Dickinson College v. BDC Partners, Inc.
Claim Number: FA0605000703190
PARTIES
Complainant is Dickinson College (“Complainant”), represented by Rebecca A. Finkenbinder, of McNees Wallace & Nurick LLC, 100 Pine Street, P.O. Box 1166, Harrisburg, PA 17108-1166. Respondent is BDC Partners, Inc. (“Respondent”), represented by William Schultz, of Merchant & Gould P.C., 3200 IDS Center, 80 South Eighth Street, Minneapolis, MN 55402-2215.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dickinsoncollegereddevils.com>
and <dickinsoncollegereddevils.net>, registered with Go Daddy Software, 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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 10, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 11, 2006.
On May 11, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <dickinsoncollegereddevils.com>
and <dickinsoncollegereddevils.net> domain names are registered
with Go Daddy Software, Inc. and that the Respondent is the current registrant
of the name. Go Daddy Software, Inc.
has verified that Respondent is bound by the Go Daddy Software, 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 May 18, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 7, 2006 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@dickinsoncollegereddevils.com and
postmaster@dickinsoncollegereddevils.net by e-mail.
A timely Response was received and determined to be complete on June 6,
2006.
On June 12, 2006, the National
Arbitration Forum received an Additional Submission from
Complainant. This submission was timely
and in compliance with Supplemental Rule 7.
On June 16, 2006 Respondent sent a reply to Complainant’s Additional
Submission. This submission was also timely, and compliant with Supplemental
Rule 7(c).
On June 14, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Roberto A. Bianchi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be cancelled or transferred
from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In its complaint Complainant contends the following:
-
BDC's <dickinsoncollegereddevils.com>
and <dickinsoncollegereddevils.net> domain names incorporate
Complainant’s DICKINSON COLLEGE and RED DEVILS marks; the combination thereof
is virtually identical and is confusingly similar to each of Complainant’s
marks.
-
The DICKINSON
marks are distinctive and famous. BDC’s
domain name registrations are subsequent to Complainant’s use of the DICKINSON
COLLEGE trademark for over two centuries, use of the other marks, and trademark
and domain name registrations. BDC had
constructive notice of Complainant’s registered trademark DICKINSON COLLEGE
before it proceeded to register the disputed domain names. BDC is not commonly known by the domain
names, is not affiliated with Complainant, and has not been given consent,
license or other authorization to use the DICKINSON marks. This necessarily results in the conclusion
that BDC has no rights or legitimate interests in the domain names.
-
BDC’s
registration of the disputed domain names despite Complainant’s federal
registered trademarks which were well-known and had acquired distinctiveness
and significant goodwill, constituted bad faith registration, as well as
trademark infringement under federal law.
-
The fact that
BDC registered 23,000 high school and college web domain names is evidence in
and of itself of BDC’s bad faith, as it is not plausible that BDC could
effectively assist or service 23,000 institutions. The purchase of what BDC calls “one of the most comprehensive
acquisitions of a single category of domain names in e-commerce history” was
clearly intended for commercial exploitation.
BDC’s use of the domain names to increase the likelihood of confusion
with the DICKINSON marks as to the source of its domain names and to divert the
public and potential students from Complainant clearly evidences BDC’s intent
to benefit commercially from the goodwill associated with the DICKINSON marks.
B. Respondent
In its Response Respondent makes the following contentions:
-
In 2004, Respondent, through its wholly owned
subsidiary, BDC Partners, began developing and continues to develop a series of
online social-networking communities for students and alumni of approximately
23,500 high schools and over 1,400 colleges and universities. Respondent’s strategic plan in relation to
its school domain names is to offer a social network to students and alumni of
thousands of high schools, colleges, and universities by providing content on
websites that are based on the school to which the students and alumni belong. Respondent
registered the domain names <dickinsoncollegereddevils.com>
and <dickinsoncollegereddevils.net> as part of
Respondent’s social network that allows students and alumni of Dickinson
College to interact with one another via an online chat room. Respondent chose the domain names because
they are terms that are easy for students and alumni to remember. The use of the school name and mascot is the
only way to accurately describe the students and alumni of those schools.
