Arizona Board of Regents v. Value Holdings, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arizona Board of Regents for and on behalf of Arizona State

University v. Value Holdings, Inc.

Case No. D2001-0445

1. The Parties

Complainant is Arizona Board of Regents, for and on behalf of Arizona State

University ("ASU"). Complainant’s address is: PO Box 87203, Tempe,

Arizona 85287-2003, USA. Respondent is Value Holdings, Inc. Respondent’s address

is: 6220 E. Thomson Road, Scottsdale, Arizona 85251-7039, USA.

2. The Domain Name and Registrar

This dispute concerns the following domain name: <asunudes.com> ("Domain

Name"). The registrar with which the domain name is registered is: Melbourne

IT, LTD. D/B/A Internet Names Worldwide ("Melbourne").

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received the Complaint

by email and in hard copy on March 27, and April 2, 2001, respectively. The

Center verified that the Complaint satisfies the formal requirements of the

ICANN 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). Complainant made the required payment to the Center. The formal date

of the commencement of this administrative proceeding is April 5, 2001.

Issuance of Complaint

The Complaint indicates that WHOIS records for the Domain Names list Respondent

Value Holdings, Inc. at the following address: PO Box 5181, Scottsdale, Arizona

85261, USA. Complainant sent a copy of the Complaint by email to Respondent.

Jack Erickson is the Administrative and Billing contact for the Domain Name.

Confirmation of Registration Details

On April 3, 2001, the Center transmitted, via email to Melbourne, a request

for registrar verification in connection with this case. On April 4, 2001, Melbourne

transmitted by email to the Center, their verification response confirming the

domain name <asunudes.com> is registered through Melbourne IT, LTD and

that Value Holdings Inc. is the Registrant with Jack Erickson as the Administrative

Contact.

Notification of Complaint

On April 5, 2001, the Center transmitted to the Respondent, Notification of

Complaint and Commencement of the Administrative Proceeding. The Center advised

that the response was due by April 24, 2001.

On April 26, 2001, the Center emailed to the parties Notification of Respondent

Default.

Constitution of Administrative Panel

On May 14, 2001, the Center notified the parties via email that the Administrative

Panel would consist of Mr. David Everett Wagoner as the Sole Panelist.

Compliance with the formalities of the Policy and the Rules

Upon review of the file, the Panel concludes that the Center has fully complied

with the formalities of the Policy and Rules, that Respondent was given adequate

notice of this proceeding, and that Respondent has been accorded due process.

4. Factual Background

Section 5 (e) of the Rules provides "If a Respondent does not submit a

response, in the absence of exceptional circumstances, the Panel shall decide

the dispute based upon the complaint." Here there are no exceptional circumstances

and, therefore, the Panel decides the dispute based upon the Complaint and the

Exhibits attached thereto and finds the following facts as established.

*12. Arizona State University (the Complainant) is a state university whose

main campus is located in Tempe, Arizona, U.S.A. Founded in 1885, ASU is the

largest university within the state of Arizona and ranks among the largest of

institutions of higher learning within the United States. Total enrollment for

the fall 2000 semester amounted to 50,365 students from across the United States

and the world.

*13. The University’s main campus supports 95 programs leading to a bachelor’s

degree, 75 programs leading to a master’s degree, and 41 programs leading to

a doctoral degree. The University is also an internationally recognized research

institution and center for the promotion of cultural and performing arts. For

example, during fiscal year 1998-99, the University received $104.4 million

in grant awards from federal, state, and local government, and private sources.

*14. Complainant is the owner of U.S. Trademark Registrations for ASU (U.S.

Registration Nos. 1,433,973; 1,445,086; 1,449,742; and 1,462,309); SUN DEVIL

(Registration Nos. 1,493,595); SUN DEVILS (U.S. Registration Nos. 1,552,926;

1,445,084; and 1,438,108); ARIZONA STATE (U.S. Registration Nos. 1,439,228;

1,445,085; 1,448,545; and 1,499,948); and ARIZONA STATE UNIVERSITY (U.S. Registration

Nos. 1,449,597; 1,448,546; 1,450,896; and 1,499,947). See Annex D.

*15. Complainant is also the owner of numerous other U.S. Trademark Registrations,

including ASU and Design marks (for example, U.S. Registration Nos. 1,445,083

and 2,231,419), SUN DEVIL and Design (including U.S. Registration Nos. 1,446,309,

1,555,794 and 1,499,790) and other marks.

