WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barnes & Noble College Bookstores, Inc. v. Good Domains
Case No. D2002-0812
1. The Parties
1.1 The Complainant is Barnes & Noble College Bookstores, Inc., a New York corporation, located and doing business at New York, New York, United States of America ("USA").
1.2 The Respondent is Good Domains, formerly Domain For Sale Inc., New York, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name is <barnesandnobleonline.com>.
2.2 The registrar of the disputed domain names is eNom, Inc., located at 16771 NE 80th Street, Suite #100, Redmond, Washington 98052, United States of America.
3. Procedural History
3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center (the "Center") on August 29, 2002.
3.2 On September 10, 2002, all formal requirements for the establishment of the complaint (including an amendment) were checked by the Center and found to be in compliance with the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.3 On September 10, 2002, the Center transmitted notification of the complaint and commencement of the proceedings to Respondent.
3.4 On October 2, 2002, the Center transmitted notification of Respondent's default to the Respondent.
3.5 On October 3, 2002, the Center invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On October 4, 2002, the undersigned transmitted by facsimile the executed Statement and Declaration to the Center.
3.6 On October 7, 2002, Complainant and Respondent were notified by the Center of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. The Center notified the Panel that, absent exceptional circumstances it would be required to forward its decision to the Center by October 21, 2002.
The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Partiesí Contentions
Complainant, Barnes & Noble College Bookstores, Inc. and their respective affiliates (collectively, "Barnes & Noble"), owns and operates over 1,000 retail bookstores, including college and university bookstores, throughout the United States, and has been doing business under the "Barnes & Noble" mark continuously for over 25 years.
Barnes & Noble is a famous mark that is synonymous with quality and customer service in the retail bookseller industry. Complainant is also the owner of the worldwide registered trademark "BARNES & NOBLE," as well as the owner of U.S. registrations for the marks "BARNES & NOBLE" and "BARNESANDNOBLE.COM" and is the listed registrant for the domain name <barnesandnoble.com>.
Respondent, Domain For Sale Inc., registered and is using the domain name <barnesandnobleonline.com> in connection with an anti-abortion web site. As evidenced by several prior UDRP decisions against Respondent, Respondent is a known cybersquatter that adopts and registers domain names that incorporate the trademarks of third parties in order to re-direct Internet users to Respondentís anti-abortion web site. Similarly in this case, as in those prior cases, Respondent has adopted and is using the subject domain name in bad faith for the purposes of re-directing Complainantís users to Respondentís anti-abortion web site, improperly profiting from and trading off of the "Barnes and Noble" mark and domain name and preventing Complainant from reflecting its mark in a corresponding <.com> domain name.
This Complaint is based upon the famous worldwide and United States registered trademark "BARNES & NOBLE," as well as the United States registered trademark "BARNESANDNOBLE.COM," both owned by Complainant, a United States bookseller.
Complainant, Barnes & Noble College Bookstores, Inc. and their respective affiliates, including Barnes & Noble, Inc., a publicly traded company, and barnesandnoble.com llc (collectively, "Barnes & Noble"), owns and operates over 1,000 retail bookstores, including college and university bookstores, throughout the United States, and has been doing business under the "Barnes & Noble" mark exclusively and continuously for over 25 years.
Complainant also owns and operates the <barnesandnoble.com> web site whereby books, CDs, DVDs, videocassettes, music, magazines, computer games and other items are purchased over the Internet by the general public. The <barnesandnoble.com> web site is one of the most visited retail Internet sites.
Complainant registered <barnesandnoble.com> with Network Solutions on August 10, 1995, and registered <bn.com>, which resolves to the same site, with Network Solutions on October 18, 1994.
Complainant is the owner of the following valid and subsisting U.S. trademark registrations in the U.S. Patent and Trademark Office ("USPTO") for the goods and services recited therein: BARNES & NOBLE - U.S. Registration No. 1,138,704; BARNES & NOBLE & DESIGN - U.S. Registration No. 1,213,581; BN.COM BARNES & NOBLE DESIGN - U.S. Registration No. 2,360,295; BN.COM - U.S. Registration No. 2,360,29; BARNESANDNOBLE.COM - U.S. Registration No. 2,290,269; BARNESANDNOBLE.COM & DESIGN - U.S. Registration No. 2,463,172.
Complainant is also the owner of valid and subsisting worldwide trademark registrations and applications for the mark "BARNES & NOBLE."
Complainant, by virtue of its long exclusive and continuous use and the expenditure of considerable sums for advertising, marketing and promotional activities, as well as by virtue of the excellence of its products and services, has developed exceedingly valuable goodwill in the marks "BARNES & NOBLE," "BARNESANDNOBLE.COM" and the domain name <barnesandnoble.com> (hereinafter, the "Marks").
