WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sarah Lawrence College (SLC) v. High Traffic Pro-Life Domains Only $999
Case No. D2003-0332
1. The Parties
The Complainant is Sarah Lawrence College (SLC), Julie Auster, Director of Human Resources, Sarah Lawrence College, New York, United States of America, represented by Hughes, Hubbard & Reed, LLP, United States of America.
The Respondent is High Traffic Pro-Life Domains only $999, Pro-Life Domains Inc., United States of America.
2. The Domain Name and Registrar
The disputed domain name <sarahlawrencecollege.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 30, 2003. On April 30, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 1, 2003, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient for failing to name eNom as registrar, the Complainant filed an amendment to the Complaint on May 8, 2003. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the 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 Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on June 4, 2003.
The Center appointed Miriam Sapiro as the sole panelist in this matter on June 13, 2003. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Sarah Lawrence College (the "College") was founded in 1926, as a college for women in Westchester County, New York. Today the College is a well-known liberal arts college that admits women and men. It operates undergraduate and graduate programs with a total enrollment of 1300 students from 25 countries. The College has received national recognition for its arts and writing programs. A few years ago it was featured as "Liberal Arts College of the Year," see Time/The Princeton Review (Fall 2000).
On June 20, 2002, High Traffic Pro-Life Domains only $999 registered the domain name <sarahlawrencecollege.com.> The disputed domain name resolves to the website "www.abortionismurder.org", which contains anti-abortion materials, including images purporting to show aborted fetuses. The website encourages visitors to donate money to anti-abortion causes and provides a link for making immediate contributions.
On January 11, 2003, the College applied to register three trade and service marks with the U.S. Patent and Trademark Office (USPTO) for "Sarah Lawrence College," "Sarah Lawrence," and "SLC." The applications cover products and services ranging from notebooks and pennants to educational services and computer services.
5. Partiesí Contentions
First, Complainant contends that it has common law rights to "Sarah Lawrence College" by virtue of the name it has used to describe its educational facilities for more than 70 years, and that the disputed domain name is confusingly similar. Complainant further notes that it has filed three trademark and service mark applications with the USPTO.
Second, Complainant asserts that Respondent has no rights or legitimate interests in the domain name because it is not a licensee or otherwise authorized to use the mark.
Finally, Complainant contends that the domain name has been registered and used in bad faith because it was acquired with the intent to resell it to Complainant at a substantial profit. According to Complainant, it appears from Respondentís name that it is in the business of obtaining and reselling "high traffic" domain names. Indeed, according to the Complaint, this is precisely what happened. After Complainantís counsel sent Respondent a cease and desist letter on March 17, 2003, a person who identified himself as John Barry telephoned counsel and offered to sell the College the domain name for $1,000. See Affidavit of Kristin B. Whiting, Complaint, Exhibit H. Further, Complainant contends that Respondent has sought to attract Internet users to the website "www.abortionismurder.org" for commercial gain by creating a likelihood of confusion with Complainantís mark. It is up to the College, Complainant argues, and not Respondent, to decide which websites will be linked to its mark.
The Respondent failed to reply to the Complaint.
6. Discussion and Findings
The Panel finds that it was properly constituted.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to prevail:
(i) the domain name is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Because the Respondent failed to reply to the Complaint, in accordance with paragraphs 5(e) and 14 of the Rules, the Panel will base its decision on the Complaint and draw such inferences from Respondentís failure to reply as it considers appropriate. See, e.g., Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939 (December 20, 2002), which is one of many UDRP cases involving a company affiliated with the Respondent in this dispute.
A. Identical or Confusingly Similar
A Complainant may satisfy its burden by establishing that it has rights in a common law trademark. See Kellie Martin v. Domains, Best Domains, WIPO Case No. D2003-0043 (March 12, 2003), another UDRP case in which the respondent is affiliated with the Respondent in this dispute. It is undisputed that the College has continuously used the name "Sarah Lawrence College" for more the 70 years and received widespread recognition for its educational programs during this time. Through this extensive use and recognition, the name has become closely identified with the Complainantís institution. This common law use and ownership of the mark "Sarah Lawrence College" is uncontested, and therefore deemed to be true.
