официальный сайт ВОИС
Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
(1) The National Deaf Children’s Society and (2) Ndcs Limited
Nude Dames, Chat, Sex
Case No. D2002-0128
1. The Parties
1.1 The Complainants are (1) The National Deaf Children’s Society, a company limited by guarantee registered in England and Wales, which is also a registered charity, and (2) NDCS Limited, a company incorporated in England and Wales which is a wholly-owned subsidiary of The National Deaf Children’s Society. The Complainants’ address is 15 Dufferin Street, London EC1Y 8UR, United Kingdom.
1.2 The Respondent is Nude Dames, Chat, Sex of PO Box 5757, Wakefield, RI 02880-5757, USA.
2. The Domain Name and Registrar
2.1 The domain name upon which this Complaint is based is <ndcs.org>.
The registrar of the domain name <ndcs.org> as at the date of the Complaint is Bulkregister.com.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Centre (the "Centre") February 7, 2002. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint stated that a copy of the Complaint together with the cover sheet to the Complaint had been sent to the Respondent as prescribed by the Supplemental Rules, and that a copy of the Complaint together had been sent to the concerned registrar of the domain name in dispute.
3.3 On February 13, 2002, the Centre sent the Complainants’ representative an Acknowledgment of Receipt of Complaint.
3.4 The Centre received a response to its Request for Registrar Verification from Bulkregister.com on February 14, 2002. This response confirmed:
(a) that Bulkregister.com had received a copy of the Complaint;
(b) that the domain name was registered with Bulkregister.com;
(c) that the Respondent was the current registrant of the domain name in dispute;
(d) the Respondent’s contact details;
(e) that the Policy applied to the domain name;
(f) that the current status of the domain name was locked;
(g) that the language of the Registration Agreement was English; and
(h) that under the Registration Agreement the domain name registrant had submitted to the jurisdiction at the location of the principal office of the registrar for court adjudication of disputes concerning or arising from the use of the domain name.
3.5 The Centre sent the Notification of Complaint and Commencement of Administrative Proceeding on February 15, 2002, to the Respondent’s representative by post/courier, facsimile and email, and to the Complainants’ representative by email.
3.6 The Centre received the Response from the Respondent’s representative on March 7, 2002.
3.7 The Centre acknowledged receipt of the Response on March 8, 2002.
3.8 The Centre received from the Complainants’ representative by email on March 13, 2002, a Request for Supplemental Filing, receipt of which was acknowledged by the Centre on March 14, 2002.
3.9 The Panel notes that the procedure in Administrative Proceedings under the Policy is that, subject to paragraph 10 of the Rules, the Panel reaches its decision based solely on the parties’ submissions in the Complaint and the Response. In the event that the parties make further submissions, whether or not the Panel considers these further submissions is entirely at the discretion of the Panel. In this instance, the Complainants’ further submission does not respond to any new issues raised by the Responses, and the Panel can see no benefit in considering any submissions other than the Complaint and Responses.
3.10 The Centre sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainants’ representative and the Respondent’s representative by email on March 22, 2002.
3.11 The Centre sent a transmission of case file to the Panel by email on March 22, 2002. The documentation was only received in hard copy by the Panel on April 2, 2002, in Sydney, Australia.
3.12 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainants
The following is asserted as fact in the Complaint.
The National Deaf Children’s Society is a company limited by guarantee and registered in England and Wales. It is registered as a charity. The Society was founded in London on December 15, 1944. It was established as The Society of St John of Beverly, its objective being "to further in every way possible the provision of full modern education for all deaf children in England, as originally accorded to hearing children". It was renamed the Deaf Children’s Society in 1945, before assuming its current name during the 1950s. In 1961 it was granted royal patronage by Her Majesty Queen Elizabeth The Queen mother. It was incorporated as a company in 1991.
NDCS Limited was incorporated in England and Wales in 1996 under the name The National Deaf Children’s Society Christmas Cards Limited and in April 1998, it acquired its current name. Throughout it has been a wholly owned subsidiary of the Society.
4.2 The Complainant’s trade marks
The Complainants describe in the Complaint the prominent use made by the Complainants of the "NDCS" acronym. Annexed to the Complaint are examples of, and information concerning, the Complainants’ business stationery, monthly journal and newsletter, Christmas cards and Christmas gift catalogue, videos and audio tapes, promotional literature and mail shot material, publicity photographs and press cuttings, and website (at http://www.ndcs.org.uk) all of which feature prominently the "NDCS" logo.
