Lebanon Valley College v. BDC Partners, Inc.
Claim Number: FA0605000703608
PARTIES
Complainant is Lebanon Valley 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 <lebanonvalleycollegeflyingdutchmen.com> and <lebanonvalleycollegeflyingdutchmen.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.
Paul M. DeCicco as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 11, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 11, 2006.
On May 12, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <lebanonvalleycollegeflyingdutchmen.com> and <lebanonvalleycollegeflyingdutchmen.net> domain names are
registered with Go Daddy Software, Inc. and that the Respondent is the current
registrant of the names. 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 17, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 6, 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@lebanonvalleycollegeflyingdutchmen.com and
postmaster@lebanonvalleycollegeflyingdutchmen.net by e-mail.
A timely Response was received and determined to be complete on June 6,
2006.
On June 13, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant timely submitted additional papers on or about June 12,
2006.
Respondent timely submitted additional papers on or about June 16,
2006.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contents as follows:
The Complaint is based on Complainant Lebanon Valley College’s common law trademarks, LEBANON VALLEY COLLEGE and FLYING DUTCHMEN, for, among other goods and services, educational services, entertainment services in the nature of sporting events, and clothing (collectively referred to as the “LVC Trademarks”).
Complainant began using the LEBANON
VALLEY COLLEGE mark at least as early as 1867 and the FLYING DUTCHMEN mark at
least as early as 1936. Complainant has
used these trademarks continuously.
Based on its use, Complainant has common law rights in the LVC
Trademarks.
Respondent registered the two at-issue domain names that are identical to
Complainant’s trademarks. The LVC
Trademarks are arbitrary and/or have acquired distinctiveness for Complainant’s
goods and services and are protectable under common trademark law. The at-issue domain names incorporate
Complainant’s LEBANON VALLEY COLLEGE and FLYING DUTCHMEN trademarks; the
combination thereof is virtually identical and is confusingly similar to each
of Complainant’s marks. The public has
come to know both the quality and source of the goods and services bearing
these marks. As such, the LVC
Trademarks are distinctive and famous.
Respondent is not commonly known by the at-issue domain names and is not affiliated with Complainant. Complainant has not given consent, license or other authorization to Respondent for Respondent’s use of the LVC Trademarks or its use or registration of the disputed at-issue domain names. Therefore Respondent has no rights or legitimate interest in the at-issue domain names.
Respondent registered and uses the
at-issue domain names in bad faith to disrupt Complaint’s activities and
attract Internet users to Respondent’s website for commercial gain. Complainant acquired 23,000 high school
domain names. The fact that Respondent
registered 23,000 domain names is evidence in and of itself of Respondent’s bad
faith, as it is not plausible that Respondent could effectively assist or
service 23,000 institutions. The
purchase of what it calls “one of the most comprehensive acquisitions of a
single category of domain names in e-commerce history” was clearly intended for
commercial exploitation.
Further evidence of Respondent’s
bad faith is its implicit admission that its newly registered domain names
will, in fact, attract Internet users to its website, as opposed to the
Complainant’s website, based on its assertion that its domain names “are
straightforward” and “the most easily memorized addresses.”
Respondent’s use and registration of domain names that are virtually identical to the LVC Trademarks, subsequent to Complainant’s use of the LVC Trademarks, is a deliberate attempt to disrupt Complainant’s institution and its activities. This use is likely to confuse students and others and draw Internet users and potential students away from Complainant, by creating a likelihood of confusion with the Complainant’s trademarks as to the source of the at-issue domain names and any “sports reporting and marketing” Respondent intends to do via the at-issue domain names. Such diversion, motivated by commercial gain, constitutes bad faith use.
On August 29, 2005, after becoming
aware of Respondent’s domain name registrations, Complainant’s counsel sent a
cease and desist letter to Respondent.
On October 19, 2005, Complainant’s counsel received a response to
Complainant’s letter. Respondent’s
response stated that its goal is “to assist [Complainant] in marketing its
products through the Internet, not only to increase exposure of [Complainant]
to the public, but also as a way to generate additional revenues.”