The Marks have become distinctive of the goods and services listed in Paragraph 20, supra as a result of Complainantís efforts in selling, distributing and promoting goods and services bearing the Marks, and through Complainantís exclusive and continuous use of the Marks in commerce long prior to January 12, 2002, the date of Respondentís domain name registration for <barnesandnobleonline.com>.
Complainant has satisfied the requirement of proving rights in the Marks because of: (a) Complainantís ownership of valid and subsisting registrations for the mark "BARNES & NOBLE" and related iterations of such mark; (b) Complainantís long exclusive and continuous use of the mark "BARNES & NOBLE"; and (c) the recognized distinctiveness and fame of Complainantís mark "BARNES & NOBLE".
According to the excerpt from the WHOIS information database annexed hereto as Exhibit 1, Respondent registered <barnesandnobleonline.com> (the "Domain Name") on January 12, 2002.
As evidenced by the attached web page excerpts taken from Respondentís web site, attached hereto as Exhibit 8, Respondent registered the Domain Name for use in connection with an anti-abortion web site.
By entering the Domain Name in the address line of a web browser, the user is directly hyperlinked to another web site located at <abortionismurder.org>, which, according to the excerpt from the WHOIS information database annexed hereto as Exhibit 9, is owned by a third party, Abortionismurder.org, located at 400 SW 75th Terrace, North Lauderdale, FL 33431.
Respondentís web site shows graphic images of aborted fetuses and other related images, as well as articles correlating "the abortion holocaust and the NAZI holocaust." See the printout of Respondentís web site, attached as Exhibit 8, supra. Additionally, abortion videos and other merchandise can be purchased through the web site.
Respondent is using the Domain Name in bad faith with the intent of attracting, for commercial gain, Internet users to its anti-abortion web-site or other on-line locations, by creating a likelihood of confusion between Complainantís mark and the Domain Name as to source, sponsorship, affiliation, or endorsement of its web site, as well as to prevent Complainant from reflecting its mark in a corresponding <.com> domain name.
Complainant clearly has prior rights in the mark and domain name "BARNES & NOBLE". In the instant case, <barnesandnobleonline.com> is nearly identical or confusingly similar to Complainantís federally registered mark, "BARNESANDNOBLE.COM" and domain name <barnesandnoble.com>. The Respondentís domain name merely adds the generic word "online" to Complainantís mark. Such unauthorized use, notwithstanding the addition of a generic word, dilutes, tarnishes and trades off the fame of Complainantís mark.
The Respondentís domain name is confusingly similar to Complainantís Marks in sound, appearance, meaning, connotation and overall commercial impression. The addition of a generic word to a distinctive registered trademark does not change the overall commercial impression of the mark and thus, is not sufficient to overcome a likelihood of confusion between the marks and domain names. In this case, the commercial impression conveyed by the domain name <barnesandnobleonline.com> and Complainantís mark and domain name are one and the same. Accordingly, the Domain Name creates a likelihood of confusion with Complainantís mark and domain name.
Respondent cannot demonstrate any legitimate interests in the Domain Name. Respondent has no relationship with or permission from Complainant for the use of the Marks. At the time of Respondentís registration of the Domain Name with the Registrar on January 12, 2002, Complainantís Marks were already well-known on the Internet and throughout the world.
Furthermore, Respondentís use of the Domain Name is not legitimate noncommercial or fair use pursuant to Policy Paragraph 4(c)(iii) because the Respondent is trading off of the fame of Complainantís Marks in order to misdirect Internet users to its web site for commercial gain.
Respondent is using the Domain Name for commercial purposes in order to build support for its anti-abortion agenda and to sell products such as anti-abortion video tapes and other merchandise.
Respondentís registration and use of the domain name <barnesandnobleonline.com> is in clear bad faith. Respondent use of Complainantís entire mark "BARNES AND NOBLE" without any plausible good faith use demonstrates bad faith under the Policy. Respondentís pointing the Domain Name <barnesandnobleonline.com> to <abortionismurder.org> is clear evidence of bad faith.
Respondent has engaged in a pattern of conduct that attempts to prevent legitimate owners of trademarks or service marks from reflecting the mark in a corresponding domain name. Respondent is a known cybersquatter. Respondent owns hundreds of domain names that include famous third party trademarks, including the following: <volkswagonparts.com>, <wwwspin.com>, <wwwwaterhouse.com>, <wwwperrier.com>, <wwwrazorfish.com>, wwwpurina.com>, <wwwmidway.com>, wwwprada.com>, <bobguccione.com> and <penolopeannmiller.com>. See attached excerpt from a Thomson and Thomson domain name search of domain names owned by Domain For Sale Inc. annexed hereto as Exhibit 10. As with <barnesandnobleonline.com>, all of these domain names likewise divert the user to the <abortionismurder.org> web site.
