Wake Forest University v. Jerry Needham
Claim Number: FA0209000125751
Complainant is Wake Forest University, Winston-Salem, NC (“Complainant”) represented by John Berryhill. Respondent is Jerry D. Needham, Kernersville, NC (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wfubmc.com>, <wfubmc.net>, <wfubmc.org> and <wfuhs.com>, registered with Register.com.
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.
Alan L. Limbury as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 23, 2002; the Forum received a hard copy of the Complaint on September 23, 2002.
On September 23, 2002, Register.com confirmed by e-mail to the Forum that the domain names <wfubmc.com>, <wfubmc.net>, <wfubmc.org> and <wfuhs.com> are registered with Register.com and that Respondent is the current registrant of the names. Register.com has verified that Respondent is bound by the Register.com 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, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 22, 2002 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, email@example.com, firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on October 21, 2002.
On November 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant is an educational institution located in North Carolina. It owns federal U.S. Trademark Registrations for the marks WAKE FOREST UNIVERSITY and WAKE FOREST UNIVERSITY BAPTIST MEDICAL CENTER. Complainant has long been known by the acronym WFU and sells authorized merchandise adorned with the WFU mark.
The disputed domain names all incorporate Complainant’s WFU mark and correspond to specific marks utilized by Complainant in connection with the Wake Forest University Health Sciences (WFUHS) and the Wake Forest University Baptist Medical Center (WFUBMC). They are thus identical or confusingly similar to marks in which Complainant has rights.
Respondent is not a licensee or affiliate of Complainant and is not authorized to utilize any of its marks.
Respondent obtained a North Carolina State Trademark Registration for WFUBMC under the pretense of using it as an acronym for a “Web Forum for Unaffiliated Business Management Consultants”. This may be disregarded as a mere fig leaf, when one considers the collection of domain names which Respondent has accumulated. An applicant for a valid trademark in North Carolina must certify that the mark does not conflict with the rights of other parties. Respondent, located in nearby Kernersville, North Carolina, was aware of the operation of the Wake Forest University Baptist Medical Center and its use of the WFUBMC mark prior to his application for his state trademark registration. It is not credible that Respondent would have coincidentally happened upon such a distinctive sequence of six letters without knowledge of Complainant’s use of WFUBMC to identify its services. It is even more incredible that Respondent would also coincidentally happen to register another domain name consisting of WFUHS for legitimate purposes. And, it is even more incredible yet that Respondent would have registered not only the disputed domain names but also a large collection of terms and acronyms associated with other ventures in which Complainant is a participant, as well as terms associated with other North Carolina educational institutions and entities, without a conscious intent to use these terms for illegitimate purposes.
Respondent has not been using the domain names for any bona fide offering of goods or services. Respondent initially operated a web page at <wfubmc.com> stating that his fictitious web forum was “under development” and soliciting offers to buy the domain name registration through <afternic.com> - a domain name auction site. The disputed domain names are listed "for sale" under Respondent's username "jneedham" at <afternic.com>. Shortly thereafter, at Complainant’s request, Respondent re-directed web traffic to Complainant’s site at <wfubmc.edu>. More recently, after being notified of this dispute, Respondent has returned to the pretense of operating a web forum, and has included a “disclaimer” of association with Complainant. This does not establish any legitimate interest. Respondent claims to have operated an email list utilizing one or more of the domain names, but has provided no evidence of such an email list. Again, any such token and admittedly discontinued use was undertaken for the sole purpose of constructing an artificial claim of a purported legitimate interest.
In correspondence Respondent acknowledged receipt of email intended for recipients at Wake Forest’s WFUMBC having <wfubmc.edu> email addresses, stating: “It seems you lose a great deal of productivity in these misdirected emails, not to mention security/privacy breaches. I would be open to a proposal to acquire these domain names in the best interest of the institution.” Respondent later offered to forward misdirected email to Complainant at a rate of $20 per email address or for a flat fee of $5,000 per year for each domain and stated that he was open to offers to buy the domain name registrations.
