WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Peabody Management, Inc. v. John Barry, d/b/a/ Domains for Sale, Inc
Case No. D2002-0552
1. The Parties
The Complainant is Peabody Management, Inc, a Tennessee corporation, with its principal place of business being 5118 Park Ave, Suite 245, Memphis, Tennessee 38117, United States of America ("Peabody").
The Respondent is John Barry, d/b/a/ Domains for Sale, inc.(sic) with an address of 5444 arlington ave (sic) #g14, Bronx, New York, United States of America ("Barry").
2. The Domain Name and Registrar
The contested domain name upon which this Complaint is based is <thepeabodyorlando.com> (the "Domain Name"). The Registrar of the Domain Name as at the date of the Complaint is Intercosmos Media Group, Inc. (through its registration division known as directNic.com) whose address is 650 Poydras Street, Suite 2311 New Orleans, Louisiana 70130, United States of America ("directNic.com").
3. Procedural History
The Complaint was received on June 16, 2002, by email and in hardcopy on June 18, 2002, by the WIPO Arbitration and Mediation Center (the "Center"). An amendment to the Complaint concerning the identity of the current registrant of the domain name that is the subject of the Complaint was requested by the Center on June 20, 2002, and received by email and fax on June 21, 2002 (the "Amended Complaint"). The Center has determined that the Amended Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy") approved by the Internet Corporation for Assigned Names and Numbers on October 24, 1999. Further, the Center has verified that the Amended Complaint also satisfies the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") as well as the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), which such rules implement the Policy. The Complainant made payment to the Center in the required amount.
On June 19, 2002, the Center notified directNic.com that the Complaint had been filed. In response to a number of questions, DirectNic.com confirmed to the Center, inter alia, the following: the contested Domain Name was registered in the name of Respondent rather than Domains for Sale, inc. with DirectNic.com; the Respondent was the registrant of the domain name at issue; the Policy applies to the dispute at issue; and that the language of the registration agreement and hence the dispute is English. The response from DirectNic.com resulted in the Amended Complaint.
In accordance with Paragraph 2 (a) of the Rules, the Center notified the Respondent on June 25, 2002, of the filing of the Amended Complaint and the commencement of the Administrative Proceeding on that same date. This notice advised the Respondent that Respondent had until July 15, 2002, to respond to the Amended Complaint. No response was received on or before July 15, 2002, nor has any response been received as of the date of the filing of this Administrative Decision. On July 17, 2002, the Center notified the Respondent of its failure to comply with the deadline for responding to the Complaint and that Respondent was in default in this case.
On July 18, 2002, the Center transmitted the case to the Administrative Panel consisting of a single member, James H. Grossman of San Francisco, California, United States of America. The panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence in accordance with the Rules and agreed to forward a decision in accordance with Paragraph 15 of the Rules on or before August 1, 2002. The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Except for the Complaint referred to above, there have been no additional submissions by either party.
4. Factual Background
The following is asserted as fact by the Complainant and remains uncontested.
Complainant operates a chain of large hotels in the southern part in the United States which are well known in that region of the nation. Its original hotel in Memphis, Tennessee first began operating in 1869. The Peabody Orlando, located in Orlando, Florida, began operating in 1986 and, with its 27 floors, over 900 rooms and suites, and location across from the Convention Center, the hotel is a major destination for tourists and conventions.
Complainant uses the trade name, service mark and trademark "The Peabody" (the "Mark"), and variations thereof, for its hotel services and ancillary products throughout the United States and internationally. The Mark was first used in 1869 and in 1989 the Mark was registered formally with the U.S. Patent and Trademark Office (U.S. Registration No. 1,535,837). Complainant uses the domain name <peabodyorlando.com> in connection with its hotel services. In fact, those interested may make a reservation through this email address. Accordingly, it is the contention of Complainant that the Mark has become "famous and has acquired strong secondary meaning."