The following is asserted as fact in the Complaint.
NDCS is advised and believes that in light of its long and extensive use of the acronym NDCS in conducting its operations, if another charity or other entity commenced operations in the UK in the general field of the hard of hearing under the acronym NDCS, NDCS would have a very strong case in passing off under English law. In other words, NDCS has common law rights in England in its acronym NDCS such as to form the basis for an action in passing off.
4.3 Activities of the Respondent
The following information concerning the activities of the Respondent is asserted as fact in the Response, in which the Respondent is described as "NDCS Harold A. Meyer III".
The Respondent is the registrant of numerous .org domain names, most of which are generic or descriptive names. Furthermore, the Respondent utilizes his generic domain names in connection with adult oriented web sites. Because his generic domain names are capable of a multitude of uses, the Respondent does nothing wrong in using them however he pleases, even if it is distasteful to many people.
5. The Complainant’s contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complainants allege that the <ndcs.org> domain name is identical to the Complainants’ common law/unregistered trade mark "NDCS".
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint states that the Complainants are unaware of any reason why the Respondent could reasonably be said to have rights or legitimate interests in respect of the disputed domain name. The Complainants allege that the Respondent has no rights or legitimate interests in the <ndcs.org > domain name because, inter alia:
(a) NDCS is not the Respondent’s name and is not the Respondent’s trading name, nor is it his nickname;
(b) NDCS is not an acronym of the Respondent’s name, trading name or nickname;
(c) NDCS is an acronym for the words Nude Dames, Chat, Sex. Nude Dames, Chat, Sex may arguably be a description of what is offered at the web site http://www.ndcs.org, but it is not the name of anybody;
(d) the Complainants have not licensed the Respondent to use their acronym and common law trade mark;
(e) neither "Nude Dames, Chat, Sex" nor "NDCS" is a name in connection with which the Respondent is making a bona fide offering of goods or services;
(f) the only use that is being made of the domain name is as part of a web address which constitutes an automatic link to another web site. There is nothing on that web site to indicate "NDCS" as a name by reference to which the Respondent is making a bona fide offering of goods or services;
(g) the Respondent’s "NDCS" label has no meaning of substance and is a device designed to defeat a Complaint under the Policy. It is intended to serve no other useful purpose.
5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complainants allege that the Respondent registered and is using the <ndcs.org> domain name in bad faith. In support of this assertion, the Complainant alleges, inter alia:
(a) the Respondent registered the dispute domain name knowing it to be the foreshortened version of the Complainants’ <ndcs.org.uk> domain name;
(b) the Respondent deliberately connected the domain name to a site most likely to ensure that the existence of the domain name would be drawn to the Complainants’ attention quickly and to give rise to alarm at the Complainants’ end. There is no natural connection between the domain name in dispute and the web site. It is entirely artificial; and
(c) the Respondent knew of the Complainants and the significance of their acronym and trade mark when he registered the domain name. While the Complainants accept that their acronym might well not be well known to Americans generally, there are aspects of the Respondent’s behaviour which indicate that he was in fact aware of the Complainants and their trade mark, namely:
(i) he had previously registered the acronym of another UK charity and in that case the Respondent (identified as Harold A. Meyer III) approached the charity with a view to selling that domain name to the charity; and
(ii) it cannot be a coincidence that the Respondent has registered this domain name, which is an acronym for another UK charity, and in this case, has linked it to a pornographic web site in order to cause alarm with a view to provoking the inevitable offer to purchase.
6. The Respondent’s contentions in the Response
6.1 In response to the Complainants’ contentions, the Respondent states that the Complainant has no rights whatsoever to the disputed domain name and that this is another case of a Complainant, lacking a registered trademark, bringing an entirely unfounded complaint based on a mere allegation of a common law trademark which is only known in its immediate area.