Respondent has recently registered <wfu.us>; <deacons.us> after the Wake Forest University “Demon Deacons” sports team mascot and the Wake Forest University “Deacon” Athletic Club; <targacept.us> after U.S. Trademark Registration No. 2,469,655 for TARGACEPT in which Complainant has a financial interest; and <ptrp.com/net/org> after the Piedmont Triangle Research Park, a community research center in which Complainant is involved. Because of the separate USDRP governing “.us” domain names, a further Complaint under that policy will be required for Complainant to recover the infringing <wfu.us> domain name that Respondent has also registered, thus compounding the cost to Complainant and further demonstrating the bad faith of Respondent.
Complainant is not alone in having been targeted by Respondent’s pattern of bad faith domain name registrations. All of Respondent’s domain names are offered for sale under the user name “jneedham” at the domain auction site <afternic.com>. Respondent appears to have a penchant for registering domain names clearly associated with academic and other institutions prominent in North Carolina. Among the domain names offered for sale by Respondent are such names as <tarheel.us> and <tarheels.us> after the University of North Carolina basketball team; <uncg.us> for the University of North Carolina Greensboro campus; <gborocollege.us> for Greensboro College; <naacp.us> for the National Association for the Advancement of Colored People; and <rjr.us> and <rjrt.us> for the R.J. Reynolds Tobacco Company.
It is simply not possible for Respondent, a neighbor of Complainant, to have coincidentally registered domain names incorporating WFUBMC and WFUHS, which just happen to be marks and acronyms used by entities controlled by Complainant, without a conscious predatory intent of the type the Policy is intended to redress.
The disputed domain names have been registered and used in bad faith. The present circumstances constitute perhaps one of the only disputes under the Policy where Respondent has managed to satisfy all four of the exemplary and alternative bad faith behaviors under Paragraph 4(b) of the Policy. Respondent has at all times offered the domain name registrations for sale and has further offered to rent email addresses under such domains for $5,000 per year, thus satisfying Policy ¶ 4(b)(i). Respondent has engaged in a pattern of blocking Complainant and others from registering their trademarks as domain names in multiple top-level domains, under ¶ 4(b)(ii). Respondent has threatened to disrupt Complainant’s business by suggesting that a security or privacy breach could occur unless Complainant agrees to buy the domain names from Respondent, under ¶ 4(b)(iii). Respondent’s actions and correspondence demonstrate that Respondent has registered and used the domain names with a manifest intent to profit on the basis of consumer confusion, under ¶ 4(b)(iv).
There is insufficient evidence to support Complainant’s assertions. Complainant had insufficient interests in the marks in dispute; Respondent is entitled to continued use of the marks (domains) in dispute, and there is no evidence of bad faith registration and use.
Complainant has ignored prima facie evidence of legitimate use by Respondent. Many of Complainant’s assertions are merely circumstantial. Any actual confusion is due to Complainant’s actions. Complainant meets the criteria for attempted Reverse Domain Name Hijacking.
Complainant holds no State of North Carolina or Federal trademarks or service marks for WFU, WFUBMC or WFUHS.
Within the .com/net/org gTLD’s, there are 1,491 domains which “incorporate” the Complainant’s claimed mark WFU, 99 of which begin with the string WFU. At least 8 of these are random 5 and 6 letter strings (non-words), some of which sites are in German and Chinese. It is unreasonable to assert that all of these domains have Wake Forest University as their source. Multiple registrations for similar marks have been shown to limit the scope of the Complainant’s rights. See, e.g., D2000-1151 WIPO, “Goldline”.
Respondent admits that WFUBMC has fair renown in the local area at present, but in the spring of 2000 when the registrations of the domains in dispute were made, very few outside the employees of the Medical Center itself or its close partners could connect the acronym WFUBMC to the Medical Center, much less recite the name it stands for. This stands even today. Even local people who have affiliations with Complainant are unaware of the meaning of the acronym WFUBMC.
These strings of letters are generic, are not words and can have a near infinite number of meanings outside of association with Wake Forest University (WIPO D200-0081), they are not distinctive nor solely associated with the University and if they are becoming more so now, it was certainly not the case in 2000. Unless one has a business relationship with Complainant, the likelihood of recognition of their acronym “mark” is low.
