National Arbitration Forum

 

DECISION

 

Auburn University v. Anthony Oravet d/b/a EvenPar Solutions

Claim Number: FA0808001219601

 

PARTIES

Complainant is Auburn University (“Complainant”), represented by Timothy A. Bush, of Sirote & Permutt, P.C., Alabama, USA.  Respondent is Anthony Oravet d/b/a EvenPar Solutions (“Respondent”), represented by Scott W. Gosnell, of Tudisco & Gosnell, LLC, Alabama, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <allauburnallorange.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide, and <allauburnallorange.net> and <allauburnallorange.org>, registered with and GoDaddy.com, Inc.

 

PANEL

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

 

Nathalie Dreyfus as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 8, 2008.

 

On August 8, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <allauburnallorange.net> and <allauburnallorange.org> domain names are registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 August 10, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <allauburnallorange.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 August 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 2, 2008 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@allauburnallorange.com, postmaster@allauburnallorange.net and postmaster@allauburnallorange.org by e-mail.

 

A timely Response was received and determined to be complete on August 28, 2008.

 

On September 2, 2008, an Additional Submission was received from Complainant.  This Additional Submission was timely and complete in accordance with Supplemental Rule 7. 

 

On September 5, 2008, an Additional Submission was received from Respondent.  This Additional Submission was timely and complete in accordance with Supplemental Rule 7.

 

On September 17, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

<<A. Complainant makes the following assertions

1. The domain names <allauburnallorange.com>, <allauburnallorange.net> and <allauburnallorange.org> are confusingly similar with Complainant’s common law trademark ALL AUBURN ALL ORANGE

2. Respondent has no right or legitimate interest in the domain names <allauburnallorange.com>, <allauburnallorange.net> and <allauburnallorange.org>

3. Respondent registered and used the domain names <allauburnallorange.com>, <allauburnallorange.net> and <allauburnallorange.org> in bad faith

 

B. Respondent submitted a Response to the Complaint and asserts that

1. The domain names <allauburnallorange.com>, <allauburnallorange.net> and <allauburnallorange.org> are not identical or confusingly similar to a trademark or service mark in which Complainant has rights

2. Respondent has rights and legitimate interests in respect of the domain names <allauburnallorange.com>, <allauburnallorange.net> and <allauburnallorange.org>

3. Respondent did not register or use the domain names <allauburnallorange.com>, <allauburnallorange.net> and <allauburnallorange.org> in bad faith

4. Before the institution of this dispute, Respondent demonstrably evidenced an intent to use the domain name <allauburnallorange.com>

 

C. Additional Submissions

Complainant in its Additional Submission alleges as follows:

1.      Likelihood of confusion exists between Complainant’s mark and Respondent’s domain names

2.      Respondent has not demonstrated any legitimate interest in the domain names. Respondent’s familiarity with Complainant is evidence of his lack of such an interest

3.      Respondent has not advanced any evidence that he has used or is or has prepared to use the disputed domain names in connection with a bona fide offering of goods and services, nor has Respondent been commonly known by the disputed domain names.

4.      The circumstances of the current case indicate that the domain names were registered for the purpose of resale to Complainant for profit.

5.      The interactions of Respondent with Complainant clearly imply an offer to sell the domain names

 

Respondent in its Additional Submission alleges as follows:

1. The domain names are not identical or confusingly similar to a trademark or service mark in which Complainant has rights

2. Respondent has rights and legitimate interest in respect of the domain names

3. Respondent did not register or use the domains in bad faith

 

FINDINGS

Complainant Auburn University is an educational institution which is using ALL AUBURN ALL ORANGE in connection with the promotion of certain of its sports events and the sale of certain of its goods since Fall Semester 2004.

 

Respondent is a 2004 graduate of Complainant, a member of Auburn Alumni Association, as well as a current employee of Auburn University.

 

The domain name <allauburnallorange.com> was registered on October 3, 2006 and the domain names <allauburnallorange.net> and <allauburnallorange.org> were created on 5 June 2008.

