DECISION

The Society of St. John the Evangelist d/b/a Cowley Publications v. Nicola Fongaro

Claim Number: FA0404000257728

PARTIES

Complainant is The Society of St. John the Evangelist d/b/a Cowley Publications (“Complainant”), represented by Devin W. Smith, of Nixon Peabody LLP, 100 Summer Street, Boston, MA, 02110.  Respondent is Nicola Fongaro (“Respondent”), Via saudino 5, Vicenza, 36100, Italy.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cowleybooks.com>, registered with Go Daddy Software, Inc.

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.

Dennis A. Foster as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 20, 2004; the Forum received a hard copy of the Complaint on April 21, 2004.

On April 20, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <cowleybooks.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 17, 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@cowleybooks.com by e-mail.

A Response was received on May 18, 2004.  The response was in electronic form only, and, therefore, deficient pursuant to Rule ¶ 5(b). 

On May 27, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The domain name <cowleybooks.com> is identical or confusingly similar, for trademark purposes, to Complainant's marks COWLEY and COWLEY PUBLICATIONS.

Generic or descriptive terms such as the "books" component of <cowleybooks.com> have little or no trademark significance, and the addition of a top-level domain, such as ".com," to a mark also has no trademark significance.  Indeed, the dominant portion of the domain name <cowleybooks.com> is identical to Complainant's COWLEY mark and the dominant portion of Complainant's COWLEY PUBLICATIONS mark and <cowley.org> domain name.

Respondent has no rights or legitimate interests in respect of the <cowleybooks.com> domain name.  In fact, not one of the circumstances listed in Policy ¶ 4(c) as demonstrating a legitimate interest in a domain name is present in Respondent's case.

Respondent has never used the <cowleybooks.com> domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.  The Society of St. John the Evangelist has not licensed or otherwise permitted Respondent to use the COWLEY or COWLEY PUBLICATIONS marks or apply for or use any domain name incorporating the mark.  Respondent has not acquired any trademark rights whatsoever in COWLEY, COWLEY PUBLICATIONS or any similar mark.  In fact, Respondent simply had Domains by Proxy register the domain name in order to channel users to an offensive pornographic web site.

Permitting the domain name to be used to channel users to an offensive pornography site, Respondent engaged in activities that tarnished Complainant's marks and that were not a bona fide offering of goods or services.

Now Respondent is using the domain name for no purpose other than to post a blank "parking page."

Respondent, an individual, is not commonly known by the domain name <cowleybooks.com>.  Indeed, the conclusion that Respondent has no rights to and is not commonly known by the domain name is amply supported by the fact that Respondent registered the domain name through Domains by Proxy in order to remain anonymous.

Respondent is not making a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  Before the original complaint was filed, Respondent used the domain name in order to channel users to a pornographic website, use considered to be illegitimate.  Complainant believes that if the domain name is not transferred, Respondent will simply resume using it in order to resume channeling users to a pornographic website.

Complainant believes that Respondent was aware of the existence of its COWLEY and COWLEY PUBLICATIONS trademarks, and that is why it used the formulation "cowleybooks" in its domain name. 

Additionally, Complainant believes Respondent deliberately connected the <cowleybooks.com> domain name to pornographic web sites in order to attract Internet users who intend to visit Complainant's web site.  The registration and use of a disputed domain name to redirect Internet users to web sites offering pornographic material warrants a finding of bad faith registration and use under Policy ¶ 4(a)(iii).

In addition, Complainant believes that Domains by Proxy's and Respondent's actions in registering the domain name and in responding to receipt of the Original Complaint are evidence of registration and use in bad faith.   

B. Respondent

Respondent's sole response was as follows: "Respondent consents to the transfer of the domain name to Complainant."

FINDINGS

Paragraph 5(b) of the Rules requires that Respondent submit its Response in hard copy and email, but in this proceeding Respondent submitted its Response by email only.  Paragraph 10(d) of the Rules allows the Panel to accept Respondent's Response even though it is deficient.  Paragraph 14(b) of the Rules allows the Panel to draw such inferences from Respondent's noncompliance as the Panel deems appropriate. Since Respondent only states in its Response that it agrees to turn over the disputed domain name to Complainant, the Panel can see no harm to Complainant in accepting Respondent's email statement.

The Panel further notes that this is the second time Complainant has had to file this Complaint against the same Respondent because Respondent sought to conceal its identity in a previous registration through Domains by Proxy. 

Complainant, Society of St. John the Evangelist, is a men's religious order in the Anglican Church.  It has been present in Boston since 1870 and is now based at a monastery in Cambridge, Massachusetts and a rural retreat center in northern Massachusetts.

