Claim Number: FA0709001080127
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brandeis.org>, registered with Dotregistrar, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum
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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant is a university situated in
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.
The term “Brandeis” is used within the University, which was named
after a deceased distinguished Supreme Court Justice, Louis Brandeis. Another university in
The Respondent cites the case of
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
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
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
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
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
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.
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
The Complainant has a registered trademark
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
Here, the Complainant has not provided similar
evidence of the use of the name Brandeis to refer to
The Complainant succeeds under
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,
The Respondent refers to Wharton Sch. of the
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
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
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.
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
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