WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SFDH Associates, L.P. v. John Barry, doing business as Pro-Life domains Not For Sale, aak, Azra Ari Khan
Case No. D2004-0017
1. The Parties
The Complainant is SFDH Associates, L.P. ("SFDH"), a California Limited Partnership, San Francisco, California, United States of America. SFDH is represented by Anne Hiaring, Esq., Law Office of Anne Hiaring, San Anselmo, California, United States of America.
The Respondent is "aak" Azra Ari Khan, Rawalpindi, Rawalpindi, Pakistan; John Barry, doing business as Pro-Life domains Not For Sale, Bronx, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sirfrancisdrakehotel.com> is registered with Intercosmos Media Group doing business as directNIC.com.
3. Procedural History
On January 9, 2004, the Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center"). The Complaint was filed pursuant to 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").
On January 13, 2004, the Center acknowledged receipt of the Complaint.
On January 13, 2004, the Center transmitted by email to Intercosmos Media Group doing business as directNIC.com a request for registrar verification in connection with the domain name at issue.
On January 15, 2004, Intercosmos Media Group transmitted by email to the Center its verification response that the Complaint was administratively deficient.
On January 15, 2004, the Center transmitted a Deficiency Notification to the Complainant informing it that according to the Registrar Verification, the actual Registrant of the disputed domain name <sirfrancisdrakehotel.com>, was not "Pro-Life domains For Sale," but rather "aak, Ari Khan." The Center therefore requested that the Complainant file an Amendment to the Complaint or an Amended Complaint, listing the correct Registrant.
Thereafter, the Complainant filed an amendment to the Complaint dated January 16, 2004. The Center verified that the Complaint together with the amendment satisfied the formal requirements of the Policy, the Rules and the WIPO Supplemental Rules.
On January 23, 2004, in accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced.
In accordance with Rule 5, paragraph 5(a) and the supplemental rules, a respondent must submit a response addressing the matters contained therein within twenty days of the date of commencement of the administrative proceeding.
As no such response was submitted, on February 13, 2004, the Center recorded a Notification of Respondentís Default and communicated it to both parties.
On February 25, 2004, the Sole Panelist agreed to the appointment. As required by the Center to ensure compliance with the Rules, paragraph 7, the sole panelist filed a Statement of Acceptance and Declaration of Impartiality and Independence.
On February 25, 2004, the Center transmitted by email the Notification of Appointment of Administrative Panel and Projected Decision Date of March 10, 2004 to the parties.
4. Factual Background
The Complainant was the only party that filed evidence in support of its case. In each instance, the Panel has satisfied itself that the evidence supports the Complainantís allegations of fact.
The Complainant is the owner of the Sir Francis Drake Hotel, a famous hotel and landmark in San Francisco, California, that has been in operation since December 1928. The hotel has been featured in newspapers, magazines and film and its services are advertised throughout the United States via newspaper advertisements, trade and professional directories and via the Internet.
The Complainant owns United States Registration No. 1,067,912 for the mark SIR FRANCIS DRAKE for "hotel and restaurant services." The registration was issued on June 14, 1977, and renewed on June 14, 1997, for a further 10-year term.
The Complainantís management company, Kimpton Hotel & Restaurant Group, Inc., owns the domain name <sirfrancisdrake.com>, which it uses commercially for the Sir Francis Drake Hotel.
The Respondent registered <sirfrancisdrakehotel.com> with directNIC on April 5, 2002. The directNIC record indicates that the site is active and expires on April 5, 2005.
There is no relation between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent obtained an authorization to use the Complainantís mark.
The Respondentís domain name, <sirfrancisdrakehotel.com>, does not resolve to an active website. Users entering the website are forwarded to web pages at the URLs "www.abortionismurder.org/" and "www.abortionismurder.org/notconvinced.shtml".
5. Partiesí Contentions
The Complainant asserts that:
The disputed domain name <sirfrancisdrakehotel.com> registered by the Respondent is confusingly similar to the trademark held by the Complainant. The domain name is made up of the combined words composing of the Complainantís SIR FRANCIS DRAKE trademark followed by a descriptive addition, "hotel." This reinforces the likelihood of confusion with the trademark held by the Complainant as it refers directly to the original and main object identified by the trademark. Similar conclusions were reached in the <marieclairemagazine.com> case (Marie Claire Album S.A. v. Buy This Domain, WIPO Case No. D2002-0677, September 4, 2002) and the Complainant notes that the respondent in the Marie Claire case was also Mr. Barry, at that time doing business as Buy This Domain.