-
Respondent has made
demonstrable steps to develop content for its websites located at the disputed
domain names. Respondent has no
plans to deliver content that requires copyright or trademark licensing unless
licenses are in place with the appropriate entities. Respondent did not register the domain
names at issue in this case for the purpose of redirecting traffic from the
school to its website or disrupting Complainant’s business. Respondent is not a competitor of
Complainant. Rather, Respondent
provides a communication forum that enables students and alumni of
Complainant’s institution to interact with other students and alumni who
attended that institution. A disclaimer
or link to the school will be used on all websites operated by Respondent under
its social-networking plan. The general
disclaimer states: “Copyright 2006 GoSchools.com. All rights reserved. goschools.com is not
affiliated with any University, College or High School. All other trademarks are held by their
respective holders.”
C. Additional Submissions
In its Additional Submission of June 12, 2006, Complainant contends as
follows:
-
BDC argues that
the disputed domain names are not confusingly similar to Complainant’s marks
because the services it provides are different from Dickinson’s services, and
the parties are engaged in different businesses. However BDC’s own website is evidence that it provides identical
or very similar services to those provided by Dickinson. The student and alumni services provided by
both parties in the present case are significantly more related than the
services mentioned in the WIPO cases cited by Respondent.
-
Respondent’s
disclaimer and Response’s Exhibit A provide evidence that BDC is not known by
the domain names, but rather is known as, in addition to BDC Capital and/or BDC
partners, GoSchools.com.
-
BDC has owned
the more than 23,000 high school and college web domain names since April 2005
and yet has only developed one, or at most, two active websites located at
these domain names. Although BDC
alleges that it is making “demonstrable preparations” to develop the websites
located at the disputed domain names, it admits that no content exists on the websites. BDC has failed to show any concrete
preparations to develop the Domain Names.
-
Respondent
focuses on a nominative fair use defense to excuse its use of Complainant’s
marks. However, the mark, or in this
case the domain name, must first be in use, and such use may not be intended
for commercial use to misleadingly divert consumers. BDC has not presented any evidence of the development, or its
demonstrable preparations, for use of the disputed domain names, or that
corresponding websites are ready to go live.
BDC’s press release of June 20, 2005 and its response to Complainant’s
cease and desist letter show that the originally intended use of the domain
names was clearly commercial.
-
BDC’s reliance
in its Response on a new strategic plan to offer mere online social networks is
disingenuous at best. Respondent’s
original goals were clearly commercial, and its failure to explain such a
critical change in the scope of its use of the disputed domain names is evidence
of its bad faith.
In its Additional Submission of June 16, 2006, Respondent contends the
following:
- BDC does not contest the fact that its domain names are similar to Complainant’s school names and mascots. The key point regarding similarity, however, is the necessity for BDC to use the names to accurately describe Complainant’s students and alumni—and for that matter Complainant’s institution.
- Under ¶ 4(c)(i) of the UDRP, BDC need only show that it has used or made demonstrable preparations to use the domain names in connection with a bona fide offering of services. BDC established in its Response and declaration of Mr. Pomije that it has made demonstrable preparations to use its domain names and that its services are bona fide. Complainant’s rebuttal that BDC “has only developed one or, at most, two active websites,” shows that BDC has made demonstrable preparations to use its social network—it does in fact have active websites. The domain names in this case are part of a larger network composed of over 25,000 domain names. BDC’s preparations of websites for other domain names relate directly to the domain names at issue.
- A tell tale sign of Complainant’s lack of evidence is the fact that it only argues that Respondent’s use is commercial—wholly ignoring the remainder of Policy ¶ 4(c)(iii) that requires an intent to misleadingly divert consumers or to tarnish Complainant. A commercial use may still be a nominative fair use absent intent to mislead or tarnish. Complainant’s argument that the placement of a disclaimer somehow shows BDC’s intent to confuse is unreasonable. Indeed, the placement of a disclaimer is a clear indication that BDC does not intend to cause confusion. This factor weighs in BDC’s favor. Complainant cites to a letter from BDC prior to the institution of this proceeding that stated that BDC’s goal was to “assist each school.” (Complaint Ex. I.) Assisting a school is not evidence of intent to disrupt. Complainant cannot point to any evidence showing an intent to disrupt Complainant. This factor also weighs in BDC’s favor.
