WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Highland Street Connection dba Highland Street Foundation v. Chris McGrath

Case No. D2006-0516

1. The Parties

The Complainant is The Highland Street Connection dba Highland Street Foundation, Boston, Massachusetts, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.

The Respondent is Chris McGrath, Natick, Massachusetts, United States of America.

2. The Domain Names and Registrar

The disputed domain names <highlandstreetfoundation.com> and <highlandstreetfoundation.org> are registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2006. On April 25, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain names at issue. On April 27, 2006, Melbourne IT trading as Internet Names Worldwide 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, the Complainant filed amendments to the Complaint on May 1 and 2, 2006. The Center verified that the Complaint together with the amendments 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 3, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was May 23, 2006.

Pursuant to Complainant’s request, the Center suspended the proceedings from May 22 to June 19, 2006, to enable the parties to discuss settlement. On June 20, 2006, the Center notified the parties that the proceedings had been reinstated pursuant to Complainant’s further request, and that the Response due date had been extended to June 27, 2006.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2006.

The Center appointed William R. Towns, Richard G. Lyon and Grant L. Kim as panelists in this matter on July 24, 2006. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. Each member of the Panel has 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

The Complainant is a private family foundation organized under a trust and doing business as “Highland Street Foundation”. The Complainant supports a number of charitable organizations, mostly in the United States. Since its establishment in 1989, the Complainant has issued over $47 million in grants. The Complainant maintains a website at <highlandstreet.org>, which the Complainant has operated since June 2001.

For more than 15 years, the Complainant conducted its philanthropic activities as “Highland Street Connection”. However, on December 15, 2004, a majority of the Complainant’s Board of Trustees voted to officially change the name of the foundation to “Highland Street Foundation”. The Complainant has been officially known and has done business as “Highland Street Foundation” since June 8, 2005, when it received a DBA certificate¹ from the appropriate registrar, which recorded its use of the new name, “Highland Street Foundation.”

The Complainant’s Board of Trustee consists of the family members of the organization’s founder. The Respondent is one of these Board members. On February 28, 2005, the Respondent registered the two disputed domain names. Respondent uses the first disputed domain name, <highlandstreetfoundation.com>, to direct users to a website that prominently displays the Complainant’s former “Highland Street Connection” name, and features quotes from well known historical figures relating to ethical conduct, including a quote from the respected jurist BenjaminCardozo regarding fiduciary responsibilities. The Respondent’s website also contains a link to a 2004 Boston Globe newspaper article, concerning an investigation into the various real estate sales by the Boston Archdiocese of the Roman Catholic Church, including a no-bid sale of a bank building owned by the Archdiocese to the Complainant in 2003.

The second disputed domain name, <highlandstreetfoundation.org>, directs the user to a message that the site is “under construction.”

5. Parties’ Contentions

A. Complainant

The Complainant maintains that it has established common law trademark and service mark rights in HIGHLAND STREET, HIGHLAND STREET CONNECTION, and HIGHLAND STREET FOUNDATION by virtue of their adoption and continuous and substantially exclusive use in relation to the Complainant’s philanthropic activities. According to the Complainant all three designations have been prominently featured in the Complainant’s advertising materials and on its official <highlandstreet.org> website, and the public has come to identify the Complainant as the source of such philanthropic services. The Complainant contends that the disputed domain names are identical or confusingly similar to its HIGHLAND STREET and HIGHLAND STREET FOUNDATION marks.

The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondent has never been authorized or licensed to use the Complainant’s marks or to incorporate those marks into a domain name, and the Complainant observes that the Respondent did not acquire any such right or license as a member of the Complainant’s Board of Trustees. Further, the Complainant asserts that the Respondent is not commonly known or identified by the domain names, has not used the domain names in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the domain names. The Complainant argues that the “initial interest confusion” arising from the Respondent’s use of the domain names precludes any legitimate or noncommercial fair use under the Policy.

Finally, the Complainant argues that the Respondent registered and is using the disputed domain names in bad faith. The Complainant contends that the Respondent registered the disputed domain names in retaliation for the Board changing the Complainant’s name from “Highland Street Connection” to “Highland Street Foundation”, and that the Respondent is attempting to disrupt the Complainant’s charitable activities and to prevent the Complainant from using its HIGHLAND STREET FOUNDATION name and mark in a corresponding domain name. The Complainant notes that the Respondent’s current passive holding of the disputed domain name <highlandstreetfoundation.org> does not preclude a finding of bad faith under the Policy.

