WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FDNY Fire Safety Education Fund, Inc. and New York City Police Foundation, Inc.
Great Lakes Coins %27 Collectibles
Case No. D2001-1445
1. The Parties
The Complainants in this administrative proceedings are the FDNY Fire Safety Education Fund, Inc. (the "Fund"), located at 9 MetroTech Center, Brooklyn, New York 11201, United States of America, and the New York City Police Foundation, Inc. (the "Foundation"), located at 345 Park Avenue, New York, New York 10154, United States of America. According to the who-is database of Internet Names Worldwide the Respondent in this administrative proceeding is Great Lakes Coins %27 Collectibles, having a postal address of P.O. Box 845, Portland, Michigan 49081, United States of America.
2. The Domain Name and Registrar
This dispute concerns the domain name <fdnyandnypd.com> (the "Domain Name"). The registrar with whom the Domain Name is registered Internet Names Worldwide, a Division of Melbourne IT, Ltd., Level 2, 120 King Street, Melbourne, Victoria 3000, Australia (the "Registrar"). The Panel finds that the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") is the Policy applicable to this dispute.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 10, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainants, dated December 14, 2001.
A Formal Requirements Compliance Checklist (the "Checklist") was completed by the assigned WIPO Center Case Administrator on December 18, 2001. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy (the "WIPO Supplemental Rules"). According to the Checklist, the required fees for a single-member Panel were paid on time and in the required amount by the Complainants.
No formal deficiencies having been recorded, on December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of January 7, 2002, by which the Respondent would file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail and by express courier. Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent.
On January 7, 2002, the Respondent submitted its Response.
Having received this Panelist's Statement of Acceptance and Declaration of Impartiality and Independence, on January 21, 2002, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision date was set for February 4, 2002. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
4. Factual Background
The following facts appear from the Complaint and the Response. The Fire Department of the City of New York (the "FDNY") is a government agency of the City of New York and the owner of certain trademarks, logos, names and insignias, including, but not limited to, the acronym FDNY (collectively the "FDNY Marks"). The FDNY has used and is using the FDNY Marks in connection with its official employee uniforms and apparel, on fire-fighting equipment and elsewhere in the conduct of its official business, including educational programs concerning fire safety. The FDNY was established in 1898 and has used the FDNY Marks to identify its services for many years.
The Fund is a not-for-profit organization dedicated to promoting public safety and supporting the FDNY. The Fund's activities include: providing assistance to the families of fallen firefighters; offering classes and demonstrations on fire safety to children and families; supporting fire safety public awareness campaigns; providing smoke detectors and batteries to persons who cannot afford them; and the purchase of training and safety equipment for firefighters.
The Fund is also the exclusive licensee of the FDNY Marks and uses the marks in connection with its educational activities and on a wide variety of items offered for sale to the public through the Fund's Fire Zone store, located in Rockefeller Center, New York City, and through its web site, <fdnyfirezone.org>. Visitors from throughout the world come to the Fire Zone store during trips to New York City and shop on its web site. All products sold by the Fund bearing the FDNY Marks are manufactured to the Fund's specifications for appearance and quality. All proceeds from the sale of such authorized merchandise go directly to the Fund to be used in connection with its fire safety education programs and its other efforts in support of the FDNY. There is, however, no evidence provided by Complainants that the FDNY Marks have been federally registered by the FDNY or the Fund.
The New York City Police Department (the "NYPD") is also a government agency of the City of New York and is the owner of certain trademarks, logos, name and insignias, including, but not limited to, the acronym NYPD (collectively the "NYPD Marks").
The NYPD Marks are used in connection with the NYPD official employee uniforms and apparel and in the conduct of their official business. The NYPD was established in 1845, and has used the NYPD Marks to identify its services for many years.
The Foundation is a non-profit organization established in 1971, to improve public safety services in New York City and to strengthen the partnership between the police and the public. The Foundation provided resources to support special programs in the NYPD that are otherwise not possible with public funds. The Foundation is a licensee for the NYPD Marks and uses the marks in connection with a wide variety of items offered for sale to the public by various retailers of licensed products. The Foundation owns a number of federal trademark registrations for NYPD dated from at least early 1998.
Respondent operates an Internet site or site(s) through which it sells various products. Complainants allege, and Respondent does not dispute, that Respondent is selling (at least as of the date of the Complaint), various items on the Internet bearing the FDNY and NYPD Marks. Respondent has applied for, but not as yet been granted U.S. Trademark Registrations for "Fallen Heroes FDNY Not Forgotten" (on October 19, 2001) and "Fallen Heroes NYPD Not Forgotten" (on November 11, 2001). Respondent registered the Domain Name on November 1, 2001. The registration of the Domain Name by Respondent was without the permission of Complainants.
After becoming aware of Respondent's registration of the Domain Name, Complainants, through their counsel, contacted Respondent, by email, dated November 26, 2001, demanding Respondent cease using the Domain Name. There then ensured an exchange of letters and phone calls, the details of which are not relevant to this Panel's determination.
5. Parties' Contentions
Complainants contend that Respondent has registered as a domain name a mark which is identical or confusingly similar to the service mark and trademark registered and used by Complainant, that the Respondent has not rights or legitimate interests in respect to the domain name at issue, and that the Respondent has registered and is using the domain name at issue in bad faith.