FINDINGS
Complainant Dickinson College owns, inter
alia, the following U.S. federal trademark registrations: DICKINSON (Reg.
No 2,498,235, covering jewelry, stationery, notebooks, folders, clothing, etc);
DICKINSON COLLEGE and design (Reg. No. 2,498,236, covering similar goods as the
DICKINSON mark plus educational services) and DICKINSON COLLEGE (Reg. No.
2,501,957, protecting similar goods and services as DICKINSON COLLEGE and
design). Complainant is the owner of
the common law word mark RED DEVILS, having used it at least as early as
October 1930, and has used it continuously since that date.
On April 20, 2005, BDC Partners, Inc.
registered the <dickinsoncollegereddevils.com> domain name. On the next day, BDC registered the <dickinsoncollegereddevils.net>
domain name. On June 20, 2005, BDC
Capital, Inc. issued a press release announcing that its wholly owned
subsidiary, BDC Partners, had completed the acquisition of more than 23,000
high school and college web domain names in what “is believed to be one of the
most comprehensive acquisitions of a single category of domain names in
e-commerce history.” On June 30, 2005,
General Counsel for Complainant sent BDC a cease-and-desist letter from further
use of the DICKINSON COLLEGE and RED DEVILS marks. On July 15, 2005, the President and CEO of BDC Partners, Inc.
sent a response to Complainant’s General Counsel.
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.
In the present case, “Respondent makes no contention that the disputed domain name is not similar to the Complainant’s school name.” Response 3.B.1. Respondent also states that its use of the domain names is a nominative fair use, which by nature uses the Complainant’s name, and that this use is not a confusing use. However, the Panel believes that this contention is better dealt with under the heading of “Rights or Legitimate Interests.” Under the first prong of the Policy, a panel should only determine whether a disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights, by comparing both identifiers. Even in a case where both parties are residents of the same country, and where federal law on confusion might otherwise be applicable, considering the content of the websites would not help Respondent since there is no content posted on the websites corresponding to the disputed domain names. And if the allegedly intended content were to be considered, it would consist of a chat forum, which is a service similar to those already offered by Complainant to its students and alumni. See next heading.
Complainant has
federal rights in the DICKINSON COLLEGE and other DICKINSON marks covering,
among other goods and services, educational and entertainment services. Both
domain names fully incorporate the DICKINSON COLLEGE registered trademarks as
well as the RED DEVILS common law mark. The suppression of the spaces between
the words “DICKINSON,” “COLLEGE,” “RED” and “DEVILS,” together with the
addition of the gTLDs “.com” and “.net” is not sufficient to distinguish the
domain names from Complainant’s federally registered trademarks and common law
mark. The fact that two—and not
just one—of the marks of Complainant are fully incorporated in the domain
names, does not diminish, but rather increases, the likelihood of confusion
between the domain names and Complainant’s marks and educational
institution. A simple comparison shows
that the domain names are confusingly similar to Complainant’s marks. See AT&T Corp. v. Kausar, D2003-0327 (WIPO Jul. 29, 2003) (“In the circumstances the disputed
domains name are inherently similar to the Complainant’s marks and likely to be
confusing to the public on face value as suggesting either an operation of the
Complainant or one associated with or endorsed by it”). The panel concludes that Complainant
has proved the first requirement of the Policy.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent.”). In the present case
Complainant contends that BDC had
constructive notice of Complainant’s registered trademark DICKINSON COLLEGE
before it registered the disputed domain names, that BDC is not commonly known
by the domain names, that it is not affiliated with Complainant, and that it
has not been given consent, license or other authorization to use Complainant’s
marks. This amounts to a prima
facie case that Respondent lacks rights and legitimate interests in the
domain names. Respondent relies on ¶ 4(c)(i) of the
UDRP, under which BDC need only show that it has used or made demonstrable
preparations to use the domain names in connection with a bona fide
offering of goods or services. BDC contends that it registered the domain names at issue as part of
Respondent’s online social network that allows students and alumni of Dickinson
College to interact with one another via an online chat room, and that it chose
the disputed domain names because they are terms that are easy for students and
alumni to remember.
As the domain names have not been used to-date, the relevant question is: Is the content and services of an unrelated website sufficient evidence of demonstrable preparations to use the disputed domain names for a bona fide offering of goods or services? The Panel believes that they are not, since Policy ¶ 4(c)(i) clearly requires that use or demonstrable preparations to use refer to the domain name at issue. Of course, nothing prevents cooperation between Respondent and any of the some 23,000 educational institutions whose names and marks have been fully incorporated in Respondent’s domain name registrations. According to BDC’s letter of July 15, 2005 to Dickinson College, BDC is “in negotiations with a number of schools and companies who wish to work [with BDC] in assisting the schools in generating public exposure to their institution, and, potentially, additional revenues to that school.” Exhibit I of the Complaint. As shown in Exhibit B of the Response, the content posted on the website under Respondent’s <burnsvilleblazers.com> domain name seems to be the result of an agreement in negotiations between Respondent and the Burnsville Senior High School. While such cooperation might be apt for proving Respondent’s legitimate interest in the <burnsvilleblazers.com> domain name, it certainly does not evidence any rights or legitimate interests in the domain names disputed in the present case.
Respondent failed to demonstrate that its use of the domain names would be for a non-commercial purpose, as required by Policy ¶ 4(c)(iii), especially having in mind that Respondent’s only owner, BCD Capital, Inc., was established December 10, 2004 “with the purpose of building an investment portfolio consisting in revenue generating assets and emerging companies well positioned for future growth” (Emphasis added). See BDC Capital’s press release of June 20, 2005, Exhibit G of the Complaint. See Compagnie Générale des Etablissements MICHELIN-MICHELIN & Cie v. Marjin van Wezel, D2001-0598 (WIPO Jun. 29, 2001) (“The Respondent has also failed to demonstrate to the satisfaction of the Panel that his use of the Domain Names was to be for a non-commercial purpose.”)
On the other hand, the lack of actual use of the domain names excludes the application of Policy ¶ 4(c)(iii), since this defense requires that a respondent be “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Respondent’s citation to Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) (<scholastics.com>), refers to a case differing from the present one by a number of elements: a) “scholastics” was a trademark as well as a technical term referring to junior chess players; b) the respondent was unaware of complainant Scholastic Inc. or its trademarks at the time it registered the domain name; c) the complainant acknowledged that the disputed domain name was being used at that time for a website regarding chess tournaments; d) respondent’s preparations to use the <scholastics.com> domain name for a chess-related website were directly related to the domain name in dispute. Respondent’s reference to Texas Lottery Comm’n v. Fisher, FA 289071 (Nat. Arb. Forum Aug. 5, 2004), seems also inappropriate, since in Texas Lottery there was little chance that Internet users could confuse the services of a State lottery with merely informational content provided by the respondent in that case.
In order to obtain additional light in a proceeding, a panel may independently visit the Internet, under the general powers of Rules ¶ 10(a) (“The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.”) See InfoSpace.com, Inc. v. Prakash, D2000-0076 (WIPO April 6, 2000). On June 26, 2006, this Panel independently visited the web page shown as Exhibit “D” of Respondent’s Additional Submission. The visit showed that under the “Dickinson College User Services” title Complainant is offering web-mail services to Dickinson students (see <http://www.dickinson.edu/user/us-home.html>), chat rooms enabling synchronous online discussion (see <http://lis.dickinson.edu/Technology/Training/Tutorials/Blackboard/index.html>), and an Alumni Guest Book, allowing alumni of Dickinson to leave messages by using an online form (see <http://cfserv.dickinson.edu/alumni/alumniguest/guestadd.cfm>). This means that Complainant is right that the “online social network” services (chat rooms) allegedly planned by Respondent for the domain names are coincident with, or similar to, the services already provided by Complainant to its students and alumni on its institutional website at <dickinson.edu>.
For these reasons the Panel finds that Complainant has proved that Respondent lacks rights or legitimate interests in the domain names.
For the above reasons the Panel finds that the third requirement of the Policy has been evidenced.
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 <dickinsoncollegereddevils.com>
and <dickinsoncollegereddevils.net> domain names be TRANSFERRED
from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: June 28, 2006
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