Bahai News - WIPO Domain Dispute Case D2001-1302
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Spiritual Assembly of the Bahá.ís v. Buy This Name
Case No. D2001-1302
1. The Parties
The Complainant is the National Spiritual Assembly of the Bahá.ís of the United
States, a corporation organized and existing under the laws of the State of Illinois, United States
of America, with its principal place of business at 1233 Central Street, Evanston, Illinois,
60201-1611. It is represented by Eric W. Gallender of Brinks, Hofer, Gilson & Lione, Chicago,
Illinois, United States of America.
The Respondent is Buy This Name of 19, Bondarenko Square, Obinsk, Kaluga, reg 249020,
2. The Domain Name and Registrar
The domain name at issue is <bahaiwomen.com>.
The Registrar with which the domain name is registered is BulkRegister.com, Inc, 10 East
Baltimore Street, Suite 1500, Baltimore, Maryland 21202, United States of America.
3. Procedural History
On October 25, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center
("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute
Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names
and Numbers ("ICANN") on August 26, 1999.
On November 6, 2001, the Registrar responded to a request for Verification of the domain name,
confirming the details of the Respondent, that the Respondent is the current registrant of the
domain name and that the language of the Registration Agreement is English.
On November 8, 2001, the WIPO Center sent a Notification of Complaint and Commencement of
Administrative Proceeding to the Respondent. The Respondent was advised that a Response to the
Complaint was required within 20 calendar days i.e. by November 28, 2001.
No Response was received from the Respondent and on December 3, 2001, a Notification of
Respondent Default was sent to the Respondent.
On December 12, 2001, the WIPO Center informed both parties that an Administrative Panel had been
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the
Rules and Supplemental Rules, that the Complaint was properly notified to the Respondent in
accordance with the Rules, and that the Administrative Panel was properly constituted.
4. Factual Background
The Complainant has asserted and provided evidence in support of the following facts. Unless
stated otherwise, the Panel finds these facts established.
The Bahá.í Faith was founded in the mid-nineteenth century and is now accepted by
more than five million people from many different nations, races, cultures and classes. It
emphasizes the elevation of the status of minority groups that have experienced discrimination and
teaches the equality of women and men.
The Complainant states that it has invested a substantial amount of time and resources in
promoting the Bahá.í Faith under the name and trademark BAHÁ.Í. It
claims that it has used the name and trademark BAHÁ.Í continuously for over one
The Complainant is the registered owner of the trademarks BAHÁ.Í,
BAHÁ.Í and design and NATIONAL SPIRITUAL ASSEMBLY OF THE BAHÁ.ÍS OF THE
UNITED STATES. All three trademarks are registered in the United States of America. The date of
first use of the trademark BAHÁ.Í is given as 1900.
On May 27, 2001, the Respondent registered the disputed domain name. The Complainant states that
some time shortly thereafter, the Respondent began operating a pornographic website at the site
<bahaiwomen.com>. The site also operates as a portal to other pornographic websites.
The site <bahaiwomen.com> also contains a link entitled "Click Here to Buy this Domain
Name". Users clicking on that link are transported to a page on which they can make an offer
to purchase the disputed domain name. That page bears the notice:
"ANY OFFER BELOW $550.00 USD WILL BE IGNORED!"
On October 15, 2001, the Complainant.s Representative wrote to the Respondent requesting that it
transfer the disputed domain name to the Complainant. On the same day, the Respondent replied,
saying "we don.t open attachments".
The Complainant duly re-sent the letter in the text of an email, and on October 16, 2001,
received a brief Response:
"This domain is $775".
5. Parties. Contentions
A. The Complainant
The Complainant contends that the disputed domain name is confusingly similar to the
Complainant.s BAHÁ.Í trademark because the primary and dominant portion of the
disputed domain name is "BAHAI". The Complainant submits that the word "BAHAI"
is "virtually identical in terms of appearance, sound and impression" to the Complainant.s
BAHÁ.Í trademark. It submits that the addition of the generic or neutral term
"WOMEN" in the disputed domain name does not affect this analysis.
The Complainant asserts that the Respondent has no rights or legitimate interest in the disputed
domain name. It claims that it has been using the name BAHÁ.Í continuously for over
100 years, long before the Respondent registered the disputed domain name on May 27, 2001.
The Complainant confirms that it has never licensed or otherwise authorized the Respondent to use
its name and trademark and asserts that the Respondent has never been known by the disputed domain
name or any similar name.
The Complainant also contends that the disputed domain name was registered and has been used in
bad faith. It bases this conclusion on the following:
(a) The Respondent has offered to sell the disputed domain name for valuable consideration well
in excess of the Respondent.s out-of-pocket costs:
(i) the site <bahaiwomen.com> contains a link entitled "Click Here to Buy this Domain
Name", which allows users to make an offer to purchase the domain name (and which contains the
statement "ANY OFFER BELOW $550.00 USD WILL BE IGNORED!")
(ii) the Respondent offered to sell the disputed domain name to the Complainant for $775.
(b) The Respondent has used, and is using, the disputed domain name in connection with a
(c) The name and trademark BAHÁ.Í is so well known that the Respondent must have
been aware of the Complainant.s rights when registering the disputed domain name;
(d) The Respondent intended to attract users to the site for commercial gain by creating a
likelihood of confusion with the Complainant.s trademark. The website contains a menu of
pornographic options, to which users are invited to subscribe. The Respondent is making commercial
gain from these subscriptions;
(e) The Respondent provided false contact information. The Complainant submits that the
administrative contact.s name, address and/or phone and fax numbers are false and were provided to
conceal the true identity of the owner and administrative contact for the domain name. The
administrative contract is identified as "Charles Bukowski", which the Complainant
suspects is a reference to a well-known author of the same name, who is now deceased.