Complainant has provided no evidence that the marks are famous or widely known or recognized outside of this geographical area and the health services industry. Respondent asserts that Complainant’s common law rights in WFUBMC are not superior to any other trade/service mark holder or Respondent’s right to use the mark in a non-related class.
Respondent performed due diligence, searching for gTLD’s and trade/service marks at the State and Federal levels for both WFUBMC and WFUHS before registering the domains in dispute.
Respondent has rights by virtue of Service Mark No. T-16119 State of North Carolina, dated 05/15/2000, for the acronym WFUBMC and by virtue of actual use. Requirements to prove actual use included physical specimens & proof by publication, which should be accorded a very strong presumption ( Nat. Arb. Forum FA 98415).
The relevant domains and their registration dates are as follows: <wfubmc.edu> 01/06/1998, <wfubmc.com> 04/07/00, <wfubmc.net> 06/17/00, <wfubmc.org> 06/17/00. These dates indicate that Respondent applied for service mark in a timely fashion, and upon receiving the same, took steps to further protect his mark by registering the other available gTLD’s. In addition, Respondent, lending further credibility to his efforts to protect his mark currently in use by acquiring ALL of the desirable gTLD’s that use the mark, registered <wfubmc.us>.
Respondent wanted a “nonsense” (unrelated to any company) domain name to operate an anonymous web discussion forum that provides users an alias (not linked to their personal id’s or employers’ domains) for frank and open discussion of sometimes-sensitive issues. Being in the arena of business consulting, and being unaffiliated with the Big 5/4, the name Web Forum for Unaffiliated Business Management Consultants was adopted.
The additional domains were registered both to protect the mark and also to provide email aliases which could differentiate users as working in the non-profit, ISP, or commercial arenas. This makes administration easier as some postings are only relevant to users of a particular interest. The forum was born and continues operation to this day, with many security practitioners participating and appreciating the anonymity of their queries and posts. It has served as a soundboard for many activities, some of which concern research for doctoral candidates’ dissertations (anonymous surveys and the like). This predates, though operates similarly to “Yahoo Groups”. It was originally run on a free listserv (automated software), but when the free service was discontinued (and due to security considerations), the service was brought in-house and handled manually. Lack of appearance on a website or search engine does not imply non-existence. As a small company, resources were not available to advertise what is essentially a free service. In fact, it was impossible to advertise the forum at the domains <wfubmc.com/net/org> from 2000 through May 2002, as ALL web traffic was forwarded to Complainant at their request. By the same token, no commercial gain by confusion can be construed by this activity. Moreover, any actual confusion that took place was precipitated by Complainant.
In summary, Respondent claims prima facie and actual interest in the domains. They are used in a bona fide offering of services and may be used for development of actual sites in the future. Complainant fails to carry the burden that Respondent has no rights or legitimate interests in the domain names at issue. Furthermore, Complainant seeks to expand the Policy beyond prohibited behavior predicated on trademarks to making subjective judgments about which uses of domain names are worthy and which uses are not.
With respect to <wfuhs.com>, bad faith registration and use has not been established at all, as no use whatsoever has been established. Nat. Arb. Forum FA 95564 (Beaumont) finds that no established use cannot be found to be “bad faith” use. Moreover, no evidence has been presented that Respondent should have been aware of Complainant’s intended use of this acronym. As previously stated, there are no registered marks for that string, nor are there any other existing domain registrations utilizing the mark, including <wfuhs.edu>. Complainant’s use of “wfuhs” post-dated Respondent’s registration.
With respect to <wfubmc.com/net/org>, Complainant admitted in email to Respondent “We spoke a few years ago…and you were kind enough to redirect these domains back to www.wfubmc.edu.” This corroborates Respondent’s assertion that his interest in the domains was for the email addresses for use with his Service Mark, and his disinterest in the web traffic. It also exemplifies Respondent’s attempts, even early in this engagement, to be as cooperative as possible.
