University of Maryland University College v. NUCOM Domain Name Brokers

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

University of Maryland University College

v.

Nucom Domain Brokers & Urban Music Underground Club

Case No. D2002-0081

1. The Parties

The Complainant is University of Maryland University College, a public

university constituted under Maryland law with its principal place of business

at Adelphi, MD, United States of America. The Complainant is represented

by the Assistant Attorney-General for the State of Maryland, Ms Jessica

V Carter of Baltimore, MD, United States of America.

Until January 30, 2002, the registrant of the disputed domain name

was Nucom Domain Name Brokers of Inverness, Scotland, United Kingdom (NDNB).

After that date the registrant purported to be changed to Urban Music Underground

Club of Dublin, Ireland (‘the Club’). The Panel will consider later in this

decision the question of the appropriate Respondent(s).

2. The Domain Name and Registrar

The domain name at issue is <umuc.com>. Up until January 30, 2002

the domain name was registered with: Holdings.com, Inc. (trading as DotRegistrar.com)

of Miami, FL, United States of America (‘the First Registrar’). After that

date, the domain name was registered with Gandi Sarl of Paris, France (‘the

Second Registrar’). The domain name was first registered on April 12, 1999.

3. Procedural History

The Complaint submitted by the above Complainant was received on January 25, 2002,

(electronic version) and January 28, 2002, (hard copy) by the

World Intellectual Property Organization Arbitration and Mediation Center

("WIPO Center"). The Complainant served by Federal Express

a copy of the Complaint and all annexures on NDNB in Inverness on January 29, 2002

and on the First Registrar in Miami on January 28, 2002.

On January 31, 2002, a request for Registrar verification was

transmitted by the WIPO Center to the First Registrar, requesting it to:

-Confirm that a copy of the Complaint had been sent to it by the

Complainant as requested by WIPO Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("Supplemental Rules"), Paragraph

4(b).

-Confirm that the domain name at issue is registered with the First

Registrar.

-Confirm that the person identified as the Respondent is the current

registrant of the domain name.

-Provide full contact details, i.e., postal address(es), telephone

number(s), facsimile number(s), email address(es), available in the Registrar’s

WHOIS database for the registrant of the disputed domain name, the technical

contact, the administrative contact and the building contact for the domain

name.

-Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP")

is in effect.

-Indicate that, under the Registration Agreement, the registrant

submitted to the jurisdiction of the Courts as provided in the Policy.

-Indicate the current status of the domain name.

-Indicate the language of the Registration Agreement.

By email dated February 4, 2002, the First Registrar simply advised

WIPO Center that it was not the Registrar of the domain name registration

<umuc.com>.

-It had received a copy of the Complaint from the Complainant.

-NDNB had ceased to be the "current registrant" of the

domain name as at January 30, 2002.

By reply dated February 7, 2002 in response to the WIPO Center’s

request of February 5, 2002, the Second Registrar advised that

the domain name was registered with it. The Club was the registrant. The

UDRP applied to the domain name, which was in locked status. The language

of the agreement was English and an appropriate acknowledgement of Court

jurisdiction was found in the registration agreement. Robert Maguire

of the same Dublin address as the Club was the administrative, technical

and billing contact. The Second Registrar had not received a copy of the

Complaint.

Both Registrars have currently incorporated in their agreements the UDRP

adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN")

(hereinafter simply the "Policy").

On February 8, 2002 (email) and on February 12, 2002 (hard copy)

the Complainant filed an Amended Complaint which referred to the change

in registrants and Registrars and sought to name the Club as an additional

Respondent.

The advice from the Second Registrar that the domain name in question is

in ‘locked’ status indicates the Club has not requested that the domain

name at issue be deleted from the domain name database. It has not sought

to terminate the agreement with the Second Registrar. Neither NDNB nor the

Club has challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of

the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"),

the WIPO Center on February 19, 2002, transmitted by post-courier

and by email a notification of the Complaint, Amended Complaint and Commencement

of Administrative Proceedings to NDNB and the Club. Copies of the same documents

were also emailed to the Second Registrar and to ICANN.

The recipients were advised that a Response to the Complaint was required

within 20 calendar days in accordance with the Rules, by four sets

of hard copy and by email.

A Response was received by the WIPO Center from the Club on March 8, 2002

(electronic) and March 14, 2002 (hard copy). No Response was filed

by NDNB.

The Complainant had requested a three-member Panel and has paid the sum

due to the WIPO Center.

