National Arbitration Forum

 

DECISION

 

Springfield College v. Corinthian Colleges, Inc.

Claim Number: FA1008001343250

 

PARTIES

Complainant is Springfield College (“Complainant”), represented by Nancy Kennedy, of Alix, Yale & Ristas, LLP, Connecticut, USA.  Respondent is Corinthian Colleges, Inc. (“Respondent”), represented by Francie R. Gorowitz, of Rosenfeld, Myer & Susman, LLP, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <springfield-college.com>, registered with GoDaddy.com, Inc.

 

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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2010.

 

On August 26, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <springfield-college.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name.  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 September 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@springfield-college.com.  Also on September 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on September 29, 2010.

 

On October 15, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant is an educational institution founded in 1885; Complainant adopted its current name, Springfield College, in 1954.  Complainant’s main campus is located in Springfield, Massachusetts.  Complainant also operates satellite campuses in Massachusetts and several other states, and offers distance learning programs accessible worldwide via the Internet.  Complainant states that it has legally enforceable rights in the service mark SPRINGFIELD COLLEGE by virtue of several federal trademark registrations, a pending application, and rights arising at common law.

 

Complainant states that Respondent, Corinthian Colleges, Inc., is the parent corporation of Everest Colleges, a group that includes the former Springfield College of Springfield, Missouri, which adopted the Everest College name in 2007.  Respondent is the registrant of the disputed domain name <springfield-college.com>, registered on October 25, 1999.  Complainant asserts that the disputed domain name is confusingly similar to Complainant’s marks consisting of or containing SPRINGFIELD COLLEGE; that Respondent lacks rights or legitimate interests in the disputed domain name; and that Respondent registered and is using the disputed domain name in bad faith.

 

B. Respondent

Since its founding in 1995, Complainant has acquired 85 colleges, including Springfield College in Springfield, Missouri.  In 2006, Complainant began rebranding its schools; approximately 78 were renamed Everest College.  The websites corresponding to the former names of these schools continue to be maintained by Complainant; each bears a statement notifying users of the name change.  Thus, the website to which the disputed domain name resolves states “Springfield College is now Everest.”  Respondent contends that, based upon these facts, it has rights and legitimate interests in the disputed domain name, and that there is no bad faith in either the registration or use thereof.  Respondent also questions whether Complainant holds sufficient trademark rights to pursue a claim under the Policy, in light of the number of schools that use “Springfield” in their names as a designation of location.

 

FINDINGS

The Panel finds that Complainant has not proved that the disputed domain name was registered and used in bad faith.

 

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:

 

(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 disputed domain name is identical to Complainant’s registered mark, but for the substitution of a hyphen for the space between words and the addition of the “.com” top-level domain suffix.  However, Complainant’s trademark registrations are design-plus-words and the most recent of these (USPTO registration number 3,537,478) explicitly disavows any claim to the phrase SPRINGFIELD COLLEGE apart from the design.  Such a disclaimer likely precludes Complainant from asserting rights under the Policy.  See Game X Change, Inc. v. Modern Empire Internet Ltd., FA 1155839 (Nat. Arb. Forum May 6, 2008).  In any event, as the Panel’s finding in regard to bad faith is dispositive and the Panel declines to enter a finding as to this first element.

 

Rights or Legitimate Interests

 

Respondent’s position with regard to the second element essentially is that it has rights and legitimate interests in respect of the disputed domain name by virtue of the fact that Respondent is using the domain name for a bona fide offering of services by the entity formerly known as Springfield College, even though Respondent no longer operates under that name.  The Panel declines to reach a finding on this question, preferring to decide the present matter on the much clearer question of bad faith.

 

Registration and Use in Bad Faith

 

There appears to be no dispute that an educational institution owned by Respondent operated under the name “Springfield College” for several years, including the date upon which the disputed domain name was registered.  The Panel concludes on that basis that the domain name was not registered in bad faith, regardless of events transpiring subsequent to the registration.  The Policy requires a showing of both registration and use in bad faith.  See Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30, 2007); see also GOL TV, Inc. v. Onyx Domain Solutions, FA 944251 (Nat. Arb. Forum May 14, 2007).  The Panel therefore finds that Complainant has not met its burden of proving that the disputed domain name was registered and is being used in bad faith.

 

DECISION

Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

David E. Sorkin, Panelist
Dated:  October 15, 2010

 

 

 

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum