Sarah Lawrence College (SLC) v. High Traffic Pro-Life Domains Only $999

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 Respondent’s 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. Parties’ Contentions

A. Complainant

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 Respondent’s

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 Complainant’s 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 Complainant’s

mark. It is up to the College, Complainant argues, and not Respondent, to decide

which websites will be linked to its mark.

B. Respondent

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 Respondent’s 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 Complainant’s institution. This common

law use and ownership of the mark "Sarah Lawrence College"

is uncontested, and therefore deemed to be true[1].

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 Complainant’s 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, [Respondent’s] 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" – 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[2].

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 Complainant’s 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 Complainant’s 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 Respondent’s 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.

Respondent’s 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.

7. Decision

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.

Miriam Sapiro

Sole Panelist

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

domain name.

2. It is also unclear whether Respondent

receives a share of any contributions made on the website "www.abortionismurder.org."