WIPO Center invited the Honorable Sir Ian Barker QC of Auckland,

New Zealand to serve as Presiding Panelist in the case. It invited

Mr. James Bridgeman of Dublin, Ireland and Mr. M Scott Donahey of Palo

Alto, CA, United States of America to be Panelists. It transmitted

to each of them a statement of acceptance and requested a declaration of

impartiality and independence.

All Panelists duly advised acceptance and forwarded to the WIPO Center

an executed declaration of impartiality and independence. The Panel finds

that the Administrative Panel was properly constituted in accordance with

the Rules and the Supplemental Rules. The Complainant has paid the appropriate

fees to WIPO Center.

On April 15, 2002, WIPO Center forwarded to the Panel by courier the

relevant submissions and the record. In terms of Paragraph 5(b) of the Rules,

in the absence of exceptional circumstances, the Panel is required to forward

its decision by April 29, 2002.

The Panel has independently determined and agrees with the assessment of

WIPO Center that the Complaint and the Amended Complaint meet the formal

requirements of the Rules and the Supplemental Rules.

4. Factual Background

The Complainant is a public University based in the state of Maryland,

United States of America with some 38,479 students (as at 2001). It has

various locations in the United States of America, Europe and Asia. It offers

a variety of degrees in several disciplines and employs 5,000 faculty and

general staff worldwide. It specializes in the provision of distance learning

– particularly for the United States armed forces.

Complainant is commonly known by the acronym UMUC. It has US service marks

registered for this name for educational services. One was registered on

March 6, 2001, the other on June 22, 1999.

In the summer of 2001, the web page for <umuc.com> featured a ‘for

sale’ announcement which prompted an inquiry from the Complainant. On June 20, 2001

a Mr. Andrew Foster on behalf of NDNB offered to sell the name for $89,500

or lease it for $1,790 per month. On August 2, 2001 Complainant’s

attorney sent a ‘cease and desist’ letter to NDNB to which there was no

reply. As at December 5, 2001 the web site still announced that

the disputed domain name was for sale. A search by the Complainant in August 2001

on the Whois database showed the Respondent’s address as Jersey, Channel

Islands.

The Club claims to be known as UMUC throughout the wider music community

in Ireland. It has 153 active members in Dublin.

5. Parties’ Contentions

Complainant

The disputed domain name is identical to the Complainant’s marks.

NDNB is in the business of brokering or selling domain names for profit

and does not use the disputed domain name for the legitimate offering of

goods and services or for any legitimate non-commercial or fair use without

intent for commercial gain.

It acquired the name primarily for the purposes of selling or leasing it

for valuable consideration and therefore, by reasons of its offer to Complainant,

is acting in bad faith, which can also be inferred from its lack of response

to the ‘cease and desist’ letter.

The name was transferred by NDNB in violation of Para 8 of the Policy.

There are no marks registered in the US or the European Community for UMUC

other than the Complainant’s.

Respondent

The Club, in the document filed on its behalf by its secretary, Robert

Maguire, contacted NDNB in May 1999 about purchasing the name. After

initial discussions which were inconclusive, the Club settled on a purchase

price with NDNB in November 2001. The transaction was completed on

January 23, 2002. On January 30, 2002, the registration

of the name was transferred to the Second Registrar, the Club’s preferred

Registrar.

On February 5, 2002, Ms. Carter, on behalf of the Complainant,

offered to purchase the name for $1,000.

The Club had no knowledge of the Complaint with WIPO until February 8, 2002.

The Club has never used the name in bad faith, but for the benefit of its

members. All will have an opportunity to have a permanent web page and email

address when the site is developed. The site will publicize the Club’s activities.

6. Determination as to who is the Proper Respondent

Before considering the merits of the Complaint, the Panel must determine

who is the proper Respondent.

Under the Policy, a registrant may not transfer a Domain Name registration

to another holder or another Registrar during a pending proceeding under the

Policy or for 15 business days after its conclusion. The Complaint is initiated

by the trademark owner sending a properly constituted Complaint to any provider

provided by ICANN – Rule 3(a). A copy must already have been sent to the Respondent

by the Complainant – Rule 3(b)(xii). The date of commencement of the proceeding

is the date on which the provider completes its responsibilities in connection

with forwarding a copy of the Complaint to the Respondent (after checking all

the formalities, which can take several days) – Rule 4(c). Quick-witted Respondents

may seek to escape the jurisdiction of the Panel by transferring the Domain

Name to a new holder or to a new registrar after receipt of the copy of the

Complaint, but before the formal commencement of the proceeding. Neither a change

of registrant nor even of registrar affects the proceedings. (See British

Broadcasting Corporation v. Data Art Corporation/Stoneybrook, WIPO

Case No. D2000-0683; Kabushiki Kaisha Isetan v. Stars Web International

and Isetan Inc., WIPO Case

No. D2001-0732). It is the view of this Panel that an order for transfer

of the Domain Name may be made against both NDNB and the Club to the Complainant,

if the requisite elements of the Policy have been proved on a preponderance

of the evidence. (See also AT & T Corp v. WNZ (and aliases)

WIPO Case No. D2001-1160). The above paragraph is a modified quotation from

the decision in that case.

