national arbitration forum

 

DECISION

 

The Board of Trustees of the Leland Stanford Junior University v.

Craftsman Software c/o Bob Yeh

Claim Number:  FA0509000568317

 

PARTIES

Complainant is The Board of Trustees of the Leland Stanford Junior University (“Complainant”), represented by Laura C. Gustafson, of Pillsbury Winthrop Shaw Pittman LLP, 50 Fremont Street, San Francisco, CA 94105.  Respondent is Craftsman Software c/o Bob Yeh (“Respondent”), F7, #33, Lane 199, Shin-Yi Road Sec. 4, Taipei, TW 10654, TAIWAN.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <stanford-kids.com>, registered with Register.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

James A. Crary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2005.

 

On September 28, 2005, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <stanford-kids.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name.  Register.com, Inc. has verified that Respondent is bound by the Register.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 30, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 2005 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 postmaster@stanford-kids.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 7, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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."  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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <stanford-kids.com> domain name is confusingly similar to Complainant’s STANFORD marks.

 

2.      Respondent does not have any rights or legitimate interests in the <stanford-kids.com> domain name.

 

3.      Respondent registered and used the <stanford-kids.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, The Board of Trustees of the Leland Stanford Junior University, is world-renowned as a prestigious academic and research institution, with undergraduate and graduate students and faculty from throughout the United States and over fifty-five foreign countries.  Complainant has used the STANFORD trademark since at least as early as 1891 and had developed extensive goodwill in the STANFORD marks.  Complainant holds numerous federal trademark and service mark registrations, including the following registered with the U.S. Patent and Trademark Office (“USPTO”): STANFORD, Reg. No. 1,221,613, registered on December 28, 1982 for educational services, research services, sporting goods, clothing, and paper goods; STANFORD, Reg. No. 2,194,918, registered on October 13, 1998 for medical services; LELAND STANFORD JUNIOR UNIVERSITY Seal, Reg. No. 2,610,164, registered on August 20, 2002, for educational services, clothing, paper goods and jewelry. 

 

Complainant offers a program called “Education Program for Gifted Youth (EPGY).”  The website associated with Complainant’s program describes the program as follows: 

 

The Education Program for Gifted Youth (EPGY) at Stanford University is a continuing project dedicated to developing and offering multimedia computer-based distance-learning courses.  Combining technical and instructional expertise, EPGY provides high-ability students of all ages with an individualized educational experience, optimized in both pace and content.  Through EPGY, students have access to courses in a variety of subjects at levels ranging from kindergarten through advanced-undergraduate.  Currently over 3000 students from 28 countries are enrolled in EPGY.

 

Respondent registered the <stanford-kids.com> domain name on Friday August 1, 2003.  The website offers services to educate children, including, inter alia, a program called “Education Program for Gift Kids (EPGK).”  The website associated with Respondent’s program describes the program as follows:

 

The Education Program for Gifted Kids is a continuing project dedicated to developing and offering multimedia computer-based e-learning courses.  Combining technical and instructional expertise, EPGK provides high-ability students of all ages with an individualized educational experience, optimized in both pace and content.  Through EPGK, students have access to courses in a variety of subjects at levels ranging from age three through kindergarten.  Currently over 7000 students from 12 countries are enrolled in EPGK.

 

In addition, the website connected with the <stanford-kids.com> domain name states, “Join Stanford-kids and Let it be a possible Gateway to Stanford University.”

 

On March 30, 2005, Complainant sent a letter to Mr. Hao Ming Yeh at BECS International, notifying Mr. Yeh of its rights in its STANFORD Marks and requesting that Mr. Yeh cease his infringing activities and transfer the domain name to Complainant.  At the time the letter was sent, Mr. Hao Ming Yeh of BECS International was listed as the registrant.[1]  Complainant received no response.

 

On April 25, 2005, Complainant sent another letter, by certified mail, to Mr. Yeh.  Complainant received no response.

 

On May 20, 2005, Complainant mailed a third letter, by certified mail, directed to LuLu Leiava of BECS International, who, at the time, was listed as the registrant.  Ms. Leiava has at all times been listed as the administrative and technical contact for the domain name registration.  No response to the letter has been received to date.

 

On July 13, 2005, Complainant’s outside counsel sent a fourth letter to Ms. Leiava, by certified mail, facsimile and email.  No response to the letter has been received to date.

 

On August 2, 2005, a fifth and final demand letter was sent to Ms. Leiava, by certified mail, facsimile and email.  No response to the letter has been received to date.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant offers its registration of the STANFORD mark with the USPTO as evidence of its rights in the mark.  The Panel finds that Complainant has demonstrated rights pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

The Panel finds that Respondent’s <stanford-kids.com> domain name is confusingly similar to Complainant’s STANFORD mark.  The only difference between the domain name and the mark is the addition of the hyphen and the word “kids,” which does not significantly distinguish the domain name from the mark.  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Respondent is not Complainant’s licensee.  Respondent is appropriating Complainant’s mark to offer competing services.  The Panel finds that appropriating Complainant’s mark to offer competing services is neither a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).

 

There is nothing in the record, including the WHOIS registration information, which demonstrates that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant has submitted evidence that Respondent has actual knowledge of Complainant, including persuasive evidence that Respondent has copied text from Complainant’s “Education Program for Gifted Youth (EPGY)” and used it in its “Education Program for Gift Kids (EPGK).”  Looking at the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s STANFORD mark and, therefore, evidenced bad faith registration by knowingly appropriating Complainant’s mark for its similar program.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

 

Respondent is wholly appropriating Complainant’s mark to offer competing services.  The Panel finds that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site); S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <stanford-kids.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

James A. Crary, Panelist

Dated:  December 21, 2005

 

 

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