DECISION

Bates Technical College, District 28, State of Washington v. Anti-Globalization Domains

Claim Number:  FA0402000236536

PARTIES

Complainant is Bates Technical College, District 28, State of Washington (“Complainant”), Tacoma, WA, represented by Derek Edwards, Assistant Attorney General, 900 4th Avenue, Suite 2000, Seattle, WA 98164-1012.  Respondent is Anti-Globalization Domains (“Respondent”), 5444 Arlington Ave. #g14, Bronx, NY 10471.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <batestechnicalcollege.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 6, 2004; the Forum received a hard copy of the Complaint on February 9, 2004.

On February 12, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <batestechnicalcollege.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 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 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@batestechnicalcollege.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 21, 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <batestechnicalcollege.com> domain name is identical to Complainant’s BATES TECHNICAL COLLEGE mark.

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

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

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

FINDINGS

Complainant is the governmental authority in charge of administering and providing public educational services in the State of Washington.  These educational services are provided by an institution currently known as BATES TECHNICAL COLLEGE in District 28 of the State of Washington.  The BATES TECHNICAL COLLEGE is a two-year public technical college that has provided technical instruction since 1940, although under different names.  It was in 1991 when the educational services provided at the institution joined Complainant’s two-year community and technical college system.  The BATES TECHNICAL COLLEGE name has been used to identify the educational services that its institution provides since 1991.

Complainant also owns the registration application for the BATES TECHNICAL COLLEGE service mark that it filed on July 1, 2003 (Ser. No. 78/269162).

The BATES TECHNICAL COLLEGE currently has approximately 5,412 full-time students and has provided nearly 19,000 students educational instruction.  The college offers 65 career technical programs and is accredited by the Northwest Association of Schools and Colleges, an institutional accrediting body recognized by the council for Higher Education Accreditation and the U.S. Department of Education.

Respondent registered the disputed domain name, <batestechnicalcollege.com>, on April 25, 2002.  Respondent used the disputed domain name to direct Internet users to a website located at <abortionismurder.org>.

On December 8, 2003, Complainant’s counsel sent Respondent a cease and desist letter.  Respondent did not respond to Complainant’s letter.  On January 21, 2004, Respondent re-registered the domain name to “Baby Safe,” which listed its administrative contact e-mail as arikhan@hotmail.com. Complainant filed the Complaint in this administrative proceeding on February 6, 2004 and Complainant’s counsel sent an e-mail to the administrative contact for Baby Safe.  The registrar in both instances remained Intercosmos Media Group, Inc. d/b/a Directnic.com.  As of February 8, 2004, the domain name was still registered to Baby Safe.  By February 9, 2004, the registration for the domain name had once again changed to the current registrant, Anti-Globalization Domains, which also displayed the same address and e-mail as the notorious John Barry.  On the evening of February 9, 2004, the Forum e-mailed confirmation of the Complaint against Respondent.  On February 10, 2004, the registration for the disputed domain name had once again changed to “protest domains.” The disputed domain name currently resolves to a website located at <thetruthpage.homestead.com/thetruthpage.html>.

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

The Policy does not require that a mark be registered by a governmental authority to be afforded protection. 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”); 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”).

In order for a mark to be protected, there must be some evidence that the mark is distinctive.  A mark may be inadvertently distinctive or it may acquire distinctiveness through secondary meaning. See Restatement (Third) of Unfair Competition § 13, pp. 37-38, and Comment a (Tent. Draft No. 2, Mar. 23, 1990); see also McCarthy on Trademarks and Unfair Competition, § 13:2 (4th ed. 2002) (stating that secondary meaning grows out of long association of the name with the business, and thereby becomes the name of the business as such; secondary meaning occurs when the name and the business become synonymous in the public mind).

In this case, the Panel concludes that Complainant has established rights in the BATES TECHNICAL COLLEGE mark as a result of Complainant’s registration application for the mark, as well as the secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); 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); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982).

The disputed domain name <batestechnicalcollege.com> is identical to Complainant’s BATES TECHNICAL COLLEGE mark because the name incorporates the mark in its entirety and has merely added the generic top-level domain “.com,” which is irrelevant under the Policy. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Nikon, Inc. 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 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); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Accordingly, Complainant has established that the disputed domain name is identical to a mark that Complainant has rights in pursuant to Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  Therefore, the Panel construes such a failure as an implicit admission that Respondent lacks rights to and legitimate interests in the disputed domain name. See 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); see also 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 Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

In the absence of a response, the Panel is free to accept the allegations set forth 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 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).

Complainant has alleged that Respondent is not commonly known by the disputed domain name and the record fails to indicate anything to the contrary.  Therefore, the Panel finds that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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 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").

Complainant has also alleged that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the name pursuant to Policy ¶ 4(c)(iii) because Respondent is intentionally capitalizing off of Complainant’s mark to divert Internet traffic to <thetruthpage.com>, a website completely unrelated to Complainant. 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”); 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 wholly unrelated to the services legitimately offered under Complainant’s mark).

Accordingly, Complainant has established that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Policy contains four expressed provisions that, if proven, would evidence bad faith in registering and using a disputed domain name.  However, those provisions are non-exclusive, and other factors may also evidence bad faith registration and use. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (the Policy “indicates that its listing of bad faith factors is without limitation”).

Respondent has provided the Panel with evidence that strongly suggests that it registered and used the disputed domain name in bad faith.  First, Respondent uses a domain name identical to Complainant’s mark to direct Internet users to a completely unrelated website, a site that provides content which has nothing at all to do with the respective domain name and that has a good chance to tarnish and dilute Complainant’s mark.  See Journal Gazette Co. v. Domain For Sale Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding bad faith where “Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites”); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding that since the disputed domain names contained entire versions of Complainant's marks and were 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 website; thus, the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).

Secondly, by registering Complainant’s distinct mark in its entirety, it strongly suggests that Respondent had knowledge of Complainant’s educational services and reputation associated therewith.  Therefore, Respondent likely knew of Complainant’s common law rights to the BATES TECHNICAL COLLEGE mark and chose it because of its distinct nature.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also 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 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).

 

This case is nearly identical to Shoreline Community College v. na, Fa 101518 (Nat. Arb. Forum Dec. 19, 2001).  In that case, the Panel stated the following:

“Given Complainant’s reputation, it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name or that Respondent would not have been aware of the Complainant’s marks.  Respondent has no independent trademark rights or applications filed with respect to the SHORELINE COMMUNITY COLLEGE mark.  Respondent is not known by the mark’s name and is not making any legitimate noncommercial use of the domain name.  The only valid conclusion to Respondent’s conduct is that Respondent has chosen and registered the domain name in bad faith with the intention to capitalize on the public recognition of the Complainant’s mark.” 

The Panel finds this conclusion persuasive.  Thus, Complainant has established Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). 

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 <batestechnicalcollege.com> domain name be TRANSFERRED from Respondent to Complainant.

__________________________________________________________________

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  April 2, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/528.html