Generally speaking, for all domains held by Respondent (without service marks), intentions are: primary purpose is use of email/future development of sites; secondary is sale of email identities (similar to <netidentity.com> or <mail.com>) or public service (free) use of email forwarding identities; tertiary is sale of domain to any interested party, not a particular markholder or their competitor(s). Respondent does not deny that ALL of his 300+ domain name registrations are available for sale, including the primary business domain, <hyperhedron.com>, belying any targeting of Complainant. The auction listings are “make offer”, rather than for exorbitant figures above actual costs.
Respondent has never demanded any sum exceeding actual costs. Demanding a price is not “bad faith” if legitimate interest exists (WIPO D2000-1654, “Etam”). As a small business owner, Respondent is in no position to “blackmail”, “strong-arm” or “threaten” such a large institution. Respondent, though well aware of WFU, was not aware of, nor had he visited the Medical Center until October of 2000, six months after registration of <wfubmc.com>. Neither the fact that there was a site located at <wfubmc.edu> in 1998 nor that Complainant used the acronym in an internally published magazine, lend any credibility to the supposition that Respondent was aware of Complainant’s use of the acronym mark.
In correspondence Complainant suggested that Respondent stop receiving mails at all for these domains. Respondent refused as he asserts legitimate use. As a method of accommodating the needs of all concerned, Respondent offered email-forwarding services for a price. This is an AT COST price, and there was no attempt by Respondent to profit. The prices quoted are market prices to have a third party accept ALL mail for the domains and to provide mailboxes to individual users (some for Complainant and some for Respondent). Network Solutions provides this service for $30/year, NetIdentity $25, and <mailix.net>, $20. This solution would allow Respondent to continue his web forum uninterrupted, would relieve Respondent of any liability concerning the emails to Complainant’s users (as Complainant states, “Respondent would be responsible”), and would be “transparent” to Complainant’s users, thus satisfying their needs as well. Complainant requested terms for acquisition of the domains in dispute.
The registration was not intended to prevent Complainant’s use of the mark. The .edu extension is specifically reserved for their use. If they choose to also use gTLD’s, they can easily register, for example, wfu-bmc.edu and then register ALL of the corresponding gTLD’s. As for the accusation of a pattern of behavior, no evidence has been produced to demonstrate “targeting” of medical centers or educational institutions (e.g., unchealthcare.net/ us/biz/info are available). Respondent does own some domains that could be construed as being related to “colleges”, but the intent is for fan sites, vanity emails, or future development by alumni or fans, not for sale to the institutions themselves or their “competitors”.
Complainant provides no reason why Respondent is not entitled to rely on inaction by Complainant. Two years and three months transpired during which Complainant could have registered the domains in dispute.
The “.us” domains are recent registrations (May 2002 vs. April 2000), follow a different set of rules and procedures, and a sunrise period was offered to trademark holders. These differences indicate that these registrations are not demonstrative of Respondent’s intent, nor illuminative of his mindset regarding the domains currently in dispute at the time of their registration two years prior. As to a “pattern of behavior”, it seems presumptuous for Complainant to declare what the various acronyms may represent, or that “tarheel” must refer to a specific basketball team rather than any resident of the State of North Carolina. Again, within the .com/net/org realm, there are 467 current registrations that contain the word “deacon”. Respondent requests that the .us domain evidence be given appropriate weight and relevancy, as they are not under this Policy’s jurisdiction, are subject to a separate dispute resolution procedure, and were not available at the time of the registrations in dispute.
At the time of registration, Respondent was acting under the bona fide belief that no conflict would occur with his marks.
Respondent and Complainant are not competitors. They are different types of entities and participate in completely different lines of business, and therefore, the intent to disrupt a competitor’s business is not possible.
Respondent’s references to security/privacy breaches were not intended as threats. They were references to previous telephone conversations in which Complainant was given pro bono education and advice from Respondent (as a Security Professional) as how best to educate their users and partners from transmitting sensitive materials to the incorrect domains. During this discussion Complainant was advised that the only proof against such is proper pre-launch planning for new domains, or acquisition of possible confusing domains if such pre-planning was not accomplished. At no time has any information been transmitted to a third party. All misdirected emails have either been returned to sender, sent to an authority in the proper domain, or simply deleted. Respondent had also informed employees of Complainant that he had no obligation to forward web traffic, forward email, or to warn senders of misdirected email, that the only obligation was to delete them in order to prevent accidental distribution of information.
