The Board of Regents of the University of Nebraska v. Karolek

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Board of Regents of the University of Nebraska v. Karolek

Case No. D2003-0307

1. The Parties

The Complainant is The Board of Regents of the University of Nebraska, of Lincoln,

Nebraska, United States of America, represented by Senniger, Powers, Leavitt

& Roedel of United States of America.

The Respondent is Karolek, n/a, Poland.

2. The Domain Name and Registrar

The disputed domain name <huskerfevercard.com> is registered with Intercosmos

Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on April 22, 2003. On April 23, 2003, the Center transmitted

by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar

verification in connection with the domain name at issue. On April 24, 2003,

Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center

its verification response confirming that the Respondent is listed as the registrant

and providing the incomplete contact information as indicated above for the

administrative, billing, and technical contact. The Center verified that 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 April 29, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

May 19, 2003. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on May 21, 2003.

The Center appointed Howard P. Knopf as the sole Panel in this matter on June 4, 2003.

The Panel finds that it was properly constituted. 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.

A date for decision was set for June 18, 2003.

4. Factual Background

The Panel accepts the following as non-contested facts based upon the record

as filed, and in the absence of any submission by the Respondent.

The Complainant, a university in Nebraska, U.S.A. owns several trademarks that

are registered in the United States Patent and Trademark Office ("USPTO")

incorporating the word HUSKER. The most relevant is HUSKER FEVER, registration

number 2, 546, 473 registered March 12, 2002. The USPTO registration

indicates that the mark is registered for printed material, namely posters,

brochures containing information about a fan loyalty program, cards used to

participate in a fan loyalty program, decals and stickers and for services,

namely promoting fan loyalty to the athletic teams of the University of Nebraska

by offering discounts and special offers on the goods and services of sponsors,

free merchandise, and purchase points from the use of fan membership cards.

The Complainant established a website named "www.huskerfevercard.com"

at an unstated time, but has supplied a copy of a version obtained from "www.archive.org"

of portions of the website as it existed on June 19, 2000. This material

confirms the efforts of the Complainant to market a "loyalty program"

with cards using the website.

For reasons which are not explained in the Complaint, the Complainant discontinued

its "www.huskerfevercard.com" website on April 1, 2002,

when it discontinued its HUSKER FEVER CARD program.

The Respondent registered the domain name in dispute, namely <hukserfevercard.com>

on October 3, 2002, just over 6 months after the Complainant’s domain

name registration for the exact same domain name had lapsed.

The domain name is said by the Complainant to now be used to divert or transfer

visitors to "www.exquisiteasians.com," a pornographic website. However,

at the time of preparation of this decision (June 17, 2003), the Panel

found that the disputed domain name merely returns an error message when access

is attempted.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it has a trademark registration for HUSKER FEVER

and that it has common law trademark rights for HUSKER FEVER CARD.

The Complainant alleges that that the Respondent’s domain name is confusingly

similar to its registered trademark and essentially identical to its unregistered

trademark HUSKER FEVER CARD, the addition of ".COM" as the gTLD

being irrelevant.

The Complainant alleges the Respondent’s use of a lapsed domain name to divert

traffic to a pornographic website constitutes bad faith, and that the failure

of the Respondent to provide full contact information or to respond to e-mail

efforts at contact also constitute bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s allegations and is in default.

6. Discussion and Findings

The Complainant must prove the classic trilogy of elements. According to paragraph 4(a)

of the Uniform Domain Name Dispute Resolution Policy (the "Policy"),

the Complainant must prove that:

(i) The domain name 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 in respect of the

domain name; and

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

In a default situation, the Panel may draw such inferences as it deems appropriate

(paragraph 14(b) of the Rules for Uniform Domain Name Dispute Resolution

Policy (the "Rules"). While the Complaint will not necessarily be

accepted at face value in a default situation, in this instance the Complaint

is carefully prepared, well reasoned and adequately documented in terms of evidence.

Turning to each of these elements, the Panel finds as follows.

A. Identical or Confusingly Similar

There can be no doubt that the Respondent’s domain name is confusingly similar

to the Complainant’s registered trademark for HUSKER FEVER and is essentially

identical to the Complainant’s common law trademark.[1]

The frank admission by the Complainant that it let the domain name registration

lapse and that it has discontinued its HUSKER FEVER CARD program gives some

pause for concern by the Panel as to whether the key relevant trademark may

have been "abandoned" under American law.

However, there can be no presumption of abandonment pursuant to the three year

rule set forth under the Lanham Act § 15 U.S.C.A § 1127 since the Complainant’s

evidence is that the mark was in use up until April 1, 2002.

While litigation (to which this proceeding is analogous) "does not substitute

for the required use of the mark in the marketplace"[2],

there is no evidence on record of "intent not to resume."[3]

In the absence of any submissions from the Respondent, the Panel is not about

to venture any further as to whether the key relevant trademark has been abandoned.

However, just as the trademark system does not encourage warehousing of unused

trademarks[4], the UDRP system should not

serve to encourage indefinite time to reclaim lapsed – especially deliberately

lapsed – registrations. However, this is not the case in which this point need

or should be pursued.

The Panel is satisfied that the Respondent is using a domain name that is identical

or confusingly similar to a registered and unregistered trademark in which the

Complainant has valid and subsisting rights.

B. Rights or Legitimate Interests

The Respondent has put in no evidence or submissions. The Panel must accept

the Complainant’s unanswered allegation that the only use of the disputed domain

name at the time the Complaint was filed was to divert to a pornographic site.

At the time of decision, repeated attempts to visit the website resulted only

in error messages. The Panel can only infer that the Respondent has deactivated

the diversion operation at this time and must accept that it was in place at

the time of the Complaint.

Since the Respondent’s name appears to be KAROLEK, which bears no resemblance

to the disputed domain name, it is not apparent in the absence of any evidence

how the Respondent could possibly claim any rights or legitimate interests in

the disputed domain name based upon his or her own name.

C. Registered and Used in Bad Faith

As to bad faith, there are numerous previous decisions holding that the use

of a domain merely for referral or affiliation purposes, especially to pornographic

websites, can constitute bad faith[5]. There

is a well known practice by which the referral website owner can benefit financially

from such links, even if the said owner does not actually operate the pornographic

websites to which he provides the link. This is the uncontradicted allegation

in this instance. The use of a lapsed domain name to divert traffic to pornographic

websites has been held to constitute bad faith[6].

It is unnecessary to consider the further allegations of bad faith.

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 name <huskerfevercard.com>

be transferred to the Complainant.

Howard P. Knopf

Sole Panelist

Dated: June 18, 2003

1. Unregistered or common law trademarks

may also form the basis of a Complaint. See MatchNet plc. v. Mac Trading, WIPO

Case No. D2000-0205

2. McCarthy on Trademarks, § 17:11

3. McCarthy on Trademarks, § 17:11

4. McCarthy on Trademarks, § 17:20

5. See Geocities v. Geociities.com, WIPO

Case No. D2000-0326 and Ty, Inc. v. O.Z. Names, WIPO

Case No. D2000-0370.

6. Pedro Latorre Beroiz v. Domain Strategy,

Inc., D2002-0508 (registering a lapsed

domain name and directing it to a pornographic website "raises an overwhelming

presumption" that the registration and use of the domain name is in bad faith).

More cases by this complainant

• The Board of Regents of the University of Nebraska — D2001-0387 · Terminated
• The Board of Regents of The University of Nebraska v. Bill Saedlo — D2000-0154 · universityofnebraska.com · Transfer · 20 Apr 2000