Since 1980, Complainant has used the mark Cowley Publications in commerce throughout the United States for its publishing business devoted to books and music regarding prayer and spirituality.  Complainant has also, since February 2, 1928, used the mark COWLEY in commerce throughout the United States for a magazine it publishes three times a year featuring essays on theology, updates on Complainant's mission work, and information concerning upcoming retreats.  (Compl. Ex. B.)

On May 11, 1996, Complainant registered the domain name <cowley.org> and has since that time operated an online store through which the public can purchase books published by Complainant. (Compl. Ex. C.)  

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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

Although Complainant has no registered trademark in the name COWLEY PUBLICATIONS, Complainant has used the name since 1928 to publish and sell magazines, books and music related to religion.  In view of this commercial use over time, the Panel finds Complainant has shown common law trademark rights (Compl. Exs. B & C.)

The disputed domain name, <cowleybooks.com>, is confusingly similar to Complainant's trademark COWLEY PUBLICATIONS.   The more distinctive part of Complainant's trademark, COWLEY, is identical to part of the disputed domain name.  For the rest, Respondent's "Books" and Complainant's "Publications" are both descriptive when used to indicate printed matter.  "Books" and "Publications" are also to a significant degree synonymous.  The Panel therefore finds Complainant has carried its burden of proof under Policy ¶ 4(a)(i) to show that the disputed domain name, <cowleybooks.com>, is confusingly similar to a name (COWLEY PUBLICATIONS) in which Complainant has trademark rights. 

Rights or Legitimate Interests

Complainant contends Respondent has no rights or legitimate interests in the disputed domain name because Respondent's use does not fit into any of the categories of the Policy  ¶¶ 4(c)(i) and 4(c)(iii).  Complainant contends Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) because Respondent used the domain name to link to pornographic web sites.  Once Respondent learned Complainant was filing a Complaint under the Policy, Respondent "parked" the disputed domain name, i.e., Respondent left the web site blank.

Complainant also contends Respondent is an individual who has never been known by the disputed domain name, <cowleybooks.com>, per Policy ¶ 4(c)(ii).  And obviously, since Respondent was using the disputed domain name to link to commercial pornographic web sites, Respondent could not contend it was making a "fair use" of the disputed domain name as permitted by Policy ¶ 4(c)(iii).  

In its one sentence Response, Respondent has not come forward to attempt to rebut Complainant's contentions or to show a legitimate right or interest in the disputed domain name.  In these circumstances, the Panel finds Complainant has carried its burden of proof under Policy ¶ 4(a)(ii), and that Respondent has no rights or legitimate interests in the disputed domain name.  See, for example, Nat'l Football League Prop., Inc. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000), where using a domain name not previously connected with marketing pornography to do just that was not a bona fide or a fair use; see also, in a similar vein, Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002).

Registration and Use in Bad Faith

Respondent registered a domain name, <cowleybooks.com>, that was confusingly similar to Complainant's COWLEY PUBLICATIONS trademark, and linked this domain name web site to commercial web sites.  The Panel finds this violates the bad faith provisions of the Policy ¶ 4(b)(iv).

Complainant also contends Respondent registered and is using the disputed domain name in bad faith simply because Respondent used the domain name to connect the public to pornographic web sites.  Like many previous panels, this Panel agrees that where, as here, Complainant's trademark was not previously associated with pornography but is being used by Respondent for that purpose, there is a ground for finding bad faith.  While this is not one of the enumerated grounds for bad faith under the Policy ¶¶ 4(b), Rules ¶ 15(a) gives the Panel the authority to find additional bad faith grounds where appropriate. Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum, Mar. 18, 2003); Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003).

Finally, Respondent attempted to delay this proceeding by concealing its identity from Complainant through a registration using Domain Names by Proxy and then asserting Complainant brought its original Complaint against the wrong party.  The Panel finds Respondent attempted to dodge a bona fide Policy proceeding and in the process wasted Complainant's time and money.  Many previous Panels have found such a deceptive practice to be an independent ground for bad faith registration and use, and the Panel agrees with Complainant that this finding also is appropriate in our case.  See Dr. Ing. h.c. Porsche AG v. Domains by Proxy, Inc., D2003-0230 (WIPO May 16, 2003); see also Trump v. Nguyen, FA 99753 (Sep. 24, 2001); see also France-Manche v. Cimagotipo S.L., D2001-0771 (WIPO August 6, 2001).

The Panel thus finds Complainant has carried its burden of proof to show Respondent has registered and is using the disputed domain name in bad faith per the 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 <cowleybooks.com> domain name be TRANSFERRED from Respondent to Complainant.

Dennis A. Foster, Panelist
Dated: June 10, 2004

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