The Complainant has submitted a sworn statement from its legal counsel, who states that he contacted the Respondent on February 2, 2006 to inquire about the Respondent’s intentions in registering the disputed domain names. According to the sworn statement, the Respondent stated that he disagreed with the Board of Trustee’s decision to change the Complainant’s name from “Highland Street Connection” to “Highland Street Foundation”, and his intention was to deprive the Complainant of the use of the new name to the extent possible.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in Paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of Paragraph 4(a) of the Policy, a number of panels have concluded that Paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

Under Paragraph 4(a)(i) of the Policy, the Complainant must demonstrate rights in the marks that it asserts the disputed domain names are identical or confusingly similar to. In this case the Complainant asserts common law trademark or service mark rights in HIGHLAND STREET, HIGHLAND STREET CONNECTION, and HIGHLAND STREET FOUNDATION. It is well settled that the term “trademark or service mark” as used in Paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.WIPO Case No. D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

Common law rights in a trademark derive from the use of the mark in commerce so as to distinguish the trademark owners’ goods or services from those of its competitors. See T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372 (Fed.Cir. 1996). Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).

The Complainant clearly has established common law trademark or service mark rights in HIGHLAND STREET CONNECTION based on its extensive and continuous use by the Complainant since 1989 in relation to its philanthropic services. The evidence of the Complainant’s use of HIGHLAND STREET, standing alone, is less extensive, and relates for the most part to the continuous operation of the Complainant’s <highlandstreet.org> website since 2001. Nevertheless, there is sufficient evidence of use in the record, in the Panel’s estimation, to demonstrate that the Complainant has established common law rights in HIGHLAND STREET.

The Complainant did not begin using HIGHLAND STREET FOUNDATION in commerce until June 2005, and thus the available evidence of the Complainant’s use of this designation necessarily is more limited than that for either HIGHLAND STREET CONNECTION or HIGHLAND STREET. The Panel concludes from the record, however, that the Complainant’s continuous use of HIGHLAND STREET FOUNDATION in promotional materials and on its website since June 2005 is sufficient to establish common law trademark or service mark rights, particularly in light of the Complainant’s prior rights in the HIGHLAND STREET and HIGHLAND STREET CONNECTION marks.

The Panel notes that the Respondent registered the disputed domain names prior to the Complainant’s first use in commerce of the HIGHLAND STREET FOUNDATION name and mark. However, Paragraph 4(a)(i) embodies no requirement that the complainant’s trademark rights must have arisen before the disputed domain name was registered. Instead, the Policy refers to the complainant’s ownership of trademark rights in the present tense, see PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437, giving rise to a consensus view that a complainant can have rights in a trademark or service mark corresponding to the disputed domain name even where those rights first arose after the registration of the domain name. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. Iogen, WIPO Case No. D2003-0544; Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598.²

In view of the foregoing, the Panel finds that the Complainant has carried its burden of demonstrating trademark or service mark rights in HIGHLAND STREET, HIGHLAND STREET CONNECTION, and HIGHLAND STREET FOUNDATION under Paragraph 4(a)(i), and that the Respondent’s registration of the disputed domain names prior to the time that the Complainant’s rights arose in the latter mark does not preclude a finding of identity or confusing similarity under Paragraph 4(a)(i). Accordingly, the Panel next considers the Complainant’s contention that the disputed domain names are confusingly similar or identical to the Complainant’s HIGHLAND STREET and HIGHLAND STREET FOUNDATION marks.³

Under Paragraph 4(a)(i) of the Policy, the question of identity or confusing similarity is evaluated solely based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Café, WIPO Case No. D2000-0068. See also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

Upon direct comparison, the Panel finds that the disputed domain names <highlandstreetfoundation.com> and <highlandstreetfoundation.org> are identical or confusingly similar to the Complainant’s HIGHLAND STREET and HIGHLAND STREET FOUNDATION marks. Accordingly, the Complainant has met its burden under Paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has provided uncontested evidence that it has not authorized or licensed the Respondent to use the Complainant’s marks or to register domain names reflecting those marks. The Respondent plainly has no claim of ownership in the Complainant’s marks; nor does the Respondent’s position on the Complainant’s Board of Trustees convey any license to use the marks. As alluded to on the Respondent’s website, the Respondent’s fiduciary standing as a member of that Board imposes a higher standard of care and an obligation to scrupulously avoid acting out of self-interest.

There is no evidence that the Respondent has ever been commonly known by the disputed domain names. Nor does the record reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with any bona fide offering of goods or services. There is uncontroverted affidavit evidence in the record that the Respondent’s primary motivation in registering the disputed domain names was to frustrate the Complainant in its efforts to adopt and use the HIGHLAND STREET FOUNDATION name and mark.

Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under Paragraph 4(a)(ii). The circumstances as set forth and documented in the Complaint and its Annexes are sufficient to require the Respondent to come forward with evidence under Paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g.,Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it 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 a bona fide offering of goods or services; or

(ii) the respondent 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.

