Board of Regents of the University of Wisconsin System v. Todd Hanson
Claim Number: FA1109001408817
Complainant is Board of Regents of the University of Wisconsin System (“Complainant”), represented by Brian Vaughan, Wisconsin, USA. Respondent is Todd Hanson (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thewisconsinbadgers.com>, registered with GoDaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2011; the National Arbitration Forum received payment on September 26, 2011.
On September 23, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thewisconsinbadgers.com> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 2011 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@thewisconsinbadgers.com. Also on September 30, 2011, 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 October 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 other than email to the Forum indicating that he did not oppose a transfer of the domain to the Complainant.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thewisconsinbadgers.com> domain name is confusingly similar to Complainant’s WISCONSIN BADGERS mark.
2. Respondent does not have any rights or legitimate interests in the <thewisconsinbadgers.com> domain name.
3. Respondent registered and used the <thewisconsinbadgers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Board of Regents of the University of Wisconsin System, operates institutions of higher learning throughout the state of Wisconsin. Complainant claims rights in the WISCONSIN BADGERS mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,900,714 registered June 20, 1995).
Respondent, Todd Hanson, registered the disputed domain name on June 9, 2006. The disputed domain name resolves to a forum-like website, featuring topics such as illegal drugs, dating services, and computer software. The website also features Complainant’s colors, sports teams, and logo.
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."
In view of 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 draw such inferences it 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 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 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 claims rights in the WISCONSIN BADGERS mark for the purposes of Policy ¶ 4(a)(i). Past panels have determined that registration of a mark with the USPTO is sufficient to confer rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). Complainant has provided evidence of its registration of the mark with USPTO (Reg. No. 1,900,714 registered June 20, 1995). The Panel concludes, therefore, that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant contends that the <thewisconsinbadgers.com> domain name is confusingly similar to its WISCONSIN BADGERS mark within the meaning of Policy ¶ 4(a)(i). The disputed domain name wholly includes Complainant’s mark, simply adding the word “the” and the generic top-level domain (“gTLD”) “.com”, while omitting the space between the words. The simple addition of the article “the” cannot distinguish a disputed domain name under Policy ¶ 4(a)(i). See John Fairfax Publ’ns Pty Ltd. v. Pro-Life Domains Not for Sale, FA 213460 (Nat. Arb. Forum Jan. 6, 2004) (“The addition of the article ‘the’ does not significantly distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i).”). Additionally, the affixation of the gTLD “.com” cannot serve to distinguish a disputed domain name under Policy ¶ 4(a)(i). See 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). Finally, the omission of the space between two words cannot distinguish a disputed domain name. See 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). In light of the foregoing, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds the elements of Policy ¶ 4(a)(i) to have been satisfied.
UDRP precedent indicates that Complainant bears the initial burden of presenting a prima facie case. The burden then shifts to Respondent to produce a Response refuting Complainant’s accusations. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Complainant in this case has satisfied its burden, while Respondent has not. In this situation, some panels have construed Respondent’s failure to satisfy its burden as per se evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). In the interests of fairness, however, this Panel will continue to examine the record to determine whether such rights or legitimate interests do exist.
Complainant alleges that Respondent is not commonly known by the <thewisconsinbadgers.com> domain name within the meaning of Policy ¶ 4(c)(ii). The WHOIS information identifies the domain name registrant as “Todd Hanson,” which the Panel finds to bear no resemblance to the disputed domain name. Moreover, because Respondent has failed to submit a Response, the record is devoid of any evidence tending to show that Respondent is commonly known by the disputed domain name. Complainant also denies any affiliation with Respondent, including authorization of Respondent’s use of the disputed domain name. Given the lack of evidence to the contrary, the Panel must conclude that Respondent is not commonly known by the <thewisconsinbadgers.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant further alleges that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The disputed domain name resolves to a forum-like website, featuring topics such as illegal drugs, dating services, and computer software. The website also features Complainant’s colors, sports teams, and logo. Previous panels have determined that the use of a confusingly similar domain name to redirect users to a website unrelated to Complainant’s business violates Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel holds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds the elements of Policy ¶ 4(a)(ii) to have been satisfied.
The Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith) Thus, the Panel may find bad faith beyond the perimeters of Policy ¶ 4(b). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Given the international notoriety that Complainant’s mark has attained, the Panel infers Respondent’s knowledge of Complainant’s mark at the time the disputed domain name was registered. Respondent’s operation at a confusingly similar domain name, coupled with its use of Complainant’s colors and logo demonstrate Respondent’s intent to lead visitors to believe that its site is affiliated with Complainant in some way. Respondent has failed to rebut this presumption with any evidence of good faith registration. Given Respondent’s intent to confuse visitors and failure to demonstrate registration in good faith, the Panel finds Respondent’s registration and use of the disputed domain name to be in bad faith pursuant to Policy ¶ 4(a)(iii). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to the respondent’s registration of the domain name, and (3) the respondent fails to allege any good faith basis for use of the domain name).
The Panel finds the elements of Policy ¶ 4(a)(iii) to have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thewisconsinbadgers.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 1, 2011
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