 

DISCUSSION

           

            Preliminary Issue: Multiple Respondents

 

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends that the WHOIS information for each of the disputed domain names lists the same name, “Anthony Oravet,” and email address, “tonyoravet@evenparsolutions.com.”  For each of the disputed domain names, the addresses and phone numbers for the registrant, technical, and administrative contact are identical.  However, the WHOIS information for the <allauburnallorange.net> and <allauburnallorange.org> domain names additionally list the business name “EvenPar Solutions.”  Respondent asserts himself to be Anthony Oravet and has not disputed that it is the current owners of all three of the <allauburnallorange.com>, <allauburnallorange.net> and <allauburnallorange.org> domain names. 

 

Accordingly, the Panel finds that the listed aliases “Anthony Oravet” and “EvenPar Solutions” are the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complainant is justified, proper and pursuant to Supplemental Rule ¶ 4(f)(ii).  See Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to be the same respondent when the administrative contact information of the various subject domain names was the same or quite similar); see also Yahoo! Inc. & GeoCities v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against multiple aliases where "the addresses used and the Contacts designated [were] inter-linking and identical.").  But see Boehringer Ingelheim Pharma GmbH & Co. KG v. Domains by Proxy, Inc., D2006-0465 (WIPO June 14, 2006) (partial dismiss of complaint against the additional respondent, where the second respondent was not found to be the same person or entity as the first respondent, because the WHOIS contact details were different).

                                          

The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.

 

            Primary Issue

 

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:

 

(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant did not need to register its ALL AUBURN ALL ORANGE mark with a governmental authority in order to establish rights in the mark pursuant to Policy ¶ 4(a)(i).  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

 

Complainant asserts that it has established common law rights in the ALL AUBURN ALL ORANGE mark in connection with Auburn University athletic event services and goods.  Complainant contends that continuously since fall of 2004 it has made extensive use of the mark in its print and electronic marketing materials and merchandise sold for a variety of sporting and athletic events associated with Auburn University.  Complainant provides evidence of press releases, media advertisements and merchandise containing the mark.  In particular, Complainant purports that it can demonstrate that it has sold almost a half a million U.S. dollars on ALL AUBURN ALL ORANGE branded merchandise. 

 

The Panel considers that this evidence appears sufficient to establish that there is secondary meaning in the ALL AUBURN ALL ORANGE mark associated with Complainant and that this association, along with Complainant’s continuous use of mark, is sufficient for demonstrating Complainant’s common law rights in its mark for the purposes of Policy ¶ 4(a)(i).   See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning); see also Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).

 

The <allauburnallorange.com>, <allauburnallorange.net> and <allauburnallorange.org> domain names each contain the ALL AUBURN ALL ORANGE mark in its entirety omitting the spaces within the mark and adding the generic top-level domains (“gTLDs”) “.com,” “.net” or “.org.”  The inclusion of a gTLD and omission of a space are generally found to be irrelevant to a Policy ¶ 4(a)(i) analysis. 

 

Accordingly, the Panel finds that the disputed domain names are each identical to the ALL AUBURN ALL ORANGE mark pursuant to Policy ¶ 4(a)(i).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant contends that there is nothing in the record that indicates that Respondent is or ever was commonly known by the disputed domain names.  Moreover, Respondent presents no opposition to Complainant’s assertions that Respondent is not commonly known by the disputed domain names. 

 

Therefore the Panel finds that Respondent is not commonly known by either the <allauburnallorange.com>, <allauburnallorange.net> or <allauburnallorange.org> domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).

 

Complainant also argues that no use is being made of the disputed domain names and likewise highlights that they are identical to Complainant’s mark.  Complainant states that the disputed domain names do not resolve to any website.

 

Accordingly, the Panel finds that this does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. & Hewlett-Packard Dev. Co., L.P. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [inactive use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [inactive use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”).

 

Respondent argues that although it has made no active use of the disputed domain names yet, this does not demonstrate a lack of rights or legitimate interests in the disputed domain names, because Respondent plans to develop a fan site with them.  However, Complainant argues in its Additional Submission that this is not sufficient.  Complainant concedes that use as a fan site may create a legitimate interest in a disputed domain name, but that in this case, since no fan site yet exists, but rather only the interest in developing a future fan site, and it has been over two years since Respondent first registered one of the disputed domain names, this is insufficient to demonstrate rights or legitimate interests in a disputed domain name. 

