National Arbitration Forum

 

DECISION

 

Brandeis University v. MediaInsights.com, Inc.

Claim Number: FA0709001080127

 

PARTIES

Complainant is Brandeis University (“Complainant”), 415 South Street, Waltham, MA 02454.  Respondent is MediaInsights.com, Inc. (“Respondent”), 1648 Taylor Road #412, Port Orange, FL 32128.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brandeis.org>, registered with Dotregistrar, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Hon. Sir Ian Barker as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 18, 2007.

 

On September 18, 2007, Dotregistrar, LLC confirmed by e-mail to the National Arbitration Forum that the <brandeis.org> domain name is registered with Dotregistrar, LLC and that the Respondent is the current registrant of the name.  Dotregistrar, LLC has verified that Respondent is bound by the Dotregistrar, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 22, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@brandeis.org by e-mail.

 

A timely Response was received and determined to be complete on October 22, 2007.  Neither party filed a Supplementary Submission.

 

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

The Complainant is a university situated in Waltham, Massachusetts.  It owns a registered trademark for the words “BRANDEIS UNIVERSITY” which was registered in the United States Patent & Trademark Office on March 23, 1999. 

 

The name of the University is often informally shortened to simply “BRANDEIS.”  The .org top-level domain suffix is commonly associated with non-profit organizations, of which the Complainant is one.  The disputed domain name is confusingly similar to the Complainant’s registered trademark.

 

The Respondent has no rights to or legitimate interests in the disputed domain name.  It does not offer any goods or services involving the name “BRANDEIS,” nor is it known by that name.  The Complainant gave the Respondent no rights in respect of the disputed domain name.

 

The disputed domain name is currently “parked” and offers advertising content.  It bears a disclaimer that the domain owner maintains no relationship with third-party advertisers.  The advertisements are for commercial gain and include links for college education online, career education, distance learning and adult learning, all of which are services currently offered by the Complainant.  Accordingly, the disputed domain name is currently being used in bad faith.

 

 

B.     Respondent

 

The term “Brandeis” is used within the University, which was named after a deceased distinguished Supreme Court Justice, Louis Brandeis.  Another university in Louisville has named its Law School after Justice Brandeis and that School’s Law Review publication is called “The Brandeis Law Journal,” in his honour, as is a prize awarded by that Law School.  The Respondent cites a number of school buildings named after Justice Brandeis, as well as a number of websites incorporating the word “Brandeis.”

 

The Respondent cites the case of Bastyr Univ. v. GNZ Dauphin Revant, D2002-0574 (WIPO Oct. 4, 2002).  The domain name there was <bastyr.com>.  The Complainant, Bastyr University, offered degrees in natural, complementary and alternative medicine but did not own a registered trademark.  The complaint failed.

 

The Respondent has set up a temporary website for domains pending development of the website, which is a common practice, discussed in cited decisions under the Policy. 

 

The Respondent has no ability to control navigation links on the website; the educational links on the website were only some of many.  The Respondent decided to shut down the website when the Complainant commenced these proceedings. 

 

Before the Complainant commenced proceedings, the Complainant had known of the Respondent’s registration of the domain name and the content of the website for over a year but did not contact it. 

 

The Respondent has a record of registering and developing geographical area domain names.  Some of these are developed under the .org suffix.  The disputed domain name was registered in good faith.  Its geographical significance in California stemmed from the appearance of a community within a community database.  The Respondent gave references to the websites for the city of Brandeis, California. 

 

The Respondent had no knowledge of the Complainant’s university at the time of registration of the disputed domain name and planned to develop the disputed domain name for the city of Brandeis in the same way in which it had developed sites for other towns.  It referred to the decision in Wharton Sch. of the Univ. of Penn. v. Motherboards.com, FA 161274 (Nat. Arb. Forum July 24, 2003).

 

 

FINDINGS

 

Surprisingly, for a complaint filed on behalf of an institution such as a university, the Complaint is extremely short on facts and references to UDRP precedent.  It seems to have been prepared without the benefit of legal advice.

 

The Complainant owns a registered trademark for the words BRANDEIS UNIVERSITY.  There is no evidence provided of the extent of the outreach of that university and nothing other than the bald statement in the Complaint that the name of BRANDEIS UNIVERSITY is commonly shortened to BRANDEIS.

 

There is a school in another university bearing the name “Brandeis” as well as a number of other institutions, all of which were named after the same distinguished judge.  Brandeis is also the name of a city in California. 

 

The website of the disputed domain name is parked to a click-through service from which, presumably, the Respondent receives remuneration.  The click-through sites include links to educational services of the sort provided by the Complainant.

 

The disputed domain name was registered on May 11, 2006.

 

 

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this 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.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be 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;

(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.

 

 

Identical and/or Confusingly Similar

 

The word Brandeis is derived from a surname, that of a famous jurist.  The surname has been used to describe a law school in another university and some other less well-known educational establishments.  It is also the name of a city in California which, according to its website, has a population of 51,716.  Accordingly, as a surname, it must acquire distinctiveness in order to serve as a trademark.  See 2 McCarthy on Trademarks, 13.2. 