Respondent, whether under the name Domain For Sale Inc. or its multiple aliases, including John Barry and John Simms, has engaged in the exact same conduct as described herein numerous times. Respondent is in the business of registering third party trademarks and then pointing the domain name to <abortionismurder.org> or other anti-abortion sites. In each instance, the UDRP panel has held that Respondentís registration of the disputed domain name which pointed to the "abortionismurder.com or .org"web site violated the Policy and transferred the disputed domain to Complainant. See, University of Central Arkansas v. John Simms and John Barry, WIPO Case No. D2002-0316 (domain name <universityofcentralarkansas.com> awarded to Complainant); Nielsen Media Research, Inc. v. Domains for Sale, Inc., WIPO Case No. D2002-0020) (domain name <nielsenmediaresearch.com> awarded to Complainant); United Artist Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005 (domain name <unitedartisttheatres.com> awarded to Complainant); The Reed Institute v. Domain For Sale, Inc., NAF Case No. FA0204000109043 (domain name <reedcollege.com> awarded to Complainant); The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Domains For Sale Inc., NAF Case No. FA0201000104101 (domain name <wwwpncbank.com> awarded to Complainant); Southern California Edison Company v. John Simms, WIPO Case No. D2002-0369 (domain name <southerncaliforniaedison.com> awarded to Complainant); The Rittenhouse Development Company v. Domains For Sale, Inc., NAF Case No. FA0202000105211 (domain name <therittenhousehotel.com> awarded to Complainant) and Sears, Roebuck and Co. v. John Barry, NAF Case No. FA02020001052 (domain name <searsrobuck.com> awarded to Complainant).
Respondentís conduct clearly demonstrates that Respondent registered and is using the domain name <barnesandnobleonline.com> in bad faith, adversely affecting the business of Complainant and tarnishing the Complainantís mark.
Respondentís conduct clearly demonstrates that Respondent registered and is using the domain name <barnesandnobleonline.com> in bad faith, to trade off of Complainantís famous mark and the good will associated with that mark for the purpose of misdirecting Internet users to its commercial anti-abortion web site in order to advance an anti-abortion agenda and sell anti-abortion merchandise. Thus, the totality of Respondentís activities constitutes bad faith under the Policy.
Respondent did not file a response to the complaint.
5. Discussion and Findings
5.1 The Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
5.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
5.3 The Center forwarded notification of the complaint to the Respondent via post/courier and email in accordance with the contact details found in the appropriate WHOIS database. The Center also forwarded notification of default to the Respondent via email.
5.4 Based on the methods employed to provide the Respondent with notice of the complaint and default the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by the Center.
5.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
5.6 As the Respondent has failed to submit a response to the complaint, the Panel may accept as true all of the allegations of the complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, (February 29, 2000).
5.7 Based upon the registered trademark for BARNES & NOBLE and the Complainantís other registered marks, and the continuous use of those marks, the Complainant clearly has rights in the marks.
5.8 Complainant asserts that the domain name <barnesandnobleonline.com> is nearly identical and confusingly similar to the trademark BARNES & NOBLE.
5.9 The Panel agrees with the Complainant that the only actual differences between the domain names and the trademark are the "&", ".com", and the additional word "online", which are trivial or generic.
5.10 The Panel finds the <barnesandnobleonline.com> domain name is nearly identical and confusingly similar to the registered trademark BARNES & NOBLE, and that the Complainant has established it has rights in the mark BARNES & NOBLE, pursuant to paragraph 4(a)(i) of the Policy.
5.11 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.
5.12 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name <barnesandnobleonline.com>.
5.13 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <barnesandnobleonline.com>, pursuant to paragraph 4(a)(ii) of the Policy.
5.14 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b) states:
(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.
5.15 From the uncontested facts set forth in the complaint, Respondent clearly registered and used the domain name in bad faith. Respondentís bad faith is evidenced by its (i) use of the domain name to misdirect Internet users to its anti-abortion web site to build support for its agenda and to sell products such as anti-abortion video tapes, (ii) use of the entire mark BARNES & NOBLE without any plausible good faith use, (iii) pattern of conduct that attempts to prevent legitimate owners of trademarks from reflecting the mark in a corresponding domain name, and (iv) use of multiple aliases to register third party trademarks and then point the domain name to <abortionismurder.org> and other abortion web sites.
5.16 The Panel finds the Complainant has established that the Respondent registered and used the domain name <barnesandnobleonline.com> in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.
As the Complainant, Barnes & Noble College Bookstores, Inc., has established that the Respondent, Good Domains, has engaged in abusive registration of the domain name <barnesandnobleonline.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <barnesandnobleonline.com> be transferred to the Complainant.
R. Eric Gaum
Dated: October 21, 2002