 

The Panel considers that Respondent’s arguments relating to its intended use of the disputed domain names as a fan site are insufficient to establish he has a legitimate right or interest in the domain names.  See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Fielding v. Corbert, D2000-1000 (WIPO Sept. 25, 2000) (finding the respondent’s ‘demonstrable preparations to use’ a disputed domain name as a fan website to be insufficient to establish rights and legitimate interests under Policy ¶ 4(a)(ii) since the respondent had waited over two years to begin to enact such plans, and beyond bold assertions, did not supply the panel with any concrete evidence of the plans). 

 

And finally, Complainant states that it offered to purchase the disputed domain names for Respondent’s out-of-pocket costs, but that Respondent found such an offer to be insufficient and indicated that it expected more. 

 

The Panel finds that Respondent’s willingness to dispose of the disputed domain names at greater than out-of-pocket costs demonstrates a lack of Respondent’s rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).

 

Registration and Use in Bad Faith

 

Complainant states that Respondent declined Complainant’s offer to purchase the domain name for an amount equal to the documented out-of-pock expenses associated with Respondent’s registrations of the disputed domain names.  Complainant argues that Respondent’s following correspondence demonstrates that Respondent’s motive in registering the disputed domain names was to sell them for financial compensation to Complainant in considerable excess of Respondent’s out-of-pocket expenses.  In Complainant’s Additional Submission, Complainant asserts that the circumstance can be used to infer Respondent’s intent to sell the disputed domain names.  In the Additional Submission, Complainant cites “Respondent’s preoccupation with ‘value’ evidences [Respondent’s] true motives.” 

 

The circumstances of the case demonstrate Respondent’s intent to sell the disputed domain names, which accordingly establish Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website”); see also Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”).

 

Complainant also contends that Respondent has engaged in a pattern of registering disputed domain names for the purpose of preventing Complainant from reflecting its mark in a corresponding domain name.  Complainant states that Respondent was informed initially of its infringing <allauburnallorange.com> domain name through a cease-and-desist letter sent by Complainant’s representative dated June 3, 2008.  Shortly thereafter, Complainant contends that Respondent proceeded to register the <allauburnallorange.net> or <allauburnallorange.org> domain names.  Previous panels have found that one incident of registering multiple infringing domain names may be sufficient to constitute bad faith under Policy ¶ 4(b)(ii).  See, e.g., Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). 

 

As a consequence, the Panel finds that this is additional evidence of Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(ii).  See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).

 

Complainant also argues that Respondent has full knowledge or at least should have been aware of Complainant’s rights in the ALL AUBURN ALL ORANGE mark prior to its registration of the disputed domain names.  Complainant argues in its Additional Submission that even though it had not registered the mark with the USPTO nor indicated prior to Respondent’s initial registration of the <allauburnallorange.com> domain name on its official University website or its official literature that the ALL AUBURN ALL ORANGE phrase was to become an official mark for sporting events, Respondent could have called “Complainant’s Office of Trademark Management and Licensing” and they would have “cleared up Respondent’s confusion.” 

 

Complainant does proceed to point out though that the disputed domain names are identical to Complainant’s mark and that in the case of the <allauburnallorange.net> or <allauburnallorange.org> domain names, Respondent was necessarily aware of Complainant’s mark, as it had already engaged in correspondence with Complainant in regards to the <allauburnallorange.com> domain name. 

 

The Panel finds that if Respondent had either actual or constructive notice in Complainant’s rights to the ALL AUBURN ALL ORANGE mark, that this is further evidence of Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

And finally, Respondent has made no use of the disputed domain names.  The Panel therefore considers this to also be evidence that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <allauburnallorange.com>, <allauburnallorange.net> and <allauburnallorange.org> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Nathalie Dreyfus, Panelist
Dated: October 1, 2008

 

 

 

 

 

 

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