The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009.⁴ Nevertheless, the ultimate burden of proof on the legitimacy issue remains with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Panel has thoroughly examined the record for circumstances that might demonstrate that the Respondent has established rights or legitimate interests in the disputed domain names under Paragraph 4(c) of the Policy. The Panel has found none. The undisputed facts as reflected in the record are that the Respondent – while sitting on the Complainant’s Board of Trustees – intentionally registered two domain names that are confusingly similar or identical to trademarks or service marks in which the Complainant has established rights. He then used one of these confusingly similar domain names to divert internet users to his website, while passively holding and making no active use of the other.

While it is true that the Respondent registered the disputed domain names prior to the Complainant’s first use in commerce of the HIGHLAND STREET FOUNDATION name and mark, the Respondent did so with the certain knowledge – acquired by virtue of his fiduciary standing – that the Complainant intended to use HIGHLAND STREET FOUNDATION in the same continuous and substantially exclusive manner as had been the case with the HIGHLAND STREET and HIGHLAND STREET CONNECTION names and marks. The Respondent’s aim in registering the disputed domain names was to frustrate the Board’s decision to change Complainant’s name to “Highland Street Foundation” by preventing Complainant from registering and using domain names reflecting its new name. In other words, Respondent registered the domain names not because Respondent wanted to use the names for his own legitimate purposes, but rather because Respondent wanted to block Complainant’s use of the names. This is precisely the type of abusive registration that the Policy is designed to prevent.⁵

Although not mentioned by Respondent, the Panel recognizes that the Respondent’s use of the disputed domain name <highlandstreetfoundation.com> might raise questions regarding the potential applicability of Paragraph 4(c)(iii), under which a respondent can establish rights or legitimate interests in a disputed domain name by 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. Two main views have emerged from panel decisions as to whether a respondent legitimately can operate a genuine, bona fide criticism site utilizing a domain name that is identical or confusingly similar to a complainant’s mark.⁶ One view is that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.⁷ A second and diverging view is that, irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.⁸ Other panels have suggested that the Policy envisions a more holistic approach, which balances the interests of trademark owners against those of the public in the reasonably free use of domain names to effectively facilitate freedom of expression.⁹

However, Respondent has not even attempted to argue that his use of <highlandstreetfoundation.com> for a website is a legitimate fair use. Nor has he rebutted Complainant’s evidence that Respondent registered the domain names for the purpose of frustrating the Board’s decision to change Complainant’s name. Under these circumstances, the Panel concludes that it is not necessary to decide the precise parameters of the “fair use” doctrine to resolve this case. In the final analysis, there is consensus for the principle that a respondent cannot make a legitimate noncommercial or fair use of a domain name within the meaning of Paragraph 4(c)(iii) if such use is merely pretextual, or if bad faith registration and use of the domain name otherwise is indicated from the circumstances of the case. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (finding that there was no evidence that Respondent’s criticism site was “a mere pretext for cybersquatting”); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (rejecting fair use argument in view of undisputed evidence that Respondent was operating website for the sole purpose of selling it). For example, a respondent has no right to use the complainant’s mark or a corresponding domain name so as to trick the public into believing that the complainant endorses any of the critical views expressed on the respondent’s website. See Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175.¹⁰

Given the totality of the circumstances of this case, the Panel concludes that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names under Paragraph 4(c)(iii). The Respondent, while occupying a fiduciary position as a member of the Complainant’s Board of Trustees, intentionally registered two domain names that are identical or confusingly similar to the Complainant’s marks. The Panel has been presented with uncontroverted evidence that the Respondent’s primary motivation in registering the domain names was to frustrate the Complainant’s efforts to adopt the HIGHLAND STREET FOUNDATION name and mark, as approved by a majority of the Complainant’s Board. The Respondent, by virtue of knowledge obtained because he was a member of that Board, was able to register the disputed domain names before the Complainant began using the HIGHLAND STREET FOUNDATION mark, thus effectively blocking the Complainant from registering domain names corresponding to this mark. At the same time, the Respondent’s website prominently displays the HIGHLAND STREET CONNECTION mark – which was extensively and continuously used by the Complainant for more than 15 years – without informing internet visitors that the website is not affiliated with, endorsed or sponsored by the Complainant.

Paragraph 4(c)(iii) is intended to protect sites that practice genuine, noncommercial criticism.¹¹ But the circumstances of this case argue strongly against any finding of legitimacy, as Respondent intentionally chose the Complainant’s new name for his sites and made use of his fiduciary position intentionally to frustrate Complainant. The Panel need not determine if Respondent’s fiduciary position precludes public criticism of his cestui;¹² all that is required is a finding that his verbatim use of Complainant’s name for the purpose of frustrating the Board’s decision is not “legitimate” under the Policy, Paragraph 4(a)(ii). Given these uncontested facts, that is an easy finding for the Panel to make.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or 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 (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;

(ii) circumstances indicating that 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;

(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, internet users to its website 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 Respondent’s website or location or of a product or service on its website or location.