Respondent has not attempted to attract or confuse Internet users for commercial gain. Quite the opposite is true: as previously presented, the majority of the time Respondent has held the domains in question, ALL web traffic has been forwarded to Complainant at Complainant’s request.
Any actual confusion was created by Complainant’s inaction in registering the domains in question, and perpetuated by their request to forward web traffic, as well as failure to educate their user base and partners as to the difference between domain extensions. Such potential confusion is a fact by the nature of the system, and it is not the burden of domain holders who receive unwanted mail to educate all possible senders as to their folly.
Complainant admits that its IT Security Officer requested web traffic be redirected.
As Complainant alleges actions “akin to blackmail”, the activity by Complainant is akin to entrapment. They fail to register the domains they desire, engender and foster confusion by their actions, then file a complaint against Respondent for cooperating with their requests.
Respondent never intercepted emails, but was the unwilling recipient of the spam that is generated to Complainant’s user base of several thousand, plus forwards, chain mail, personal email, porn, dating services, foreign wife programs, hoax virus alerts, job database search results, etc. Respondent has taken the time, effort and expense to either forward important mail, or reply to sender, finally setting up an auto-responder to warn senders of misdirected mail that it was not reaching their intended recipients, and directing them to send to USERNAME@wfubmc.edu instead, in order to mitigate the confusion perpetuated by Complainant.
Respondent fails to see how the actual chain of use which was the “under construction page”, followed by redirection to Complainant’s main site, followed by a disclaimer page with direct link to Complainant’s main site, constitutes “bad faith registration and use”. The disclaimer was placed after notice of the dispute, but this has been shown to not constitute bad faith (WIPO D2000-1151).
Complainant’s use on the face does not interrupt business and Respondent, not Complainant, is the only one demonstrated to have made multiple attempts to correct any confusion. There should be no consumer confusion as there are no similarities in offerings of goods or services. There is no real excuse for any confusion, for if the Medical Center is as presently as famous as Complainant implies, everyone who corresponds with them would know that they are affiliated with Wake Forest University, and therefore they utilize the “.edu” extension as opposed to the publicly available .com/net/org.
Respondent insists no bad faith was present at time of registration, nor was any bad faith present in the use of the domains. In fact Respondent repeatedly protected the interests of Complainant. There was no intent to profit on the part of Respondent. Any discussions of compensation were in reference to actual costs to provide services to eliminate the conflict between the parties. In fact, there is lost productivity and time that has been suffered by Respondent. Complainant has failed to show an attempt to profit by sale, failed to show a pattern to prevent registrations, failed to show competitor status and subsequent interruption, and failed to show intent to profit commercially from confusion.
Respondent has demonstrated that there was no bad faith use by virtue of cooperation, disclaimers and other efforts to prevent and rectify confusion, despite ridiculous and unsubstantiated claims of wrongdoing.
The Panel finds Complainant to have established all elements necessary to entitle it to the relief which it seeks.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) 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
Essential or virtual identity is sufficient for the purposes of the Policy: See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000‑0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corp. v. S&S Enters. Ltd. (WIPO Case No. D2000-0802); Nokia Corp. v. Nokiagirls.com a/k/a IBCC (WIPO Case No. D2000-0102) and Blue Sky Software Corp. v. Digital Sierra Inc. (WIPO Case No. D2000-0165). The gTLDs may be disregarded.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the “Sleekcraft factors,” AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR, D2001-1480 (WIPO March 26, 2002); Koninklijke Philips Elecs. N.V. v. In Seo Kim, D2001-1195 (WIPO Nov. 12, 2001); Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., D2001-1121 (WIPO Nov. 7, 2001) and the cases there cited. See also the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. Mar 31, 2000).
