for a Complainant to establish rights to a mark if a common law mark has been established. 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 Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist.”).

 Complainant has established rights in the MONTOGERY COUNTY COMMUNITY COLLEGE mark through its ownership of a common law mark. Through Complainant’s long-term, continued use of the mark since 1966, Complainant and Complainant’s related services have acquired secondary meaning and become distinctive of Complainant’s services. A common law mark is established when a plaintiff’s goods or services become distinctive and acquire secondary meaning. Complainant has established secondary meaning in the MONTOGMERY COUNTY COMMUNITY COLLEGE mark through its continued use for the last 40 years. See 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); 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).

Respondent’s <montgomerycountycommunitycollege.com> domain name is identical to and therefore confusingly similar to Complainant’s common law mark because it incorporates Complainant’s mark in its entirety and only deviates by the removal of the spaces between the words and the addition of the top-level domain “.com.” Merely removing the spaces between the words in Complainant’s mark and adding the top-level domain “.com” does not remove the domain name out of the realm of confusing similarity with regard to Policy ¶ 4(a)(i). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name <mannbrothers.com> confusingly similar to Complainant’s MANN BROTHERS mark “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant urges that Respondent has no rights or legitimate interests in the disputed domain name. Based on Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true. 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.”); see also Vertical 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).

Although the disputed domain name currently resolves to a non-existent website, the fact that the registrant was changed immediately after the cease and desist letter was sent on February 4, 2002 and again changed six days later on February 10, 2002 and again on February 16, 2002 indicates that Respondent was likely trying to avoid this proceeding through changing registrants. Moreover, the first and second registrants of the domain name shared the same address in Bronx, New York, which provides further evidence that the same person was behind all three registrant changes and is the current Respondent in this case.

Respondent is using the <montgomerycountycommunitycollege.com> domain name to benefit from the goodwill Complainant has developed with the MONTGOMERY COUNTY COMMUNITY COLLEGE mark. Initially, the disputed domain name was used to redirect Internet users to <abortionismurder.org>, a website that contains graphic images of aborted fetuses, and other unrelated websites. Respondent’s use of Complainant’s entire mark to increase traffic to these graphic and politically charged websites that are completely unrelated to Complainant’s educational services does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate noncommercial or fair use of the name pursuant to Policy ¶ 4(c)(iii). 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 Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where Respondent was using Complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under Complainant’s mark); see also U.S. Franchise Sys., Inc. v. Howell III, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Moreover, Respondent has provided no proof and no evidence in the record suggest that Respondent is commonly known by the <montgomerycountycommunitycollege.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Four circumstances are listed under Policy ¶ 4(b) that, if proven, evidence bad faith use and registration of a disputed domain name. However, additional factors can also evidence bad faith registration and use. 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”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).

The Panel has previously determined that although the current website resolves to an inactive site, Respondent was likely responsible for the registrant changes to avoid this proceeding and is thus likely responsible for the previous redirection of Internet users searching under Complainant’s mark. 

Sufficient evidence exists in the record to suggest that Respondent registered and used the disputed domain name in bad faith. First, the domain name used by Respondent is identical to Complainant’s mark. Respondent used the domain name to redirect Internet users who intended to search under Complainant’s mark to a website that provided graphic images of aborted fetuses and other unrelated websites. These websites were completely unrelated to the educational services Complainant provides. Furthermore, the websites that Internet users were directed to when searching under Complainant’s mark capitalize on the goodwill Complainant established under its mark and likely tarnish Complainant’s mark. Intentionally taking advantage of the goodwill of a Complainant’s mark to further a political agenda and increase traffic to a website is evidence of bad faith registration and use. See Journal Gazette Co. v. Domain For Sale Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding “Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites); see also McClatchy Management Services, Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (finding “[b]y 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 Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).

Secondly, Respondent’s registration of Complainant’s mark in its entirety strongly suggests that Respondent had knowledge of Complainant’s educational services and associated reputation. Thus, Respondent likely knew Complainant owned common law rights to the MONTGOMERY COUNTY COMMUNITY COLLEGE mark and chose the <montgomerycountycommunitycollege.com> domain name based on its distinctive qualities.  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 Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); 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 Harrods Ltd. v. Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so obviously connected with well-known products, its very use by someone with no connection to these products can evidence opportunistic bad faith).

The Panel finds that ¶ 4(a)(iii) has been 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 <montgomerycountycommunitycollege.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated: April 6, 2004

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