FDNY Fire Safety Education Fund, Inc.; New York City Police Foundation, Inc. v. Great Lakes Coins %27 Collectibles

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FDNY Fire Safety Education Fund, Inc. and New York City Police Foundation, Inc.

v.

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

A. Complainants

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.

B. Respondent

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.

7.Decision

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

Sole Panelist

Dated: February 4, 2002