None of the disputed domain names is identical or confusingly similar to either of Complainant’s registered marks WAKE FOREST UNIVERSITY (registered since August 2, 1983 with a date of first use in commerce of 1967) and WAKE FOREST UNIVERSITY BAPTIST MEDICAL CENTER (registered since February 15, 2000 with a date of first use in commerce of November 11, 1997), nor does Complainant so assert.
Numerous cases under the Policy have decided that the Policy affords protection to those having common law trademark rights as well as to those having rights in registered trademarks: Cedar Trade Assocs., Inc., v. Gregg Ricks (Nat. Arb. Forum Case No. 93633); Bennett Coleman & Co. Ltd. v. Steven S. Lafwani (WIPO Case No. D2000-0014); SeekAmerica Networks Inc. v. Tariq Masood (WIPO Case No. D2000-0131) and Passion Group Inc. v. Usearch, Inc. (eResolution Case No. AF-0250).
Complainant claims common law trademark rights in the acronyms WFU, WFUBMC and WFUHS. The relevant date for determining whether a Complainant has rights in a mark, for the purposes of the Policy, is the date of filing the Complaint: eGalaxy Multimedia Inc v. T1 (Nat. Arb. Forum FA 101823). The fact that a Complainant’s trademark rights may not have been in existence at the date of registration of the disputed domain name is relevant to the issues of legitimacy and bad faith.
There is evidence that Complainant registered the domain name <wfu.edu> on March 3, 1986 and that it sells merchandise adorned with the WFU acronym. There is evidence that the Wake Forest University Baptist Medical Center conducts research and provides medical services and is known by the acronym WFUBMC. There is evidence that Wake Forest University Health Sciences is an arm of Complainant, which conducts research and is known by the WFUHS acronym. The Panel finds Complainant has common law trademark rights in each of the acronyms WFU, WFUBMC and WFUHS.
The Panel finds each of the domain names <wfubmc.com>, <wfubmc.net> and <wfubmc.org> to be identical to Complainant’s WFUBMC mark and the domain name <wfuhs.com> to be identical to Complainant’s WFUHS mark.
Although all the disputed domain names incorporate the entirety of Complainant’s mark WFU, the Panel finds none of them identical to that mark.
The issue of confusing similarity to the WFU mark is not as easy to resolve as in the case of Arizona State University (WIPO Case No. D2001-0445), to which Complainant refers. There the domain name comprised the mark ASU followed by the recognizable word ‘nudes’. Here each domain name, considered on its own, may appear to those unfamiliar with Complainant’s WFU mark to be a jumble of letters with no meaning. However, as mentioned, determination of the issue of confusing similarity requires comparison of the domain name with Complainant’s mark, thereby assuming familiarity with the mark. Upon such a comparison, the Panel concludes that each of the disputed domain names is confusingly similar to Complainant’s WFU mark.
Complainant has established this element of its case.
Rights or Legitimate Interests
Complainant had rights in the trademark WFU prior to registration of the disputed domain names. This is demonstrated by Complainant’s registration of the domain name <wfu.edu> in 1998 (Response, Exhibit B); Respondent’s failure to deny Complainant’s assertion that Complainant has long been known by the acronym WFU and Respondent’s admission that he was “well aware of WFU”. That admission was made in the context of a denial of awareness of the Medical Center until October 2000, 6 months after Respondent registered <wfubmc.com>. The Panel infers from that context that Respondent was well aware of WFU to denote Complainant and its services before he registered any of the disputed domain names.
At Complainant’s website <wfubmc.edu>, the acronym WFUBMC has been used since November 1998 to denote the Wake Forest University Baptist Medical Center and its services. It was so used in the fall/winter 1999 issue of Visions, the Center’s publication for alumni, faculty and friends. The Panel finds Complainant had common law trademark rights in that acronym prior to Respondent’s registration of any of the disputed domain names.
There is no evidence of use by Complainant of the WFUHS mark prior to Respondent’s registration of the <wfuhs.com> domain name.