B. The Respondent
No Response was received from the Respondent.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights; and
- That the Respondent has no rights or legitimate interests in respect of the domain name;
- That the domain name has been registered and is being used by the Respondent in bad faith.
Domain name is confusingly similar to a trademark or service mark in which the Complainant has
The Complainant has provided evidence of registrations of its trademarks BAHÁ.Í,
BAHÁ.Í and design and NATIONAL SPIRITUAL ASSEMBLY OF THE BAHÁ.ÍS OF THE
UNITED STATES in the United States of America.
The Panel accepts that the mark is associated with the Complainant and the Complainant.s faith.
While the Complainant.s trademark is registered only in the United States, the Bahá.í
Faith is now accepted by more than 5 million people from many nations and the mark is well known in
many countries. Because of the highly unusual nature of the mark, it is improbable that the
Respondent would have conceived the domain name independently.
The Panel also accepts the Complainant.s contentions that the addition of the
generic term "women" does not operate as a distinguishing feature.
By far the dominant and memorable part of the domain name is the Complainant.s
trademark BAHAI: America Online Inc v. East Coast Exotics - WIPO
Case No. D2001-0661. (July 10, 2001)
Accordingly, the Panel finds that the domain name <bahaiwomen.com> is confusingly similar
to the trademark BAHÁ.Í, in which the Complainant has rights.
No legitimate rights or interest in respect of the domain name
The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved,
shall demonstrate the Respondents. rights or legitimate interest in the domain name. These
(i) before any notice to the Respondent of the dispute, the Respondent.s use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name in connection with
the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organisation) has been commonly known by
the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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 Respondent has not provided any Response to the Complaint. The Panel has carefully
considered whether, even on the material presented by the Complainant there is any basis on which it
could be contended that any of the circumstances in paragraph 4(c) of the Policy apply. The
Panel finds that there are none and accepts the Complainant.s contentions that:
(a) the Complainant.s use of the mark predates the registration of the disputed domain name and
has extended over 100 years;
(b) the Respondent does not have any association with or licence from the Complainant; and
(c) the Respondent does not carry on any business under the mark BAHAI and was not commonly known
by the name BAHAI or any similar name before the domain name was registered.
The Panel finds it appropriate to draw an adverse inference from the Respondent.s
failure to respond to the Complaint (SSL International v. Mark Freeman,
WIPO Case No. D2000-1080 and Alta
Vista Company v. Grandtotal Finances Limited, WIPO
Case No. D2000-0848.)
Overall, the Panel can find no evidence to demonstrate that the Respondent has a legitimate right
or interest in the disputed domain name.
Domain name has been registered and is being used in bad faith
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular
but without limitation, if found by the Panel to be present, shall be evidence of the registration
and use 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 out-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 site or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Complainant has met the burden of proving this element.
First, the circumstances of registration of the domain name and the subsequent Response to the
Complainant.s attorneys indicate that the domain name was registered with the purpose of sale to
third parties, including the Complainant, in circumstances analogous to paragraph 4(b)(i):
- The domain name was registered under the name Buy This Name.
- The Registrar offered the domain name for sale on the website;
- When challenged the Respondent emailed the Complainant with the statement "this domain is
$775". The Panel takes this to be an offer for sale.
Secondly, the Respondent has used the domain name in connection with a pornographic
site. Previous Panels have held that the registration of a domain name incorporating
a well-known trademark and use of that domain name for a pornographic website
amounts to registration and use in bad faith: America Online, Inc v. East
Coast Exotics - WIPO Case No. D2001-0661;
America Online, Inc v. Viper - WIPO
Case No. D2000-1198.
Thirdly, the Complainant is using the domain name to attract for commercial gain users who would
click on to a website containing the word "Bahai" leaving it to be the Complainant or
somehow associated with the Bahai Faith - only to encounter a pornographic site unrelated to the
Bahai Faith. This creates a likelihood of confusion with the Complainant as to its involvement in
or association with that pornographic site . in breach of paragraph 4(b)(iv). Even though most
users would immediately know that the Bahai Faith is not connected with pornography, the fact is
that the Respondent has used the well-known BAHÁ.Í trademark as the hook to reel in
unwitting visitors in the first place. The Panel accepts the Complainant.s contentions that the
Respondent derives economic benefit either by attracting users to its site, where pornographic goods
and services are offered, or by receipt of compensation from owners of other websites for acting as
a portal to their sites.
Fourthly, the Panel believes that the domain name has been registered under
a false name. Previous Panels have held that providing false contact information
may lead to a finding of registration and use of a domain name in bad faith:
Telstra Corp v. Nuclear Marshmallows - WIPO
Case No. D2000-0003.
The Complainant contends that the name of the registrant is a well-known author,
Charles Bukowski who died in the United States in 1994. This Panel has previously
found that another pornographic website having the same registration address
namely "ForSale at 19, Bondarenko Square, Obinsk, Kaluga, Russia, involved
bad faith registration. In that case, the aadministrative contact was Allen
Ginsberg - another well-known author/poet. See: Imax Corporation v. ForSale - WIPO Case No. D2001-1166.
The Panel therefore finds the domain name has been registered and is being used in bad faith.
For the forgoing reasons, the Panel decides that:
(a) the disputed domain name is confusingly similar to the trademark BAHÁ.Í in
which the Complainant has rights; and
(b) the Respondent has no right or legitimate interest in respect of the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration
of the domain name <bahaiwomen.com> be transferred to the Complainant.
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