WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

National Spiritual Assembly of the Baháíís v. Buy This Name

Case No. D2001-1302

 

1. The Parties

The Complainant is the National Spiritual Assembly of the Baháíís of the United States, a corporation organized and existing under the laws of the State of Illinois, United States of America, with its principal place of business at 1233 Central Street, Evanston, Illinois, 60201-1611. It is represented by Eric W. Gallender of Brinks, Hofer, Gilson & Lione, Chicago, Illinois, United States of America.

The Respondent is Buy This Name of 19, Bondarenko Square, Obinsk, Kaluga, reg 249020, Russia.

 

2. The Domain Name and Registrar

The domain name at issue is <bahaiwomen.com>.

The Registrar with which the domain name is registered is BulkRegister.com, Inc, 10 East Baltimore Street, Suite 1500, Baltimore, Maryland 21202, United States of America.

 

3. Procedural History

On October 25, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.

On November 6, 2001, the Registrar responded to a request for Verification of the domain name, confirming the details of the Respondent, that the Respondent is the current registrant of the domain name and that the language of the Registration Agreement is English.

On November 8, 2001, the WIPO Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The Respondent was advised that a Response to the Complaint was required within 20 calendar days i.e. by November 28, 2001.

No Response was received from the Respondent and on December 3, 2001, a Notification of Respondent Default was sent to the Respondent.

On December 12, 2001, the WIPO Center informed both parties that an Administrative Panel had been appointed.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, that the Complaint was properly notified to the Respondent in accordance with the Rules, and that the Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant has asserted and provided evidence in support of the following facts. Unless stated otherwise, the Panel finds these facts established.

The Baháíí Faith was founded in the mid-nineteenth century and is now accepted by more than five million people from many different nations, races, cultures and classes. It emphasizes the elevation of the status of minority groups that have experienced discrimination and teaches the equality of women and men.

The Complainant states that it has invested a substantial amount of time and resources in promoting the Baháíí Faith under the name and trademark BAHÁíÍ. It claims that it has used the name and trademark BAHÁíÍ continuously for over one hundred years.

The Complainant is the registered owner of the trademarks BAHÁíÍ, BAHÁíÍ and design and NATIONAL SPIRITUAL ASSEMBLY OF THE BAHÁíÍS OF THE UNITED STATES. All three trademarks are registered in the United States of America. The date of first use of the trademark BAHÁíÍ is given as 1900.

On May 27, 2001, the Respondent registered the disputed domain name. The Complainant states that some time shortly thereafter, the Respondent began operating a pornographic website at the site <bahaiwomen.com>. The site also operates as a portal to other pornographic websites.

The site <bahaiwomen.com> also contains a link entitled "Click Here to Buy this Domain Name". Users clicking on that link are transported to a page on which they can make an offer to purchase the disputed domain name. That page bears the notice:

"ANY OFFER BELOW $550.00 USD WILL BE IGNORED!"

On October 15, 2001, the Complainantís Representative wrote to the Respondent requesting that it transfer the disputed domain name to the Complainant. On the same day, the Respondent replied, saying "we donít open attachments".

The Complainant duly re-sent the letter in the text of an email, and on October 16, 2001, received a brief Response:

"This domain is $775".

 

5. Partiesí Contentions

A. The Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainantís BAHÁíÍ trademark because the primary and dominant portion of the disputed domain name is "BAHAI". The Complainant submits that the word "BAHAI" is "virtually identical in terms of appearance, sound and impression" to the Complainantís BAHÁíÍ trademark. It submits that the addition of the generic or neutral term "WOMEN" in the disputed domain name does not affect this analysis.

The Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain name. It claims that it has been using the name BAHÁíÍ continuously for over 100 years, long before the Respondent registered the disputed domain name on May 27, 2001.

The Complainant confirms that it has never licensed or otherwise authorized the Respondent to use its name and trademark and asserts that the Respondent has never been known by the disputed domain name or any similar name.

The Complainant also contends that the disputed domain name was registered and has been used in bad faith. It bases this conclusion on the following:

(a) The Respondent has offered to sell the disputed domain name for valuable consideration well in excess of the Respondentís out-of-pocket costs:

(i) the site <bahaiwomen.com> contains a link entitled "Click Here to Buy this Domain Name", which allows users to make an offer to purchase the domain name (and which contains the statement "ANY OFFER BELOW $550.00 USD WILL BE IGNORED!")

(ii) the Respondent offered to sell the disputed domain name to the Complainant for $775.

(b) The Respondent has used, and is using, the disputed domain name in connection with a pornographic website.

(c) The name and trademark BAHÁíÍ is so well known that the Respondent must have been aware of the Complainantís rights when registering the disputed domain name;

(d) The Respondent intended to attract users to the site for commercial gain by creating a likelihood of confusion with the Complainantís trademark. The website contains a menu of pornographic options, to which users are invited to subscribe. The Respondent is making commercial gain from these subscriptions;

(e) The Respondent provided false contact information. The Complainant submits that the administrative contactís name, address and/or phone and fax numbers are false and were provided to conceal the true identity of the owner and administrative contact for the domain name. The administrative contract is identified as "Charles Bukowski", which the Complainant suspects is a reference to a well-known author of the same name, who is now deceased.