6.2 In reference to paragraph 4(a)(i) of the Policy, the Response states that the Complainant has no trademark, registered or common law. In support of this allegation, the Respondent contends, inter alia:
(a) the Complainant concedes that it has no registered trademark but attempts to prove that it has a common law trademark. The entirety of the Complainant’s allegation of common law trademark rights is as follows: the Complainant incorporated NDCS Limited in England and Wales in 1996. Then changed its name to NDCS Trading Limited in 1997, and then changed it again in April 1998 to NDCS Limited once again; the Complainant’s actual name is the National Deaf Children’s Society and NDCS is an acronym of this name; and the Complainant uses the acronym for its name on a variety of material distributed to its members and the public in England exclusively;
(b) it is difficult to comprehend how the Complainant could have acquired a common law trademark right in simple initials over such a short period of time. Usually such rights are acquired over a long period of time through intense advertising and use; and
(c) the Complainant may be well known in England as the National Deaf Children’s Society, but the Complainant does not demonstrate that its initials are well known and exclusively identified with the Complainant. It is not apparent from the material filed by the Complainant that its acronym is as well known as its name, the National Deaf Children’s Society, is alleged to be.
6.3 In reference to paragraph 4(a)(ii) of the Policy, the Response states that the Respondent has a legitimate interest in the disputed domain name because it is generic and capable of a multitude of uses by a multitude of parties, none of which have any relation to the Complainant.
The Respondent further states that the disputed domain name is merely four letters and has no independent meaning apart from its potential use as an acronym, and because of this the disputed domain name is generic. On this point the Respondent argues that as the domain name is generic, the first person to register it in good faith is entitled to the domain name, as decided in CRS Technology Corporation v. CondeNet NAF Case No: FA#0002000093547. The Respondent states that under this decision, common words and descriptive terms are legitimately subject to registration as domain names on a "first come, first served" basis.
The Response states that the Respondent registered <ndcs.org> with "Nude Dames Sex Chat" in mind, and not the Complainant. The Panel observes that the acronym of "Nude Dames Sex Chat" is "NDSC" which does not correspond to the domain name in dispute.
6.4 In reference to paragraph 4 (a) (iii) of the Policy, the Response states that there is no bad faith registration and use by the Respondent. In support of this contention, the Response states, inter alia:
(a) the Complaint expressly admits and concedes that its acronym, if widely known at all, is only known in England, and that its mark would only be strong enough to prevent another deaf children’s charity from using its name or a name similar to it. Accordingly, it is clear that if the Complainant has a common law trade mark at all, which is not conceded but denied, it is simply not at all known in the United States and can freely be used by anyone other than a deaf children’s group even in the case of a registered trade mark, it is impossible to impute bad faith registration where the mark is not registered or known where the Respondent resides;
(b) there is absolutely no evidence that the Respondent should have ever heard of the Complainant, which operates a charity exclusively in England. The Respondent has never heard of the Complainant. The allegation that the Respondent must have heard of the Complainant because two British charities took him to ICANN is incredible and requires a huge leap of faith unsupported by any evidence;
(c) where a Complainant alleges a common law trademark, the Complaint must show that its common law rights extend to the jurisdiction where the Respondent resides, under Supremo n.v/s.a. v. Rao Tella WIPO Case No. D2001-1357;
(d) there is no evidence to show that the Respondent has ever heard of the Complainant and registered the disputed domain name with the Complainant in mind. In fact, evidence indicates that the Respondent’s registration of the disputed domain name is entirely consistent with his lawful practice of registering generic acronym domain names;
(e) neither mere registration, nor general offers to sell, domain names which consist of generic, common or descriptive terms can be considered acts of bad faith; and
(f) because the Complainant has failed to demonstrate bad faith registration, it is not necessary to consider bad faith use. Nevertheless, the Respondent wishes to address the allegation that there was something wrong in responding to the Complainant’s offer of selling the domain name; at no time did the Respondent ever solicit the sale of the name to the Complainant. The Respondent had never even heard of the Complainant. It was the Complainant who solicited the sale from the Respondent for US$1,000, and now attempts to use its own solicitation as evidence of bad faith.
7. Discussion and Panel Findings
7.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainants have the burden of proving, on the balance of probabilities, that all three elements are present. The singular term ‘Complainant’ is used hereafter to refer to the first Complainant.
7.2 Domain Name identical or confusingly similar to Complainants’ trade mark
The domain name in dispute is <ndcs.org>. The Complainant claims that it has common law trade mark rights in the initials "NDCS", being the acronym of the name by which the Complainant is commonly known - the National Deaf Children’s Society. The Complainant is a registered charity and the second Complainant is the company through which it carries out certain commercial activities, such as the sale of Christmas cards.
