University of Central Arkansas v. John Barry

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

University of Central Arkansas v. John Simms and John Barry

Case No. D2002-0316

1. The Parties

The Complainant is the University of Central Arkansas ("UCA"), a public institution of higher education organized and existing under the laws of the State of Arkansas, having its principle place of business in Faulkner County, Conway, Arkansas, United States of America.

The Respondents are John Simms and John Barry, both individuals with addresses in Bronx, New York, United States of America.

2. The Domain Name and Registrar

The domain name at issue is: <universityofcentralarkansas.com>, registered with eNom, Inc., Redmond, Washington, United States of America ("eNom").

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the Center") on April 3, 2002, in electronic form. The Center received the hard copy of the Complaint on April 8, 2002. The Center acknowledged receipt of the Complaint on April 9, 2002.

On April 10, 2002, a Request for Registrar Verification was transmitted to eNom. eNom responded on April 10, 2002, confirming the registration details and its receipt of a copy of the Complaint from Complainant by certified mail.

A Formal Requirements Compliance Checklist was initiated by the Center and completed April 18, 2002. The the Center determined that that the Complainant was in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 ("the Supplemental Rules"). The Panelist has independently reviewed the Requirements and finds that the Complainant is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules.

The Complainant paid the required fees for a single-member Panel on time and in the required amount.

No formal deficiencies having been noted, on April 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding ("the Commencement Notification") was transmitted to the Respondents (with copies to the Complainant, eNom and ICANN), setting a deadline of May 8, 2002, by which the Respondents could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondents by email to the email addresses indicated in the Complaint and specified in Whois confirmations received from eNom and by post/courier to the indicated postal addresses. Having reviewed the communications records in the case file, the Panelist finds that the Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."

On May 15, 2002, having received no formal Response from the designated Respondent, the Center transmitted to the parties a Notification of Respondent Default.

On May 21, 2002, the Center invited Richard Allan Horning to serve as the Sole

Panelist in Case No. D2002-0316 and transmitted

to him a Statement of Acceptance and Request for Declaration of Impartiality

and Independence. Richard Allan Horning’s Statement of Acceptance

and Declaration of Impartiality and Independence was received on May 21, 2002.

On May 22, 2002, the Center transmitted to the parties a Notification

of Appointment of Administrative Panel and projected decision date, in which

Richard Allan Horning was formally appointed as the Sole Panelist. The projected

decision date was June 5, 2002.

The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and the Supplemental Rules.

4. Factual Background

The University of Central Arkansas was founded in 1907, as Arkansas State Normal School. Its name was changed in 1925, to Arkansas State Teacher's College, again in 1967, to State College of Arkansas, and finally to the University of Central Arkansas in 1975. Complainant registered marks incorporating the University of Central Arkansas name with the United States Patent and Trademark Office as follows:

Serial No.

Registration No.

Mark

Date of Registration

75,849,177

2,524,091

UCA

1/1/2002

75,867,644

2,473,035

UCA Alumni Association

7/31/2001

75,849,176

2,395,847

UCA

10/17/2000

75,849,175

2,461,159

University of Central Arkansas

6/19/2001

Respondent John Simms registered the domain name <universityofcentralarkansas.com>

on February 24, 2002 (Complaint, Annex A). The domain name was

allegedly transferred to the Respondent John Barry, on March 25, 2002

(Complaint, Annex B). Mr. Barry lists his email address as <Dom4Sale@aol.com>.

On March 26, 2002, Complainant wrote to Respondent Simms in an email bearing

that date. In that email Complainant asked that Respondent Simms cease and

desist all use, and relinquish the registration, contending that his use

of the mark caused confusion as to sponsorship and association with Complainant

and constituted trademark infringement and unfair competition. An identical

email was sent on March 26, 2002, to Respondent Barry. Both emails

requested that Respondents explain how use of the domain name at issue did

not result in confusion, what legitimate business interest or right the

Registrant possessed in the domain name at issue, why the domain name was

registered, and why Registrant's use of the domain name was not in bad faith.

On March 26, 2002, Respondent Barry, responding from <dom4sale@aol.com>,

offered to sell the domain for $1000.

"UDRP's cost $1500 to file (not including your attorney's fees) and can

take up to 6 months to resolve. Additionally you are not guaranteed to

win a UDRP. You can never predict the outcome of a UDRP. Let me know,

John"

At the time of the Commencement Notification, and at submission of the

dispute to the Panelist, the domain name <universityofcentralarkansas.com>

resolved to the website entitled "Abortionismurder.org". The domain name

<abortionismurder.org> is registered to an address in Fort Lauderdale,

Florida, United States of America. According to an email communication transmitted

to the Center from "Admin" at <abortionismurder.org>, the registrant

of that domain name disclaimed ownership of the domain name at issue, and

advised the Center that it would not participate in any actions to stop

the registrant of the domain name at issue from pointing that domain name

to the <abortionismurder.org> website.

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent has registered domain names which

are nearly identical to and confusingly similar to the service marks and

trademarks registered and used by Complainant, that Respondent has no rights

or legitimate interests in respect of the domain names at issue, and that

Respondent has registered and is using the domain names at issue in bad

faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist as to the principles

the Panelist is to use in determining the dispute: "A Panel shall 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." Since both the Complainant and Respondent are domiciled

in the United States, and since United States’ courts have experience with

similar disputes, to the extent that it would assist the Panelist in determining

whether the Complainant have met their burden as established by Paragraph

4(a) of the Policy, the Panelist shall look to rules and principles of law

set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each

of the following:

1) 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,

2) that the Respondent has no legitimate interests in respect of the

domain name; and,

3) that the domain name has been registered and used in bad faith.