The Panel considers that by filing a Response, the Club must be taken to

have consented to being joined as a Respondent, even although the correct

Respondent is NDNB.

However, in view of the disregard of the Policy by NDNB and the First Registrar

– both of whom had notice that the Complaint had been filed – the Panel’s

inquiry must focus, not on the Club, but on NDNB. Even if what the Club

says is correct and it was a beneficial but unregistered owner, at the date

the Complaint was filed, NDNB was the registrant as at that date and must

therefore be the focus of the Panel’s consideration.

The register maintained by an ICANN registrar must provide accurate information

as to the identity of domain registrants. The human person or other legal

entity shown as the registrant must be assumed to be such by third parties

seeking to ascertain a registrant’s identity by such means as a Whois search.

There is no place for the registration of bare trustees or agents for unnamed

beneficiaries, principals or would-be purchasers. In that respect, a domain

name register is like the register for land and shipping under the Torrens

system found in many common law jurisdictions. In other words, the register

is everything: no unregistered interests can prevail against the interests

of bona fide third parties relying on information available on the register

for all the world to see.

7. 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 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;

-That the Respondent has no legitimate rights or interests in respect

of the domain name; and

-The domain name has been registered and is being used in bad faith.

In the view of the Panel, the disputed domain name is identical to the

registered service marks in which the Complainants has rights. That fact

is sufficient to enable the Complainant to satisfy the first criterion under

Paragraph 4(a) of the Policy.

The Complainant gave the NDNB no rights or legitimate interests in the

disputed domain name. NDNB has no trademark or service mark registrations.

That finding can sometimes be sufficient for the Complainant to discharge

the initial evidential burden in the second criterion. Paragraph 4(c) of

the Policy indicates that a Respondent can demonstrate rights or legitimate

interests in the domain name. Thus:

(i)before any notice to you of the dispute, your 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 and services; or

(ii)you (as an individual, business or other organization) have been

commonly known by the domain name, even if you have acquired no trademark

or service mark rights; or

(iii)you are making a legitimate non-commercial or fair use of the

domain name, without intent for commercial gain to misleadingly direct

customers or to tarnish the trademark or service mark at issue.

However there is no evidence from NDNB to warrant an enquiry by the Panel

on whether NDNB comes within any of the limbs of Paragraph 4(c) of the Policy.

The second criterion is proved.

However, the Panel is unable to infer that NDNB registered the name in

bad faith. The Complainant enjoys, obviously, a large reputation in its

home state and no doubt its mark ‘UMUC’ is well-known there. However, its

mark as an educational institution cannot be said to be such as might command

world-wide recognition such as the mark ‘MIT’ or ‘LSE’. The Complainant

offered no evidence as to the extent of its outreach in the United Kingdom.

It provided media articles about its distance education programmes – particularly

for US forces. Nothing in this material could create an inference that the

mark was known in Scotland at the date of registration.

The Panel cannot infer that a registrant in Scotland would know of the fame

of the Complainant’s mark at the date of registration. There are no trade or

service registrations of the mark in the United Kingdom or the European Union.

The case is no different from the many WIPO cases where a trademark owner in

Country A is unable to produce evidence from which a Panel can infer that a

domain name registrant in Country B would or should have known of the fame of

the mark. (See KCTS Television Inc v. Get-on-the-Web Ltd, WIPO

Case No.D2001-0154 and VZ Vermögens Zentrum AG v. Anything.com,

WIPO Case No.D2000-0527).

The bare assertion that NDNB is a dealer in domain names, without more,

is insufficient to discharge the burden of proving bad faith registration.

The mark is a combination of four letters which does not suggest anything

or anywhere in particular. Dealers frequently deal in names consisting of

such combinations of letters. Consequently, the Panel finds the third criterion

not proved and the Complaint must be dismissed.

8. Decision

The Panel decides that:

The Complaint be dismissed.

Hon. Sir Ian Barker QC

Presiding Panelist

Mr. M Scott Donahey

Panelist

Mr. James Bridgeman

Panelist

Dated: April 29, 2002