The first issue that the Panel must address is whether the Complainants have proved that they provide goods and services under the "NDCS" common law trade mark they claim to own, and whether there is the requisite level of recognition of this mark by the public and association of the mark with the Complainants.
The Panel notes that the Complainant was founded in 1941, and has been providing charitable services under its present name, the National Deaf Children’s Society, since the 1950s. The Complainant also presents evidence of its use of the "NDCS" mark, in stylised logo form, by annexing to the complaint financial statements such as annual reports and accounts, and the literature and other material described at paragraph 4.2 above. The earliest such document is the front page of the Complainants’ 1974-5 Year Book and Annual Report and Accounts.
The Panel notes that in the Response there appears to be significant confusion on the part of the Respondent as to the identity of the Complainants. In particular, the Response denies that the Complainants could have common law trade mark rights in the acronym "NDCS" because NDCS Limited, the second Complainant, was only incorporated in 1996, and:
"It is difficult to comprehend how the Complainant could have acquired a common law trademark right in simple initials over such a short period of time."
In fact, the Complainant has been known by its current name for almost 50 years, and the existence of the "Year Book" described above suggests that the Complainant has been using the initials "NDCS" in stylised logo form for a period of at least 18 years, and perhaps for considerably longer.
In respect of the reputation of the Complainants and the extent to which the public associates the initials "NDCS" with the Complainants, in the Panel’s opinion, the most significant fact is that each year, half a million Christmas cards are sold in the name of the Complainants which feature the "NDCS" logo. This is very compelling evidence that a very broad section of the public in the United Kingdom are aware of the Complainants and associate the "NDCS" acronym with the charitable goods and services they provide. Furthermore, also annexed to the Complaint are extracts from national newspapers in the UK in which the Complainants publicise charity events organised by them, such as annual cycle adventure holidays in other countries to raise money for the charity. This promotional material also feature the "NDCS" logo. Such events, and the widespread advertising of them, can only serve to raise public awareness of the Complainants and increase association of the "NDCS" mark with the Complainants on the part of the general public.
The Panel is satisfied that, on the balance of probabilities, there is sufficient public recognition of the initials "NDCS" as an acronym of the Complainant’s, and as an abbreviation of the second Complainant’s, legal names to accord common law trade mark protection to the initials "NDCS". Therefore the Panel does not agree with the Respondent’s contention that the Complainants do not have any trademark, either registered or common law.
The domain name in dispute contains the initials "NDCS" which is identical to the Complainants’ common law trade mark of "NDCS", the only difference being the gTLD suffix ".org". It is well-established that this difference is incapable of differentiating the domain name in dispute from the Complainants’ trade mark, and the Panel therefore finds that the domain name in dispute is identical to the Complainants’ common law "NDCS" mark.
Accordingly, the Panel finds that both Complainants have proven paragraph 4(a)(i) of the Policy.
7.3 The Respondent has no rights or legitimate interests in the Domain Names
The Complainants assert that the Respondent has no rights or legitimate interests in the disputed domain name for the reasons set out in paragraph 5.3 above.
To deal with the Respondent’s counter-arguments which are set out in paragraph 6.3 above:
i) the Panel does not accept the Respondent’s counter-argument that it has a legitimate interest in the disputed domain name because it is "generic and capable of a multitude of uses by a multitude of parties". The Respondent further contends that such generic domain names can be registered on a "first come, first served" basis, and the first person to register the domain name is deemed to have a legitimate right and interest in it. In support of these propositions the Respondent cites the NAF case CRS Technology Corporation v. CondeNet.
In the Panel’s opinion, it is misleading to refer to the above case, which dealt with the domain name <concierge.com> because, whilst it is evident that the word "concierge" is generic, in the sense that it is a common word which can relate to or describe an entire group, the letters "NDCS" are not generic in this way. The Panel refers to the WIPO decision D2001-0957, British Heart Foundation v. Harold A. Meyer III, and agrees entirely with the following quote made by the Panelist in that case:
"It is noted by the Panel that the Respondent appears to be confusing the concept of descriptiveness with the concept of genericism - whilst the group of letters BHF might be "descriptive" of various entities, it can't be said that it is "generic" in the sense that it denotes a whole group or class of entities."