The disputed domain name is virtually indistinguishable from the mark "Sarah Lawrence College." The registration <sarahlawrencecollege.com> completely incorporates the full name of the College. The addition of the generic top-level domain (gTLD) ".com," and the elimination of spaces between the words, have repeatedly been found to be without legal or factual significance. See, e.g., Briggs & Stratton Corporation v. Suresource, WIPO Case No. D2000-1582 (March 29, 2001).
The Panel therefore concludes that the disputed domain name <sarahlawrencecollege.com > is identical to the Complainantís mark within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy describes three ways in which a Respondent may establish rights or legitimate interests in the disputed domain name. They are:
(i) before any notice of the dispute, [Respondentís] 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] 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.
There is no evidence in the Record suggesting that Respondent was using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods or services. There is also no evidence that Respondent has been commonly known by the domain name of <sarahlawrencecollege.com>. Finally, Respondent failed to establish that it is making legitimate noncommercial or fair use of the domain name. On the contrary, the name of the registrant - "High Traffic Pro-Life Domains Only $999" Ė suggests that its business is to register names likely to receive heavy traffic, and to divert that traffic to an unrelated but highly inflammatory website with the hope that the trademark holder will have little alternative but to purchase the name at an inflated price. The Panel therefore finds no evidence that would support an argument that Respondent has any rights to, or legitimate interests in, the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," shall constitute evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent] registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent] 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 [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of [the Complainant]; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 the web site or location or of a product or service on [the] web site or location.
The Panel finds two independent grounds upon which to conclude that the element of bad faith is present. First, the evidence reasonably suggests that Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for a sum far in excess of it paid. As evident from the Affidavit filed by Complainantís counsel (Complaint, Exhibit H), John Barry, doing business as Respondent, offered to transfer the disputed domain name for $1,000, far in excess of his out-of-pocket expenses.
Second, evidence indicates that Respondent has engaged in a pattern of registering names in order to prevent the owner of the relevant trademark or service mark from using that domain name. Indeed, companies affiliated with Respondent have registered dozens of well-known names, ranging from video games to magazines to museums to colleges, and linked them to the same or similar anti-abortion websites. See, e.g., Paramount Pictures Corporation. v. Buy This Domain aka Domains Best Domains, WIPO Case No. D2003-0058 (March 30, 2003); Advance Magazine Publishers Inc. v. Buy This Domain, WIPO Case No. D2002-0803 (November 1, 2002); The Field Museum of Natural History v. John Barry d/b/a Buy This Domain, NAF Case Co. 114354 (June 28, 2002); University of Central Arkansas v. Simms and John Barry, WIPO Case No. D2002-0316 (May 31, 2002). Indeed, several other colleges have challenged Respondentís registrations of domain names incorporating their marks. See, e.g., Plymouth, supra; The George Washington University v. Domain World a/k/a Domains For Sale a/k/a John Barry, NAF Case No. 122140 (October 14, 2002); Kansas City Kansas Community College v. John Barry d/b/a Domain For Sale Inc., NAF Case No. 117920 (October 11, 2002); The Reed Institute v. Domain for Sale, Inc., NAF Case No. 109043 (May 13, 2002). In all of these cases, the Respondent was found to have registered the disputed domain name in bad faith.
Respondentís actions support a finding of bad faith in this case too.
Accordingly, the Complainant has demonstrated that each of the elements of paragraph 4(a) of the Policy is satisfied.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sarahlawrencecollege.com> be transferred to the Complainant.
Dated: June 20, 2003
1. In light of the finding that the College
has common law rights in "Sarah Lawrence College," the Panel does not need to
address the relevance of the applications for trademark and service mark protection
filed with the USPTO several months after Respondent registered the disputed
2. It is also unclear whether Respondent receives a share of any contributions made on the website "www.abortionismurder.org."