B. The Respondent

No Response was received from the Respondent.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

Domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant has provided evidence of registrations of its trademarks BAHÁíÍ, BAHÁíÍ and design and NATIONAL SPIRITUAL ASSEMBLY OF THE BAHÁíÍS OF THE UNITED STATES in the United States of America.

The Panel accepts that the mark is associated with the Complainant and the Complainantís faith. While the Complainantís trademark is registered only in the United States, the Baháíí Faith is now accepted by more than 5 million people from many nations and the mark is well known in many countries. Because of the highly unusual nature of the mark, it is improbable that the Respondent would have conceived the domain name independently.

The Panel also accepts the Complainantís contentions that the addition of the generic term "women" does not operate as a distinguishing feature. By far the dominant and memorable part of the domain name is the Complainantís trademark BAHAI: America Online Inc v. East Coast Exotics - WIPO Case No. D2001-0661. (July 10, 2001)

Accordingly, the Panel finds that the domain name <bahaiwomen.com> is confusingly similar to the trademark BAHÁíÍ, in which the Complainant has rights.

No legitimate rights or interest in respect of the domain name

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentsí rights or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not provided any Response to the Complaint. The Panel has carefully considered whether, even on the material presented by the Complainant there is any basis on which it could be contended that any of the circumstances in paragraph 4(c) of the Policy apply. The Panel finds that there are none and accepts the Complainantís contentions that:

(a) the Complainantís use of the mark predates the registration of the disputed domain name and has extended over 100 years;

(b) the Respondent does not have any association with or licence from the Complainant; and

(c) the Respondent does not carry on any business under the mark BAHAI and was not commonly known by the name BAHAI or any similar name before the domain name was registered.

The Panel finds it appropriate to draw an adverse inference from the Respondentís failure to respond to the Complaint (SSL International v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited, WIPO Case No. D2000-0848.)

Overall, the Panel can find no evidence to demonstrate that the Respondent has a legitimate right or interest in the disputed domain name.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Complainant has met the burden of proving this element.

First, the circumstances of registration of the domain name and the subsequent Response to the Complainantís attorneys indicate that the domain name was registered with the purpose of sale to third parties, including the Complainant, in circumstances analogous to paragraph 4(b)(i):

- The domain name was registered under the name Buy This Name.

- The Registrar offered the domain name for sale on the website;

- When challenged the Respondent emailed the Complainant with the statement "this domain is $775". The Panel takes this to be an offer for sale.

Secondly, the Respondent has used the domain name in connection with a pornographic site. Previous Panels have held that the registration of a domain name incorporating a well-known trademark and use of that domain name for a pornographic website amounts to registration and use in bad faith: America Online, Inc v. East Coast Exotics - WIPO Case No. D2001-0661; America Online, Inc v. Viper - WIPO Case No. D2000-1198.

Thirdly, the Complainant is using the domain name to attract for commercial gain users who would click on to a website containing the word "Bahai" leaving it to be the Complainant or somehow associated with the Bahai Faith - only to encounter a pornographic site unrelated to the Bahai Faith. This creates a likelihood of confusion with the Complainant as to its involvement in or association with that pornographic site Ė in breach of paragraph 4(b)(iv). Even though most users would immediately know that the Bahai Faith is not connected with pornography, the fact is that the Respondent has used the well-known BAHÁíÍ trademark as the hook to reel in unwitting visitors in the first place. The Panel accepts the Complainantís contentions that the Respondent derives economic benefit either by attracting users to its site, where pornographic goods and services are offered, or by receipt of compensation from owners of other websites for acting as a portal to their sites.

Fourthly, the Panel believes that the domain name has been registered under a false name. Previous Panels have held that providing false contact information may lead to a finding of registration and use of a domain name in bad faith: Telstra Corp v. Nuclear Marshmallows - WIPO Case No. D2000-0003.

The Complainant contends that the name of the registrant is a well-known author, Charles Bukowski who died in the United States in 1994. This Panel has previously found that another pornographic website having the same registration address namely "ForSale at 19, Bondarenko Square, Obinsk, Kaluga, Russia, involved bad faith registration. In that case, the aadministrative contact was Allen Ginsberg - another well-known author/poet. See: Imax Corporation v. ForSale - WIPO Case No. D2001-1166.

The Panel therefore finds the domain name has been registered and is being used in bad faith.

 

7. Decision

For the forgoing reasons, the Panel decides that:

(a) the disputed domain name is confusingly similar to the trademark BAHÁíÍ in which the Complainant has rights; and

(b) the Respondent has no right or legitimate interest in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <bahaiwomen.com> be transferred to the Complainant.

 


 

Andrew Brown
Sole Panelist

Dated: December 18, 2001