If the disputed domain name were truly generic, the Panel would agree with the Respondent’s assertion that, being the first person to register the domain name, he has a legitimate right and interest in it. However, the Panel does not accept that the letters "NDCS" are generic in the required sense, and the Respondent’s claim to have legitimate right and interest in the domain name on this ground fails; and
ii) in respect of the Respondent’s claim that he registered <ndcs.org> with the words "Nude Dames Sex Chat" in mind, the Panel cannot accept the submission as plausible absent evidence establishing the Respondent’s dyslexia. The Panel refers to WIPO decision D2001-0957, British Heart Foundation v. Harold A. Meyer III, a case in which the Complainant was another UK charity and the Respondent was Harold A. Meyer III, the individual who is the administrative contact and technical contact in the present case, and who the Response claims is also the actual Respondent in the present proceeding. In the above case, the domain name in dispute was <bhf.org>, and the Complaint was dismissed as a result of the complainant failing to prove that it had common law trade mark rights in the acronym "BHF". The Panel notes that the at the time of the Administrative Proceeding the registrant of the domain name <bhf.org> was Harold A. Meyer III, but a WHOIS search reveals that the registrant is now "BustyHornyFemales.com".
The Respondent’s assertion that the trading name of which the domain name in dispute is an acronym was dreamed up before the disputed domain name was registered is plainly nonsense, because the acronym of the name claimed to have been so invented by the Respondent does not match the domain name in dispute, because, as the Complaint submits, the name "Nude Dames Chat Sex" "has no meaning of substance" and because those words are not apt to describe an organisation. Nor, incidentally, do they accurately denote or describe the content of the website to which the domain name in dispute was directed before it was pointed, as it does now, to a temporary site (http://tempserver.com/ndcs.html) which merely contains an unproofed copy of the Response in this proceeding.
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if proven to exist by the Respondent, can demonstrate the Respondent’s rights and legitimate interests in the disputed domain name. The Panel notes that the Respondent has not argued that any of these circumstances exist in the present case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has proven paragraph 4(a)(ii) of the Policy.
7.4 Domain Name has been registered and is being used in bad faith
As noted above, the Complainant asserts that the domain name in dispute has been registered and is being used by the Respondent in bad faith for the reasons set out in paragraph 5.4 above.
In short, the Complainants argue that when the Respondent registered the domain name in dispute, it was aware of the Complainants and their web site at http://www.ndcs.org.uk, and that the domain name was deliberately connected to a pornographic site with the aim of quickly bringing the situation to the Complainants’ attention in a way which would cause significant concern and elicit a prompt and lucrative offer from the Complainants to purchase the domain name from the Respondent. The Complainants therefore argue that the Respondent has registered and used the disputed domain name in bad faith for the reason set out in paragraph 4(b) (i) of the Policy.
The Respondent raises two principal arguments.
(i) First, the Respondent argues that he had never heard of the Complainants when he registered the disputed domain name because the Complainants operate a charity exclusively in England. The Respondent rejects the Complainants’ assertion that the Respondent had heard of the Complainants because Harold A. Meyer III had previously been a Respondent in a WIPO Administrative Proceeding under the Policy which also involved a UK charity and a .org domain name, on the grounds that this requires a, "huge leap of faith.".
The Panel does not accept that the Respondent had never heard of the Complainants when it registered <ndcs.org>, nor that to make the connection described in the preceding paragraph requires a "huge leap of faith".
The first reason concerns the chronological sequence of events. The Panel gave its decision in WIPO case D2001-0957, British Heart Foundation v. Harold A. Meyer III on November 13, 2001, finding in favour of the Respondent and dismissing the Complaint. The Respondent registered the disputed domain name <ndcs.org>on December 17, 2001, which was also a .org domain name, and where a UK charity held the corresponding .org.uk domain name. In the Panel’s view, this was hardly coincidental. It is far easier to infer that, having been involved in an Administrative Proceeding in relation to the <bhf.org> domain name in which the Complaint was dismissed, Mr. Meyer was inspired to look for other .org domain names to register, and opportunistically registered the domain name in dispute with a view to selling it to the Complainant at a profit.