In April 2002 Complainant became aware that Respondent had registered and was using the domain name <thepeabodyorlando.com>. According to Complainant, at that time, and at all times while active, including as of the date of this opinion, the disputed domain name resolved, by redirecting anyone visiting that site, to "www.abortionismurder.org", an anti-abortion site featuring graphic photographs of aborted fetuses. Following a cease and desist letter from Complainant on April 11, 2002, a conversation took place on the following day, April 12, 2002, during which Respondent offered the disputed domain name for sale for $500. Complainant requested transfer of the domain name but, according to a declaration under penalty of perjury from counsel for Complainant, Respondent indicated that he would only sell the disputed domain name and not transfer it otherwise. What follows is literally a flight by Respondent from one DNS provider to another and then to a third (so-called "cyber-flying") as Complainant continued to send cease and desist letters. Respondent transferred its domain name registration both times after prior DNS providers removed the disputed Domain Name from their servers in compliance with Complainant's requests. Most recently Respondent has been using Intercosmos Media Group, Inc. as its registrar and provider of DNS service. At all times, the visitor to the site sees the <abortionismurder.com> site.
5. Parties Contentions
Complainant argues that the Domain Name should be transferred to Complainant because all of the three elements required by Paragraph 4 (a) of the Policy are present, namely, (i) Respondentís Domain Name is "virtually identical with and confusingly similar to" a trademark in which Complainant has rights; (ii) Respondent has "no rights or legitimate interests in the contested domain name;" and (iii) given Respondentís "selection of an identical and confusingly similar domain name, the Panel may infer bad faith acquisition and use of the infringing domain name" .
Complainant argues that Respondent is not making legitimate or noncommercial fair use of the domain name since the only function served is to divert the user to a different site focused on abortion. Further, Complainant argues Respondent has if not actual knowledge of Complainant's rights, there is substantial "constructive notice" because a trademark search would have revealed Complainant's registration of the Mark. The bad faith argument made above is evidenced by Respondent's intention to sell the contested domain name for profit when Complainant contested his use of the domain name.
Respondent failed to file any response to Complainantís allegations.
6. Discussion and Findings
With regard to the issue of whether the Domain Name is identical or confusingly similar to Complainantís trademarks, the Panel takes notice of the fact that the Domain Name incorporates in its entirety a distinctive trademark and as such creates sufficient similarity between the trademark and the domain name to render it confusingly similar. The Panel is of the view that Respondent was clearly relying on viewer confusion to increase the number of "hits" on its site and, for whatever reason, forcing viewers to view the "abortionismurder.org" site which is most certainly not the intention of those persons going to the site. The Panel finds that the Complainant has proven Paragraph 4 a. (i) of the Policy.
Paragraph 4 c. of the Policy explains how a Respondent can demonstrate its rights to and legitimate interests in the Domain Name. While Respondent in this case has failed to make any response, Complainant has set forth persuasive arguments to the effect that Respondent certainly had constructive notice - if not actual notice - of Complainant's Mark and that Respondent has brought viewers to an unintended extremely controversial site which they have no intention of visiting. The Panel finds that the Complainant has proven Paragraph 4 a. (ii) of the Policy.
A visitor to the site may very well be shocked and repulsed by what Respondent has put up on the site and/or, simply decide not to stay in any hotel which would sponsor or be affiliated with such an anti-abortion site. Whether Respondent intends to bring his personal position on abortion to the attention of an audience which has not sought such information or seeks to discredit Complainant by attempting to connect Complainant with such a controversial issue is not for this Panel to decide. What is within the purview of the Panel is to make clear that Respondent has clearly demonstrated bad faith by i) intentionally and wrongfully using a well recognized mark to portray a message far from the intended message of the Complainant for reasons known only to Respondent, ii) Respondent's determination to sell the domain name for profit and iii) re-registering the Domain Name and moving the DNS services to "stay one step ahead of the law". Accordingly, the Panel agrees with Complainant's contention that the Respondent has registered and is using the Domain Name in bad faith based on Paragraph 4 b. (iv).
The Panel has found that the Complainant has proved all of the requirements of Paragraph 4 of the Policy. The Panel has also taken notice that Respondent failed to respond to the Complaint and is thus in default. Accordingly, in accordance with the remedy provided in Paragraph 4 i. of the Policy, the Panel requires that the domain name <thepeabodyorlando.com> be transferred from Respondent to the Complainant.
James H. Grossman
Dated: July 30, 2002