Respondent is not affiliated with nor authorized by Complainant to use either of the WFU and WFUBMC marks nor to register domain names incorporating those marks. Neither of those acronyms is a common word or name such as would clothe with legitimacy the first to register it as a domain name: Cf. Rusconi Editore S.p.A. v. FreeView Publ’g Inc. (WIPO Case No. D2001-0875; <donna.com>). These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited.
Respondent argues that the acronym WFU is generic but the Panel finds it is neither generic nor descriptive. It is capable of becoming distinctive and has been shown, prior to registration of any of the disputed domain names, to have become distinctive of Complainant and its goods and services, at least in North Carolina, where both Complainant and Respondent are located.
Respondent registered the domain name <wfubmc.com> on April 7, 2000. On May 15, 2000 his company, Hyperhedron LLC, registered in North Carolina the State trademark “Acronym, WFUBMC and Web Forum for Unaffiliated Business Consultants”, claiming first use anywhere on [sic] April 2000 in relation to “services related to providing centralized commercial communications”. Respondent registered the domain names <wfubmc.net> and <wfubmc.org> on June 17, 2000 and <wfuhs.com> on November 27, 2001.
The North Carolina trademark was registered in the name of the company Hyperhedron LLC, not Respondent, who cannot therefore claim himself to have been known by or to have acquired trademark rights in the name WFUBMC. Respondent nevertheless seeks to rely on that trademark registration as demonstrating his own bona fide use of the 3 disputed <wfubmc> domain names for the purposes of an anonymous web discussion forum. Respondent argues in relation to that trademark registration that “requirements to prove actual use included physical specimens and proof by publication, which should be accorded a very strong presumption”, citing Nat. Arb. Forum Case No. FA 98415. In that case, the learned 3-member Panel said:
“Even assuming arguendo that the Respondent's trademark filing was legitimate, a trademark filing, in and of itself, does not constitute sufficient demonstrable preparations to use a domain name in connection with a bona fide offering of goods and services.”
Despite himself having cited that case and therefore being on explicit notice (apart from the terms of paragraph 4(c) of the Policy) of the need to provide evidence to support any assertions he wished the Panel to accept, Respondent has not produced to this Panel the evidence of use since April 2000 of the mark WFUBMC which he says had to be produced to the North Carolina Department of the Secretary of State in order to register that acronym as a trademark, nor any evidence of use of or preparations to use any of the disputed <wfubmc> domain names for the purpose of an anonymous web discussion forum.
Respondent says it was impossible to advertise the forum at the <wfubmc> domains from April 2000 through May 2002, as all web traffic was forwarded to Complainant at its request. It appears therefore that it was as early as April 2000, within days of the registration of the <wfubmc.com> domain name, that Complainant requested Respondent to forward to it web traffic received by Respondent that was intended for Complainant and that Respondent complied with this request.
Thus Respondent, aware of Complainant’s WFU trademark, registered the domain name <wfubmc.com> in April 2000 and within days began to receive email intended for Complainant. Shortly thereafter, Respondent agreed to forward that traffic to Complainant.
Under these circumstances even if, as Respondent asserts, he was unaware of the Medical Center and its acronym WFUBMC when he registered the <wfubmc.com> domain name, it is inconceivable that he was unaware of them by the time he chose to register (in the name of his company) the trademark WFUBMC and (in his own name) the <wfubmc.net> and <wfubmc.org> domain names.
The Panel concludes that the trademark registration and the <wfubmc.net> and <wfubmc.org> registrations were designed to bolster, if possible, Respondent’s position in any dispute or negotiations with Complainant.
Respondent asserts having ascertained that WFUHS was not a registered trademark before registering the domain name <wfuhs.com> and says that no evidence has been presented that Respondent should have been aware of Complainant’s intended use of this acronym at the time Respondent registered it as a domain name on November 27, 2001. Be that as it may, Respondent was then well aware not only of Complainant and its WFU mark but also of the Medical Center also. He knew that email intended for Complainant was being received at Respondent’s <wfubmc.com> website. Respondent asserts that no use of the <wfuhs.com> domain name has been established by Complainant but makes no effort himself to demonstrate any bona fide use of that domain name.