*16. Since at least 1958, Complainant has used the "ASU," "ARIZONA

STATE" and "ARIZONA STATE UNIVERSITY" marks to identify a variety

of educational and entertainment services, including offering undergraduate,

graduate, and post-graduate instruction; presenting cultural, scientific and

entertainment events; and sponsoring a variety of intramural, intercollegiate

and exhibition athletic and sporting events. Complainant has used its "SUN

DEVIL(S)" marks in connection with the same activities since at least 1947.

See Annex D.

*17. Since at least 1958, Complainant also has used all of these marks in connection

with a successful Trademark Licensing Program, under which manufacturers are

officially licensed to use marks and logos on select merchandise, including

gifts and collectibles, apparel, and sports gear. See Annex D.

*18. Complainant advertises its educational and athletic services throughout

the United States and the world; Complainant spends a sizable amount of time,

effort, and money to promote its services through its trademarks. For example,

on average, Complainant’s licensing programs annually generate close to half

a million U.S. dollars in revenue. For the year 2000, Complainant’s licensing

program spent approximately $100,000 U.S. to protect and promote its marks.

See Annex E.

*19. Due to its continuous and extensive use of the "ASU," "ARIZONA

STATE," and "SUN DEVIL/SUN DEVILS" marks since long prior to

the Respondent’s registration of the <asunudes.com> domain name, and its

registration of these marks as trademarks in the United States, Complainant

has built up strong trademark rights in these names and marks used in connection

with a wide variety of educational and entertainment services.

*20. Due to the Complainant’s extensive use of the marks and substantial promotional

activities over the last five decades, "ASU" and "ARIZONA STATE"

have acquired secondary meaning in connection with educational and entertainment

services and collegiate athletic programs.

*21. "SUNDEVIL(S)" is not the generic term for an institution of

higher education or associated entertainment or collegiate athletic programs.

Accordingly, "SUN DEVIL(S)" is inherently distinctive when used in

this context.

*22. Complainant’s extensive, nationwide use of its marks for the last 42 years

has created wide-spread recognition of the names "ASU," "ARIZONA

STATE," and "SUN DEVIL(S)." Accordingly, these have acquired

significant goodwill; moreover, the marks are famous and are entitled to a wide

scope of protection under United States trademark law.

*23. According to the Tucows Open SRS WHOIS database, accessed on February

22, 2001, Respondent, Value Holdings, Inc., registered the <asunudes.com>

domain name on September 25, 2000. See Annex A.

*24. Complainant accessed the site to which the <asunudes.com> domain

name is connected, and found that the site contains nude photographs of men

and women (purportedly Arizona State University students) and hard core pornography.

A hard copy printout of the website obtained on March 5, 2001, is attached as

Annex C.

*25. Although Respondent did modify the <asunudes.com> site by adding

a disclaimer that the site is not affiliated with Arizona State University after

receiving a cease and desist demand from the Complainant, the site continues

to contain images and wording that deliberately associate the site with the

University. The colors maroon and gold – the University’s official school colors

– are predominant and used throughout the site. The home page features a photograph

of Arizona State University’s Sun Devil Stadium and the description "Our

Sexy Devils." Featured models are (or at least claim to be) students of

the University. Banner advertisements soliciting models for the site feature

photographs of "A Mountain," a nearby natural landmark that has been

painted with the letter "A" in reference to ASU. See Annex

C.

*26. The <asunudes.com> domain name at issue is confusingly similar to

Complainant’s "ASU" name and mark. The domain name incorporates the

entire "ASU" name, and adds only the generic terms "nudes"

and "com."

*29. Any attempts on the part of the Respondent to define "ASU" as

"All State Undergraduate Nudes" are unconvincing in light of Respondent’s

efforts to associate the site with the University. There can be no doubt that

"ASU" in <asunudes.com> refers to Arizona State University.

*30. Respondent Value Holdings cannot demonstrate any legitimate interest in

the <asunudes.com> domain name. Value Holdings is not commonly known as

"ASU" or "ARIZONA STATE UNIVERSITY." Value Holdings is not

affiliated in any way with the Complainant; nor has it provided services to

Complainant in connection with the above-identified names and marks. Finally,

Value Holdings is not making a legitimate, non-commercial use of the <asunudes.com>

domain name; its sole use of the name is in connection with its pay-for-access

pornographic website.

*31. ASU contacted Value Holdings regarding this dispute in a letter dated

December 18, 2000, and addressed to the company’s administrative contact and

CEO, Mr. Jack Erickson. (A copy of that letter is attached as Annex H.)