The Panelist finds that domain name at issue is either identical or confusingly

similar to the registered trademarks of Complainant. Hewlett-Packard Company

v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc.

v. Avrasya Yayincilik Danismanlik Ltd., NAF Case FA0002000093679; Marriott

International, Inc. v. John Marriot, NAF Case No. FA0002000094737; Identigene,

Inc. v. Genetest Laboratories, WIPO Case

No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing &

Logistics Corp., NAF Case No. FA0003000094219; AT&T Corp. v. CME

Inc., WIPO Case No. D2001-1060; Microsoft

Corporation v. Global Net 2000, Inc., WIPO

Case No. D2000-0554; America Online, Inc. v. East Coast Exotics,

WIPO Case No. D2001-0661; EFG Bank

European Financial Group SA v. Jacob Foundation, WIPO

Case No. D2000-0036; The Chancellor, Masters and Scholars of the

University of Oxford v. DR Seagle t/a Mr. Oxford University, WIPO

Case No. D2001-0746; The Chancellor, Masters and Scholars of the University

of Oxford v. CQ, WIPO Case No. D2001-0920.

Courts have recognized that consumers expect to find a company on the Internet

at a domain name address comprised of the company's name or mark. In Panavision

Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) the

Ninth Circuit stated that "A customer who is unsure about a company's domain

name will often guess that the domain name is also the company's name….[A]

domain name mirroring a corporate name may be a valuable corporate asset,

as it facilitates communication with a customer base." That expectation

would be frustrated were Respondents permitted to take advantage of their

cybersquatting.

Complainant has alleged and Respondents have failed to deny that they have

no legitimate interest in respect of the domain name at issue. Alcoholics

Anonymous World Services, Inc. v. Raymond, WIPO

Case No. D2000-0007; Ronson Plc v.

Unimetal Sanayai ve Tic. A.S., WIPO

Case No. D2000-0011. Respondents are not commonly known by the domain name

at issue, and have not acquired trademark or service mark rights in the domain

name. Respondents failed to respond to Complainant's pre-filing request for

an explanation of their legitimate interest in the mark, from which failure

the Panelist draws the inference that they do not claim to have a legitimate

interest. The Panelist finds that Respondents have no rights or legitimate interest

in the domain name.

The question thus arises whether the domain name at issue has been registered

and is being used in bad faith. Paragraph 4.b of the Policy sets forth "in

particular but without limitation" circumstances which "shall

be evidence of registration and use of a domain name in bad faith."

Those circumstances are:

(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 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 your

website or location or of a product or service on your website or location.

The Panelist's attention is drawn to Respondent Barry's email of March 26, 2002,

in which he offered to sell the domain name to Complainant for $1000. It could

be argued that this is an inadmissible offer of compromise, given Respondent

Barry's explanation of the practical facts of UDRP proceedings (Barry's offer

of $1000 is clearly less than the WIPO filing fee alone). However the Panelist

finds that the email is admissible, and under the circumstances, evidence of

bad faith registration. See, Magnus Piering v. The Mudjackers, WIPO

Case No. D2000-1525.

Respondent Barry's email address, <dom4sale@aol.com> suggests that

the purpose of Respondent Barry's business is to profit from the registration

and sale of domain names. Respondent apparently operates this business without

regard to the legitimate rights of owners of pre-existing trademarks. Barry's

total investment was the nominal registration fee, as he has not expended

a cent in developing a website or making any legitimate use of the domain

name. The Panelist finds that Respondent Barry is trafficking in domain

names.

The fact that Complainant notified Respondents that Respondents' registration

was confusingly similar to Complainant's mark, that Respondents failed to respond

to the referenced notice and cease and desist demand , and that Respondents

failed to respond to this Complaint, also suggests that Respondents were aware

that they had no rights or legitimate interests in the domain name at issue,

and that the domain name has been registered and is being used in bad faith.

See, Mondich and American Wine Biscuits, Inc. v. Brown d/b/a Big Daddy's

Antiques, WIPO Case No. D2000-0004;

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003; Alcoholic Anonymous World Services, Inc. v. Raymond,

WIPO Case No. D2000-0007; America Online,

Inc. v. Viper, WIPO Case No. D2000-1198;

America Online, Inc. v. Diaz, WIPO

Case No. D2000-1460.

The Panelist also finds that, in the circumstances of this dispute, pointing

the domain name at issue to the <abortionismurder.org> website is

evidence of bad faith. Complainant is legitimately entitled to make decisions

of its own as to websites to be linked to a domain name confusingly similar,

and in this identical to, its trade name and registered trademark. This

form of tarnishment need not be tolerated by the Complainant even if Respondents,

and the owner of the <abortionismurder.org> website, have a free speech

right to have their views on the subject of abortion expressed on the web.

It is evidence of bad faith to attribute those views, without consent, to

a trademark owner such as Complainant.

7. Decision

For all of the foregoing reasons, the Panelist decides that the domain

name registered by Respondents is identical or confusingly similar to the

trademarks and service marks in which the Complainant has rights, that Respondents

have no rights or legitimate interests in respect of the domain name, and

that the Respondents' domain name has been registered and is being used

in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires

that the registration of the following domain name <universityofcentralarkansas.com>

be transferred to the Complainant:

Richard Allan Horning

Sole Panelist

Dated: May 31, 2002