In State Farm Mut. Auto. Ins. Co. v. Rocky E. Faw (Nat. Arb. Forum FA 94971) the respondent was found to have no legitimate interests in respect of the domain name where he had not used nor developed the domain name for a legitimate non-commercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See also Leland Stanford Junior Univ. v. Zedlar Transcription & Translation (Nat. Arb. Forum FA 94970).
Complainant, having succeeded in shifting to Respondent the onus of establishing rights or legitimate interests in the disputed domain names and in the absence of any evidence from Respondent demonstrating any such rights or legitimate interests, the Panel finds that Complainant has discharged its burden of establishing this element of its case.
Registration and Use in Bad Faith
Respondent had every reason to believe registration of the domain name <wfubmc.com>, incorporating as it did the acronym WFU, which he knew to be a mark of Complainant, would be likely to cause confusion with that mark. By the time he registered the other two <wfubmc> domain names and <wfuhs.com>, Respondent was aware that <wfubmc.com> had in fact caused immediate confusion with both the WFU and WFUBMC marks, neither of which have descriptive quality: Cf. Goldline Int’l, Inc. v. Gold Line, (WIPO Case No. D2000-1151). The Panel finds Respondent registered all of the disputed domain names with Complainant in mind.
As to Respondent’s purpose in doing so, shortly after having registered the <wfubmc.com> domain, actual confusion occurred and Respondent complied with Complainant’s request to forward misdirected email to Complainant. When Respondent was asked in May 2002 what his proposal would be for Complainant to acquire the <wfubmc/com/net/org> domains, he said he could provide forwarding services for $20/year/user, or for a flat fee of $5,000 annually per domain. He then stated: “In light of the opportunity costs, lost productivity, security risks and privacy risks that are continuously being incurred by the Institution with the status quo, I believe this to be a bargain. Of course an offer for complete acquisition would be considered”.
Respondent says the references to security/privacy breaches were references to previous telephone conversations in which Respondent, as a Security Professional, had given Complainant pro bono education and advice as to how best to educate their users and partners from transmitting sensitive materials to the incorrect domains. Respondent says that during this discussion, “Complainant was advised that the only proof against such is proper pre-launch planning for new domains, or acquisition of possible confusing domains if such pre-planning was not accomplished”.
Having found each of the disputed domain names to be confusingly similar to Complainant’s WFU mark, that Respondent was well aware of that mark at the time he registered those names and that his account of why he registered them is not supported by any evidence before the Panel, the Panel concludes that, as a Security Professional, at the time he registered each of the disputed domain names, Respondent had every reason to expect his conduct in so doing would cause Complainant to incur the opportunity costs, lost productivity, security risks and privacy risks to which he referred in that subsequent telephone conversation, and that his purpose in registering each of the disputed domain names was to achieve that very result. Further, Respondent knew that, by registering the disputed domain names, he would be depriving Complainant of the opportunity itself to engage in “proper pre-launch planning for new domains”, with the consequence that, as he saw it, acquisition of the disputed domains from him would be the only course open to Complainant to prevent continued exposure to those risks.
This leads the Panel to conclude that Respondent registered each of the disputed domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to Complainant for valuable consideration. This consideration was to be in excess of Respondent’s documented out-of-pocket expenses directly related to the domain names, as evidenced by the fees he proposed for rental in 2002 which, while claiming they were at cost, he nevertheless described as “market prices” and compared with similar market rates charged by others (not with their out-of-pocket expenses).
Under paragraph 4(b)(i) of the Policy, this finding is evidence of both bad faith registration and bad faith use for the purposes of paragraph 4(a)(iii). Accordingly, Complainant has established this element of its case. The fact that the disputed domain names, along with numerous others, are listed for sale under Respondent’s name with Afternic.com serves to reinforce this conclusion.
There is no basis for a finding of reverse Domain Name Hijacking.
Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel directs that the domain names <wfubmc.com>, <wfubmc.net>, <wfubmc.org> and <wfuhs.com> be TRANSFERRED to Complainant.
Alan L. Limbury, Panelist
Dated: November 27, 2002.
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