University of North Dakota v. Private Whois Service c/o undsports.com
Claim Number: FA1010001350925
Complainant is University of North Dakota (“Complainant”), represented by Jason R. Jenkins, North Dakota, USA. Respondent is Private Whois Service c/o undsports.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <undsports.com>, registered with INTERNET.BS CORP.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 7, 2010.
On October 7, 2010, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <undsports.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. verified that Respondent is bound by the INTERNET.BS CORP. registration agreement and thereby has 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 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@undsports.com by e-mail. Also on October 8, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <undsports.com>, is confusingly similar to Complainant’s UND mark.
2. Respondent has no rights to or legitimate interests in the <undsports.com> domain name.
3. Respondent registered and used the <undsports.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, University of North Dakota, owns the exclusive rights to the UND mark that it uses in connection with the University and a many collegiate sport-related activities. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the UND mark (Reg. No. 3,205,797 filed March 29, 2006; issued February 6, 2007).
Respondent, Private Whois Service c/o undsports.com, registered the <undsports.com> domain name July 22, 2003. Complainant does not indicate what Respondent’s disputed domain name resolves to.
Paragraph 15(a) of 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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 Complainant has rights; and
(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.
Complainant contends that it has established rights in the UND mark. The Panel finds that a trademark registration with a federal trademark authority is sufficient to establish rights in a mark. The Panel additionally finds that Complainant need not register the mark in the country where Respondent resides. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant holds a trademark registration with the USPTO for its UND mark (Reg. No. 3,205,797 filed March 29, 2006; issued February 6, 2007).
The Panel finds that Complainant established rights in its UND mark pursuant to Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO.
Complainant contends that Respondent’s domain name is confusingly similar to Complainant’s UND mark. The <undsports.com> domain name contains Complainant’s entire mark, adds the descriptive term “sports” which describes part of Complainant’s use of the mark, and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the addition of a descriptive term and a gTLD are insufficient to distinguish a disputed domain name from a complainant’s mark. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that Respondent’s <undsports.com> domain name is confusingly similar to Complainant’s UND mark pursuant to Policy 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <undsports.com> domain name. Previous panels have found that Complainant must make a prima facie case to support its allegations and that once Complainant does so, the burden of proof shifts to Respondent to show such rights to or legitimate interests in the disputed domain name, pursuant to a Policy ¶ 4(a)(ii) analysis. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”).
The Panel finds that Complainant failed to provide sufficient evidence to make a prima facie case because Complainant offered no evidence of Respondent’s use of the disputed domain name and made no specific assertions that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c). Given this shortcoming, the Panel finds that Complainant failed to meet its burden under Policy ¶ 4(a)(ii) and the Panel cannot make findings that Respondent lacks rights and legitimate interests in the disputed domain name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”); see also Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii)).
The Panel finds that Complainant failed to satisfy the elements of ICANN Policy ¶ 4(a)(ii).
Respondent registered the <undsports.com> domain name July 22, 2003, which predates Complainant’s USPTO registration date and filing date (Reg. No. 3,205,797 filed March 29, 2006; issued February 6, 2007) for its UND mark. Complainant provides no other evidence or information to show common law rights in the UND mark. In Ode v. Intership Ltd., the panel unanimously held that the complainant’s trademark must predate the domain name. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the domain name.”). Because Respondent registered the disputed domain name prior to the registration or filing date of Complainant’s mark, the Panel cannot say that Respondent has registered and is using the <undsports.com> domain name in bad faith. See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant). Therefore, the Panel finds that Complainant failed to meet its burden under Policy ¶ 4(a)(iii).
The Panel finds that Complainant failed to satisfy the elements of ICANN Policy ¶ 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 16, 2010.
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