*32. Mr. Erickson responded to ASU’s December 18 letter via an E-mail communication

dated December 27, 2000. A copy of this E-mail is attached as Annex I. In this

response, Mr. Erickson refused to cease operation of the website. Instead, he

agreed only to remove the name "ASU" from the metatags associated

with the <asunudes.com> site, and indicated that he would place a notice

disclaiming association with the University on the site. However, the <asunudes.com>

site remains in operation, and, as discussed above, continues to associate itself

with the University.

*33. According to the Register.com WHOIS database, accessed in December of

2000, Jack Roberts was at one time listed as the registrar of <uncgirls.com>.

See Annex J. According to an article dated August 22, 2000, Jack Erickson

is also known as "Jack Roberts." See Annex K.

*34. Until March of 2001, the site associated with the <uncgirls.com>

domain name contained nude pictures and hard core pornography, as well as references

to the University of North Carolina Chapel Hill. The February, 2000 printout

of the site is attached as Annex L.

*35. As of the time of filing this Complaint, the <uncgirls.com> website

is inactive. Moreover, Mr. Erickson/Roberts is no longer listed as the registrar

or the administrative contact for the domain name <uncgirls.com>. According

to the Tucows Open SRS database, accessed on February 23, 2001, the current

registrant for <uncgirls.com> is "Eric Draven." See Annex

M. The Complainant notes that this may be an alias, as "Eric Draven"

was the name of the principal character in the movie "The Crow." See

Annex N.

*36. According to the Network Solutions, Inc. WHOIS database accessed on March

2, 2001, Mr. Erickson is also the registrant for <showmethehooters.com>,

which is connected to another pornographic website. See Annex O. This

registration may implicate third-party trademark rights, as "Hooters"

is a federally registered trademark belonging to Hooter’s, Inc., a Florida corporation.

See Annex P.

*37. Value Holding’s registration and subsequent use of the <asunudes.com>

domain name constitutes bad faith.

*39. By linking ASU’s marks to its pornographic website, Value Holdings is

tarnishing ASU’s famous marks. Moreover, Respondent’s website creates a negative

association with the Complainant, and damages Complainant’s public reputation

as an institution of higher learning and sponsor of athletic and cultural events.

*41. Respondent’s likely use of aliases in connection with the registration

of <uncgirls.com> is additional evidence of bad faith.

*The numbers are Paragraphs of the Complaint.

5. Parties’ Contentions

A. Complaint

The Complaint alleges that the Domain Name is nearly identical and confusingly

similar to the ASU Marks, that Respondent registered the Domain Name in bad

faith for the purpose of capitalizing on the famous ASU Marks and profiting

from the international and domestic goodwill ASU has built up in its famous

trademarks and that Respondent has no rights or legitimate interests in respect

of the Domain Name.

B. The Response

Respondent filed no response.

6. Discussion and Findings

Paragraph 4.a of the Policy directs that Complainant must prove, with respect

to the domain name in issue, each of the following:

(1) The domain name in issue is identical or confusingly similar to the Complainant’s

trademarks or service marks; and,

(2) Respondent has no rights or legitimate interests in respect of the domain

name; and,

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

Paragraph 4.b of the Policy sets out four illustrative circumstances, any one

of which for purposes of Paragraph 4(a)(iii), shall be evidence of the registration

and use of a domain name in bad faith.

Paragraph 4.c of the Policy sets out three illustrative circumstances any one

of which, if proved, shall demonstrate Respondent’s rights or legitimate interests

to the domain name for purposes of Paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar Domain Name

Complainant has proved that Respondent’s Domain Name is confusingly similar

to trademarks in which Complainant has rights.

The <asunudes.com> domain name at issue is confusingly similar to Complainant’s

"ASU" name and mark. The domain name incorporates the entire "ASU"

name, and adds only the generic terms "nudes" and "com."

A number of prior UDRP panel decisions have recognized the confusing similarity

between a trademark and a domain name where the domain name has merely added

generic terms to the mark. See, e.g., Ebay Inc. v. Ebay4sex.com and Tony

Caranci, Case No. D2000-1632 (WIPO

January 18, 2001) (finding that "ebay4sex.com" was confusingly similar

to complainant’s "ebay" mark); General Electric Co. v. Basalt Management,

Case No. D2000-0925 (WIPO October 25,

2000) (finding that registrant’s "generalelectricsex.com" was confusingly

similar to complainant’s "General Electric" mark); America Online

v. Belmont Studios, Ltd., Case No. D2000-0979

(WIPO October 4, 2000) ("icqpornjokes.com," "icqsexchat.com,"

and "freeicqsex.com" all confusingly similar to complainant’s "icq"

mark); Caterpillar, Inc. v. Roam the Planet, Ltd., Case

No. D2000-0275 (WIPO March 25, 2000) ("catmachines.com" confusingly

similar to complainant’s "CAT" and "CATERPILLAR" trademarks).

Respondent cannot argue that there is no confusion because consumers are not

likely to believe that an institution of higher learning like Arizona State

University would be associated with Respondent’s pornographic website. As one

WIPO administrative panel has noted:

Arguably, nobody is likely to believe that companies of the standing of the

Complainant, Coca-Cola, Chevrolet, et cetera are in any way associated with

websites, which incorporate their principal trade marks in conjunction with

the word "sex." Accordingly, it may be that "confusion"

of that kind is only a remote risk. However, in the circumstances of this case

where, notwithstanding the Respondent’s denial, it is plain that the Respondent

selected the Domain Name with the Complainant very much in mind, what the Respondent

has done would in most jurisdictions constitute a tort. . . . [A court] would

certainly regard the Domain Name as being sufficiently similar to the trademark

in which the Complainant has rights.

General Electric, Case

No. D2000-0925. (See Annex G.)

B. Respondent’s Rights or Legitimate Interests in the Domain Name

The Panel finds that Respondent has no rights or legitimate interests in the

Domain Name, which the Panel finds was inspired by and copied from Complainant's

name and trademarks.

Respondent Value Holdings cannot demonstrate any legitimate interest in the

<asunudes.com> domain name. Value Holdings is not commonly known as "ASU"

or "ARIZONA STATE UNIVERSITY." Value Holdings is not affiliated in

any way with the Complainant; nor has it provided services to Complainant in

connection with the above-identified names and marks. Finally, Value Holdings

is not making a legitimate, non-commercial use of the <asunudes.com> domain

name; its sole use of the name is in connection with its pay-for-access pornographic

website.

C. Domain Name Registered and Used in Bad Faith

The Panel finds that the Domain Name has been registered and is being used

in bad faith.

Value Holding’s registration and subsequent use of the <asunudes.com>

domain name constitutes bad faith. Bad faith in this matter is demonstrated

by the following:

a. The registration of the <asunudes.com> domain name years after Complainant’s

first use of the ASU, ARIZONA STATE, and SUN DEVIL(S) marks

b. The respondent’s failure to cease use of the domain name.

c. ASU’s extensive and long-term use of its marks, the resulting fame of those

marks, and the fact that the respondent’s website uses words, images, and color

to associate its pornographic content with ASU.

d. The respondent’s ownership of the registration for <showmethehooters.com>

as well as his prior (and perhaps present) registration of <uncgirls.com>,

and the latter site’s association of the University of North Carolina with its

pornographic materials.

By linking ASU’s marks to its pornographic website, Value Holdings is tarnishing

ASU’s famous marks. See Mattel Inc. v. Internet Dimensions, Inc., No.

99 Civ 10066, 2000 WL 973745, at *4-5 (S.D.N.Y July 13, 2000); Ford Motor

Co. v. Lapertosa, 126 F.Supp 2d 463, 466 (E.D. Mich. 2000). Moreover, Respondent’s

website creates a negative association with the Complainant, and damages Complainant’s

public reputation as an institution of higher learning and sponsor of athletic

and cultural events. See, e.g., Mattel, 2000 WL 973745, at *8 (defendant’s

pornographic website "BARBIE’S PLAY PEN" tarnished plaintiff’s BARBIE

trademark, as well as plaintiffs "wholesome public image."). (See

Annex F.)

Respondent’s likely use of aliases in connection with the registration of <uncgirls.com>

is additional evidence of bad faith. See Home Director, Inc. v. HomeDirector,

Case No. D2000-0111 (WIPO April 11, 2000).

(See Annex G.)

7. Decision

In light of the foregoing, the Panel decides that:

(1) The Domain Name registered by Respondent and at issue here is confusingly

similar to Complainant’s trademarks,

(2) Respondent has no rights or legitimate interests in respect of the Domain

Name at issue, and

(3) The Domain Name at issue has been registered and is being used in bad faith

by Respondent.

Accordingly, the Panel decides that the Registration of the Domain Name set

forth in paragraph 2 of this Decision shall be transferred to Complainant.

David Everett Wagoner

Sole Panelist

Dated: May 31, 2001