The second reason is that, although the Complainant is a charity, it has a substantial presence on the Internet, primarily through its http://www.ndcs.org.uk web site, although the Panel notes that other domain names (including http://www.ndcs.com) resolve to the first Complainant’s web site. It is clear from the decision in WIPO case D2001-0957, British Heart Foundation v. Harold A. Meyer III that the Respondent in that case, Harold A. Meyer III, knew of the Complainant in that case, the British Heart Foundation charity, albeit after acquiring the <bhf.org> domain name, because, as stated in that decision:
"The Respondent registered the domain name <bhf.org> on February 6, 2000. On December 28, 2000, the Respondent sent an email to the Complainant, stating as follows:
"We are the registrants of the following prime generic acronym domain which is now for sale. =[BHF.org]= Obviously, it offers tremendous marketing, identity, and convenience. Please let us know your interest.""
Therefore, the Respondent showed that he was aware of the existence of the Complainant in that case, an English charitable organisation, by seeking from it an expression of interest in the <bhf.org> domain name. In the Panel’s view, it requires no leap of faith at all to infer that, at the time of registration of the disputed domain name, the Respondent had heard of other English charitable organisations and, in particular, the Complainant.
(ii) The second principal argument raised by the Respondent to refute the allegation of bad faith registration and use of the disputed domain name is that where a Complainant alleges that it has common law trade marks, it must show that its rights extend to the jurisdiction where the Respondent resides, and if this is not the case and the mark is not well-known in the country where the Respondent resides, it is impossible to impute bad faith registration to the Respondent. In support of this contention, the Respondent refers to Supremo n.v/s.a. v. Rao Tella WIPO Case No. D2001-1357.
The Panel agrees with the general principle that one cannot infer that just because a mark is well-known in its home country, the mark is well-known in another country where the domain name registrant resides. It would be unreasonable and wrong to attribute bad faith registration to a Respondent where the Complainant’s common law trade mark was not well-known in the country of residence of the Respondent and where there was no evidence before the Panel to support a finding that the Respondent had heard of the Complainant or its mark. However, in the present case, the Panel is of the view that the Respondent had heard of the Complainants at the time the disputed domain name was registered, and was familiar with its names and mark.
The final question to be addressed by the Panel is whether, as the Complainants argue, the domain name in dispute was registered by the Respondent in the circumstances of paragraph 4(b)(i) of the Policy, which, if proven, would show registration and use in bad faith by the Respondent. In other words, did the Respondent register the domain name for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainants for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name?
The Panel answers this question in the affirmative. Unlike in the Administrative Proceeding involving the domain name <bhf.org>, the Respondent this time did not approach the Complainants seeking an expression of interest in the domain name. Rather, the Complainant’s Deputy Chief Executive took the initiative and wrote to the Respondent asking to have the domain name transferred to the Complainants and offering to reimburse the transfer fee, and later, through its lawyers, offering to pay the Respondent’s reasonable costs associated with the original purchase of the domain name and its transfer to the Complainants up to a total of $1,000.
The Respondent chose to re-direct the disputed domain name to a pornographic web site (for which it receives referral fees), a move plainly calculated to bring the domain name to the Complainants’ attention and trigger an approach. Once this occurred, the response from the Respondent’s lawyers stated, inter alia:
"…our client has been utilizing this domain for adult access and has spent considerable funds developing his web sites and links. My client is willing to discount the value of this domain by 50% to $12,500.00 because you represent a charity. His business expenses far exceed the registration cost and he allocates his operating expenses to all of his domains."
In the Panel’s view this response enlivens paragraph 4(b)(i) of the Policy. The Respondent’s out-of-pocket costs directly related to the domain name were obviously less than US$12,500. And as the Complainant’s lawyers correctly pointed out, the domain name in dispute merely pointed to a pornographic site at http://www.123pee.com, which had been in existence for some time, and it was to this web site that the <bhf.org> domain name did and still does resolve.
In the Panel’s opinion, the Respondent registered the domain name in dispute with the intention of selling it to the Complainant (or a third party) for sums vastly greater than those spent by the Respondent in registering the domain name or creating any web site or pages at that URL.
The Panel has come to the firm view, based on all of the evidence available in this matter, that the domain name in dispute was registered and being used in bad faith by the Respondent at least at the time of the Complaint. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a) (iii) of the Policy.
The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainants. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain name <ndcs.org> be transferred by Bulkregister.com to the first Complainant, The National Deaf Children’s Society.
Philip N. Argy
Dated: April 19, 2002