The Respondent has no rights or legitimate interests in respect of the domain name. The Complainant notes that there is no evidence of the Respondentís use of, or demonstrable preparations to use the domain name or a name corresponding to it in connection with a bona fide offering of goods or services. The Respondentís name is "John Barry," not "Sir Francis Drake." The Complainant is not aware of any business being conducted by the Respondent as "Sir Francis Drake Hotel." The website merely points to an anti-abortion website that appears to have no relation to the Respondent. The Respondent also registered the domain name with directNIC in the unrelated name of "Pro-Life domains Not For Sale."
The Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain. The Respondentís use and registration of the <sirfrancisdrakehotel.com> domain name and linking of it to the anti-abortion site creates confusion and diverts legitimate customers to the "www.abortionismurder.org" site. This dilutes the value of and severely damages the goods in the Complainantís Sir Francis Drake Hotel name and mark. Additionally, it believes that the First Amendment does not protect the Respondentís activities and that the Respondent has no right to expound its views on abortion or that of any other party by "hijacking" the Sir Francis Drake Hotel name and its federally registered SIR FRANCIS DRAKE mark. (See Peta v. Doughney, 2001 u.s. App LEXIS 19028 (4th Cir. 2001); Planned Parenthood v. Bucci, 1998 U.S. App. LEXIS 22179 (sd Cir 1998) and Jews for Jesus v. Brodsky, 993 F.Supp 282 (D.N.J. 1998).
The Respondent registered the domain name and is using it in bad faith. The Respondent offered to sell the domain name for $1,000.00, which indicates that the Respondent acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of his out-of-pocket costs in violation of the Policy.
The Complainant asserts that the Respondent has registered 39 other domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. Although the respondents in some of these cases go by different names, they use the same or similar addresses and contact information and, in many instances, linked the domains to the "abortionismurder.org" website. In the Complainantís view this reinforces the conclusion that the Respondentís use and registration of the <sirfrancisdrakehotel.com> domain name is a bad faith violation of the Policy.
It further asserts further that the Complainantís Sir Francis Drake Hotel and its SIR FRANCIS DRAKE mark are well known and that it is highly unlikely that the Respondent, at the time he registered the domain name, was not aware that he was infringing the Complainantís trademark. By registering and using the <sirfrancisdrakehotel.com> domain name, the Respondent intentionally attempted to attract Internet users to the Respondentís website 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 Respondentís website.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, that:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
In the present case the Panel is of the view that the record contains ample evidence of each of the three requisite elements.
First, the Complainant claims and the Panel has verified to its satisfaction that the Complainant is the owner of the service SIR FRANCIS DRAKE, which is registered with the United States Patent and Trademark Office and used in connection with "hotel and restaurant services."
The domain name in dispute, <sirfrancisdrakehotel.com>, while not identical to the Complainantís Trademark, is confusingly similar to it. The <sirfrancisdrakehotel.com> domain name is made up of the combined words composing the Complainantís SIR FRANCIS DRAKE trademark followed by a descriptive addition "hotel." This descriptive term actually refers directly to the original and main object identified by the trademark, that is, the Sir Francis Drake Hotel.
The Panel therefore concludes that the contested domain name is confusingly similar to a mark in which the Complainant has rights and that the Complainant has fulfilled the requirements of Paragraph 4(a)(i) of the Policy.
Second, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant has proven that the Respondent has no rights to the domain name. There is no evidence of the 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. This Respondentís domain name serves merely to direct users to the anti-abortion website that appears to have no relation to the Respondent. The Respondent has not been commonly known by the domain name nor does it operate a business entity that utilizes the domain name.
The Panel agrees with the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
Third, the Complainantís evidence satisfies the third requisite element of bad faith on the part of the Respondent.
Paragraph 4(b) of the Policy provides four circumstances that are evidence of registration and use of bad faith. They are said "in particular but without limitation" to be evidence of bad faith. From this, the Panel infers that other conduct not so listed could also constitute bad faith under the Rules. In this case, the Panel finds that the Complainantís trademark is well known through the United States and the Respondent knew or should have known the Complainantís trademark. Had there been any plausible reason for the Respondentís adoption of the domain name, the descriptor "hotel" would not have been employed and that descriptor, once connected to the SIR FRANCIS DRAKE name can only refer to the Complainantís hotel. Further, the Respondent has offered to sell the name for more than the cost of registration. Finally, the linking of the domain name to an anti-abortion website with no logical or reasonable relationship whatsoever to the name is further evidence of bad faith.
For the reasons stated above, the Complainantís request that the domain name <sirfrancisdrakehotel.com> be transferred to it is granted.
J. Christopher Thomas, Q.C.
Dated: March 10, 2004