Pensacola Christian College Inc v. Peter Gage
Claim Number: FA0110000101314
The Complainant is Pensacola Christian College, Inc., Pensacola, FL (“Complainant”) represented by Shephen B. Shell, of Shell, Fleming, Davis & Menge, P.A.. The Respondent is Peter Gage, Spokane , WA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pensacolachristiancollege.com>, registered with Parava Networks, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.
The Panelists are Desmond J. Ryan, Hon. Daniel B. Banks, Jr., and M. Scott Donahey, with the latter acting as Chair.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 25, 2001; the Forum received a hard copy of the Complaint on October 26, 2001.
On November 1, 2001, Parava Networks, Inc. confirmed by e-mail to the Forum that the domain name <pensacolachristiancollege.com> is registered with Parava Networks, Inc. and that the Respondent is the current registrant of the name. Parava Networks, Inc. has verified that Respondent is bound by the Parava Networks, 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 November 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 21, 2001 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on November 20, 2001.
On December 6, 2001, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed M. Scott Donahey as Chair of the Panel, Desmond J. Ryan and Hon. Daniel B. Banks, Jr. to serve as Panelists.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant is a college located in Pensacola Florida, and claims ownership of a common law service mark PENSACOLA CHRISTIAN COLLEGE, by its use as a corporate name since 1973. Complainant provides educational services at the college level and grants a college degree. Complainant has expended millions of dollars in marketing its educational services. Complainant filed an application to register the service mark PENSACOLA CHRISTIAN COLLEGE on August 15, 2001, but failed to attach a copy as an Annex to the Complaint.
Complainant contends that the domain name at issue is identical to Complainant's common law service mark. Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name at issue, since Respondent has never used the domain name in connection with a bona fide offering of goods or services, has never been commonly known by the name, and has never made a fair use of the name. Complainant contends that Respondent has registered and is using the name in bad faith, since Respondent admittedly registered the name, because Complainant had failed to do so. As further evidence of bad faith, Complainant alleges that Respondent registered the name in the hope of receiving "hits" from users who were seeking Respondent's web site which is located at www.pcci.edu. Complainant also alleges bad faith resulting from Respondent's establishment of "click-through links" on the web site to which the domain name at issue resolves that are designed to generate income.
Complainant alleges that the domain name at issue was registered by Respondent in order to prevent Complainant from reflecting the mark in a corresponding name and statements made by Respondent which indicate an intent to engage in a pattern of such conduct. Complainant alleges that Respondent is engaged in conduct primarily for the purpose of disrupting Complainant's business, since at the web site to which the domain name resolves, Respondent has posted information critical of Complainant's rules and policies. A parent of a prospective student has visited the site and expressed hesitancy at applying to a college that permits such a critical site to exist. Finally, Complainant contends that Respondent has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion with Complainant's common law service mark.
Respondent is a former student and graduate of Complainant. Prior to registering the domain name at issue, Respondent had produced a student newsletter, the Student Voice, which was distributed to students at the college. The Student Voice contains commentary that is critical of Complainant's rules and policies.
Respondent contends that a user seeking a college would likely use the generic Top Level Domain (gTLD) suffix, .edu. While that domain name was available, Respondent did not register it in an attempt to avoid confusion. Moreover, Respondent displays prominently on the web site to which the domain name at issue resolves that it is an unofficial information site, followed by a link to the official site of Pensacola Christian College.
Respondent contends that he is offering bona fide goods or services at the web site to which the domain name at issue resolves. Respondent offers back issues of the Student Voice, links to web sites related to Pensacola Christian College, a messageboard, and other information.
Respondent alleges that the "click-through links," which links have been removed, resulted in little revenue and were not the primary purpose of the site. The primary purpose of the site is alleged to be to post comments about the college, its rules, and policies, and to express opinions about these subjects. Since the topic of the commentary was Pensacola Christian College, the domain name <pensacolachristiancollege.com> was descriptive of the topic and was meant to attract those who were interested in the subject matter and could possibly contribute thereto.
The Panel has serious doubts as to whether Complainant did and can establish that it is the owner of a service mark. For the purposes of the discussion that follows, the Panel will assume that Complainant is the owner of such mark.
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
Assuming without deciding that the Complainant has common law rights in the service mark PENSACOLA CHRISTIAN COLLEGE, the Panel finds that the domain name at issue is identical to the mark. Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
Rights or Legitimate Interests
Respondent asserts that the domain name at issue resolves to a web site at which commentary and criticism of the rules and policies or the Complainant are offered and at which users are free to post messages about the conduct and policies of Complainant. Respondent identifies the web site as an unofficial information site and includes a link to the official web site. Complaint, Annex A. Respondent, a former student and graduate of Complainant, elected to use Complainant's name with the gTLD suffix .com, rather than .edu, so as not to create the impression that it was a school affiliated site.
The Panel finds that the "click-through links" were merely incidental to the primary purpose of the site, which was to express and allow others to express opinions and criticism of Complainant's activities, policies and rules. The Panel finds that this constitutes a legitimate right and interest in respect of the domain name and constitutes fair use. Newport News v. VCV Internet, AF-0238 (eResolution July 18, 2000); Bridgestone/Firestone Research, Inc. and Bridgestone Corporation v. Jack Myers, D2000-0190 (WIPO July 6, 2000).
Registration and Use in Bad Faith
Because the Panel has found that Respondent has rights and interests in respect of the domain name at issue, there is no need to decide the issue of bad faith.
The Panel determines that Respondent has rights and legitimate interests in respect of the domain name at issue. Accordingly, the Complaint is dismissed.
M. Scott Donahey, Panel Chair
Dated: December 12, 2001
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