The overriding objective of the Policy is to prevent abusive domain name registration and use for the benefit of legitimate trademark owners, and the Panel notes that the examples of bad faith registration and use set forth in Paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

As set forth above, the Panel has determined from the circumstances surrounding the registration of the disputed domain names that the Respondent registered and is using the domain names for the bad faith purpose of frustrating the Board’s decision to adopt a new name, by preventing Complainant from using its new name for a website. The Respondent has implemented this bad faith purpose by using one of the disputed domain names, <highlandstreetfoundation.com> to direct the user to a website that is not Complainant’s website. The Respondent is using the second disputed domain name, <highlandstreetfoundation.org>, to point to an “under construction” notice. The fact that Respondent is not using the second disputed domain name for an active website does not preclude a determination of bad faith. On the contrary, Respondent’s passive use of the second disputed domain name further confirms that Respondent’s purpose is to deprive Complainant of the use of the domain names, rather than to serve any legitimate, independent interest of the Respondent.

The Panel therefore concludes that the Respondent’s registration of the disputed domain names was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith. Accordingly, the Panel finds that the Complainant has met its burden under Paragraph 4(a)(iii).

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 names <highlandstreetfoundation.com> and <highlandstreetfoundation.org> be transferred to the Complainant.

Dated: August 14, 2006

¹ “DBA” is an abbreviation for “doing business as” and is commonly used in the United States to refer to the name under which an entity operates or intends to operate its business.

² While not relevant in determining whether a complainant has established rights in a mark to which the domain name is identical or confusingly similar, this factor may be relevant for purposes of Paragraphs 4(a)(ii) and (a)(iii) of the Policy. See, e.g., Nãofumomais, Clínica de Homeopatia Antitabágica, Lda. v. Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda., WIPO Case No. D2004-0399.

³ The Complainant has not sought a determination that the disputed domain names are confusingly similar to its HIGHLAND STREET CONNECTION mark.

⁴ Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

⁵ There is uncontroverted affidavit evidence that the Respondent registered the disputed domain names because he disagreed with the decision made by the Board of Trustees to change the Complainant’s name, and sought insofar as possible through the registration and use of the disputed domain name to frustrate the Complainant’s adoption of the HIGHLAND STREET FOUNDATION name and mark. Were the sworn statements of the Complainant’s legal counsel submitted here inaccurate, it was easily within the Respondent’s grasp to formally respond to the Complaint and to controvert these statements. The Respondent elected not to do so, and under the circumstances of this case, the Panel cannot avoid drawing an adverse inference from the Respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

⁶ Refer to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.5.

⁷ This view has been more prevalent in criticism site cases outside the United States. See, e.g., The Laurel Pub Company Limited v. Peter Robertson / Turfdata, WIPO Case No. DTV2004-0007; Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776; Microfinancial, Inc. v. Glen Harrison, WIPO Case No. D2003-0396; Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa,WIPO Case No. D2003-0248.

⁸ This view seems to have found greater initial acceptance among U.S. based panelists, in recognition of the “robust free speech tradition” of the United States reflected in the First Amendment. See, e.g., Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; Action Instruments, Inc. v. Technology Associates,WIPO Case No. D2003-0024; TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536; Bridgestone Firestone, Inc. v. Myers,WIPO Case No. D2000-0190. Nevertheless, other U.S. based panelists, noting that the Policy’s ultimate concern is the potential for false and misleading association, have applied an initial interest confusion approach, concluding that a respondent cannot have a legitimate interest in using a domain name identical to the complainant’s mark, regardless of the content of the respondent’s website. See Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175; Texans For Lawsuit Reform, Inc. v. Kelly Fero, WIPO Case No. D2004-0778.

⁹ See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul, WIPO Case No. D2004-0988.

¹⁰ See, e.g., New York Times Co. v. New York Internet Services, WIPO Case No. D2000-1072 (finding substantial evidence of actual public confusion as to the complainant’s affiliation with the respondent’s website); Council of American Survey Research Organizations v. The Consumer Information Organization LLC aka Pinelands Web Services, WIPO Case No. D2002-0377 (criticism site used to market products, respondent owned over 1200 domain names, and many of respondent’s domain names incorporated famous marks); Estée Lauder, Inc. v. estelauder.com, estelauder.net, and Jeff Hanna, WIPO Case No. D2000-0869 (domains of complaint sites suggested typosquatting, there was evidence of actual confusion, and respondent reserved other domain names incorporating famous marks); Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (respondent’s noncommercial use of domain name pretextual where respondent made “overtures to be bought off” in order to transfer domain name).

¹¹ Refer to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.5.

¹² Of course, transfer of the domain names does not abridge Respondent's free speech rights in any way; it merely prevents his using Complainant's mark misleadingly to attract the public when he does so. Justice for Children, supra.