 

The Complainant has a registered trademark for BRANDEIS UNIVERSITY.  It contends, without anything other than a bare assertion, that it is commonly referred to as BRANDEIS.  The Panel is prepared to accept that well-known universities are commonly referred to by their shortened names in academic writings and by those with or seeking to attain tertiary qualifications.  The names “Harvard,” “Yale,” “Oxford” and “Cambridge” spring immediately to mind in this context.

 

In the Bastyr case (supra), the complainant did not have a registered trademark but produced articles to the Panel wherein it was referred to simply as ‘Bastyr’ rather than “Bastyr University.”  The Panel was able to infer a common law mark in the name “Bastyr” sufficient to show distinctiveness but insufficient to show that the mark was strong and well-recognised by a substantial section of the public.

 

Here, the Complainant has not provided similar evidence of the use of the name Brandeis to refer to Brandeis University.  However, the fact of its registered trademark, plus the Panel’s ability to take judicial notice of the common practice of shortening the name of academic institutions is just enough to warrant a finding that the disputed domain name is confusingly similar to the Complainant’s registered mark.

 

The Complainant succeeds under Para. 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

 

The Respondent, in essence, claims that it has legitimate rights and interests in the disputed domain name since it has a business of developing websites using the names of towns – in this case, Brandeis, California.  It says the “click-through” parking site is only a temporary arrangement whilst the website is being developed.

 

The Respondent refers to Wharton Sch. of the Univ. of Penn. v. Motherboards.com, FA 161274 (Nat. Arb. Forum July 24, 2003), which has some similarities with the present case.  There, the complainant was a school within a university known as “The Wharton School.”  The disputed domain name was <wharton.com>.  The complainant held an enforceable service mark for the words “Wharton the Wharton.”  The respondent filed affidavits from a website designer and others to show that it developed websites to provide services for various cities, including a city in Texas called Wharton.  The panel there held that the respondent had discharged the onus of showing legitimate rights and interests. 

 

In the present case, no evidence was offered by the Respondent, comparable to that provided by the respondent in the Wharton case.  There is only a statement – unsubstantiated by affidavits – that the Respondent has an historical record of registering and developing geographical area domain names.  Some three examples were mentioned of developed websites and two of undeveloped websites – all using the .org suffix.

 

The Panel does not consider that, given the paucity of evidence to back up its claim, the Respondent has satisfied the requirements of Paragraph 4(c)(i) of the Policy, namely showing that:

 

“Before any notice to Respondent of the dispute, it has used or made 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.”

 

Unlike the situation in the Wharton case, there is just insufficient evidence of “demonstrable preparations” to use the disputed domain name.  The Complainant gave the Respondent no rights in the disputed domain name.  Accordingly, the Complainant must succeed on the second criterion under Para. 4(a) of the Policy.

 

Registration and Use in Bad Faith

 

The Complainant must prove both bad faith registration and bad faith use of the disputed domain name.

 

The Complainant’s case on bad faith use is only an allegation against the “click-through” educational services offered on the parked website.  These services correspond with those offered by the Complainant.

 

The Complainant makes no reference to bad faith registration at all – despite the onus on it to prove this allegation separately.

 

The criticisms made by the Panelist in the Wharton case of the insufficiency of the material provided by the complainant in that case apply equally to the present case.

 

The Panel is unable to infer bad faith registration.  There is no evidence from the Complainant that:

 

“its mark was so well-known that registration (without use) of a domain name cannot help but lead to the conclusion that the Respondent registered with mala fides”

 

Alberto-Culver Co. v Pritpal Singh Channa, D2002-0757 (WIPO Oct. 7, 2002). 

 

Put another way, there is no evidence from the Complainant that the surname over which it holds rights is immediately and exclusively identified by the public with its trademark.  See Car Toys Inc v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000).

 

The facts that the Complainant’s mark is a surname, that at least one other university has a law school of the same name and the existence of a city of the same name, all militate against an inference of bad faith registration.  The Respondent’s unsworn statement that it did not know of the Complainant at the time of registration must be added to the matrix of facts.

 

The Panel, therefore, is in the same position as the panelist in the Wharton case who found the Complainant lacking in proof of bad faith.  That Panel quoted, with approval, the Panel in Loris Azzaro BV, SARL v. Asterix & Vasconcella, D2000-0608 (WIPO Sept. 29, 2000), as follows:

 

Therefore, in consideration of, and weighing up the facts above stated, the Administrative Panel finds that there is insufficient evidence to clearly establish that Respondents have registered and are using the Domain Name in bad faith.  Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence.

 

It is unnecessary to consider bad faith use in any detail, since bad faith registration has not been proved.

 

 

DECISION

 

Having considered all three elements under Paragraph 4(a) of the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

 

 

Hon. Sir Ian Barker, Panelist
Dated: November 9, 2007