Respondent denies the allegations in the Complaint. Respondent, in essence, contends that the letters "NYPD" and "FDNY" are used extensively throughout the United States in various forms by various entities other than Complainants and that the use of those letters, individually and collectively, is widespread. Respondent further claims that Complainants have not reasonably attempted to enforce any claimed common law or statutory rights in those letters and that, therefore, Complainants have not established:
1. That the challenged domain name is identical or confusingly similar to a trademark or service mark in which Complainant have rights;
2. That Respondent has not rights or legitimate interests in respect of the challenged domain name; and
3. That the challenged domain name has been registered and is being used in bad faith.
4. That the challenged domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name of Complainants;
5. That the challenged domain name was registered in order to prevent Complainant from reflecting their marks in a corresponding domain name;
6. That the Complainants and the Respondents are competitors and/or the challenged domain name was registered by Respondent primarily to disrupt Complainants' business; and
7. That Respondent received notice of the challenge to the domain name prior to its preparation and use of the domain name in connection with a bona fide offering of good and services.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." Since the parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.
Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following: "(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith."
After carefully reviewing the parties’ contentions, this Panel concludes that the only real issue is whether Respondent's use of the Domain Name violates Paragraph 4(a)(ii). The papers demonstrate without much doubt that Complainants have proven that it violates Paragraphs 4(a)(i) and (iii).
With respect to Paragraph 4(a)(i), the Domain Name is identical or confusingly similar to the FDNY and NYPD trademarks. While the Domain Name contains the terms "FDNY" and "NYPD," with the addition of the term "AND" between them, the addition of the term "AND" is non-distinctive and does not change the result. See A.B.C. Carpet Co., Inc. v Helen Gladstone, WIPO Case No. D2001-0521 (July 6, 2001) (addition of the phrases "and-home" and "home" in the domain names <abccarpetandhome>, <abccapret-home.com> and <abccarpet-home.net> found to be merely the additional of non-distinctive matter); Serena Williams and Venus Williams v. Eileen White Byrne and Allgolfconsultancy, WIPO Case No. D2000-1673 (January 30, 2001) (<venusandserenawilliamidentical.com> found to be identical or confusingly similar to Complainants' trademarks).
The Panel notes that the FDNY and NYPD Marks have been long used by Complainants or entities related to Complainants. The Panel takes judicial notice that the use of the Marks by Complainants and related entities is well known. However, the Panel also notes that only the NYPD Mark was federally registered prior to Respondent's registration of the Domain Name. While this does not, in this case, affect the analysis under Paragraph 4(a)(i) (since Respondent clearly had knowledge of its use by the Foundation and the NYPD), it may do so under Paragraph 4(a)(ii) (see below).
Paragraph 4(b) of the Policy provides guidance on Paragraph 4(a)(iii) of the Policy. It provides:
"b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and used 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 our-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 complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web sit or location."
Complainant contends, and Respondent essentially admits, that Respondent is selling goods with the Marks affixed. Accordingly, the Panel finds that Respondent’s use of the Domain Name violates Paragraph 4(b)(iv). The Panel therefore concludes that the Domain Name violates Paragraph 4(a)(iii) of the Policy.
Thus, the issue, which is at the heart of this matter, is whether the use of the Domain Name violates Paragraph 4(a)(ii). Paragraph 4(c) of the Policy provides guidance here; rights or legitimate interests may be established by demonstrating the following:
(i) before any notice to you 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.
The Panel has analyzed Respondent's contentions and it is clear that, in essence, they are that the Marks, as used by Complainants, are "weak," that they can be used by various users and that, therefore, Respondent's activities fall within Paragraph 4(c)(i). To support this argument, Respondent claims that the Marks are used extensively, but only cites as support two federal registrations, one by an entity affiliated with one of the Complainants, the other abandoned. This is hardly solid evidence of a weak mark.
The Panel recognizes that it must tread carefully here. On the one hand, common or weak marks are not entitled to much legal protection (particularly if they are not federally registered). On the other, knowing use of a mark, even a weak one, to trade on the goodwill and reputation of the owner of the mark is certainly not a "bona fide offering."
In this matter it is clear Respondent knew of Complainants' uses of their Marks. Indeed, it attempted to trade on those Marks. The Panel is also not convinced that the Marks are weak.
Accordingly, the Panel finds that Respondent's ownership of the Domain Name violates Paragraph 4(a)(ii) and therefore Paragraph 4(a) of the Policy. The Panel notes it might have reached a difference result if Respondent had shown that it had used the Domain Name without knowledge, whether actual or constructive, of Complainants' use of their Marks and that the Marks were truly weak.
For all of the foregoing reasons, the Panel decides that the Domain Name registered by Respondent is identical or confusingly similar to the trademark in which the Complainants have rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent's Domain Name has been registered and is being used in bad faith. Accordingly, Pursuant to Paragraph 4(a) of the Policy, the Panel requires that the registration of the Domain Name <fdnyandnypd.com> be transferred to the Complainants.
Thomas D. Halket
Dated: February 4, 2002