Complainant believes that, contrary
to Respondent’s insistence that it will “assist” Complainant in its marketing
efforts, Respondent will use the at-issue domain names in the future to promote
Complainant’s sports teams and sell Complainant’s sports related goods via the
at-issue domain names to disrupt Complainant’s activities and its institution,
and trade off and damage the goodwill of Complainant indefinitely.
B. Respondent
Respondent contends as follows:
Respondent is a publicly traded company with a
principal activity of investing and lending to small private companies. In 2004, Respondent, through its wholly
owned subsidiary, Respondent 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 relevant plan for the 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.
In order to accurately describe the students and
alumni, Respondent registered over 25,000 domain names that combine the names
of a high school, college or university with the name of that institution’s
mascot.
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 domain names <lebanonvalleycollegeflyingdutchmen.com>
and <lebanonvalleycollegeflyingdutchmen.net>.
Respondent has no plans to deliver content that requires copyright or
trademark licensing unless licenses are in place with the appropriate
entities. Additionally, Respondent is
solely using the domain names to describe the students who access a particular
social network website.
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. To adequately describe the services provided
by Respondent, Respondent combined the school name and its mascot into a single
domain name.
To avoid any issues regarding confusion as to the
source of Respondent’s websites, Respondent’s practice is to place disclaimers
on its websites. 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.”
Domain names that are not likely to cause
consumer confusion are not considered confusingly similar under the UDRP. Additionally, when a mark is fairly used to
describe a company or entity, that use is not likely to cause confusion.
Respondent makes no contention that the disputed
domain name is not similar to the Complainant’s school name. Respondent’s use of the domain name is a
nominative fair use, which by nature uses the Complainant’s name. The use of that name, however, is not a
confusing use. The relevant consumers,
including students and alumni of the institution, are not likely to be confused
that Respondent is related to Complainant because the two offer distinct,
non-competing services. Complainant is
a college, providing educational services to its students. Respondent provides chatroom services for
the students and alumni of over 25,000 high schools, colleges, and
universities. Additionally, a
comparison of the website located at Complainant’s website and the type of
content provided by Respondent shows that confusion is not likely. Furthermore, schools typically use the
top-level domain name “.edu” to identify their services—a further indication
that consumers are not likely to be confused with Respondent’s domain names.
Respondent contends that it has a legitimate
right to use the domain names based on Paragraphs 4(c)(i) and 4(c)(iii) of the
UDRP. Under Paragraph
4(c)(i), a Complainant cannot prevail if the respondent, prior to notice of the
dispute, has made “use of, or demonstrable preparations to use, the domain name
. . . in connection with a bona fide offering of goods or services.”
Respondent also has a legitimate
right under the nominative fair use doctrine to use the disputed domain names
under Paragraph 4(c)(iii) if the domain name is used to provide information
about Complainant. Respondent has not yet
placed content on its website located at the domain names. Respondent has a business plan to develop
over 25,000 websites and has not yet developed the website for this particular
institution. That is Respondent is not
making use of the at-issue domain names as trademarks, i.e. as an indicator of
the source or origin of goods or services but rather in a descriptive sense.
The use of the at-issue domain names is bona
fide because the domain names appropriately described the nature of
Respondent’s services and its target users.
Respondent has demonstrated a legitimate right to use the domain names to
fairly and accurately describe the nature of its services—providing a chat room
regarding the institution Lebanon Valley College and its sports teams, the
Flying Dutchmen.
Respondent did not register the at-issue domain names in bad faith. General allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the Panel may conclude that Respondent acted in bad faith.
Respondent did not register the disputed domain names primarily for the purpose
of selling, renting, or otherwise transferring the domain name to Complainant.
Respondent did not register the domain names to sell, rent, or transfer the
domain names, show that the registration was not made in bad faith. Respondent registered the at-issue domain
names to be part of a social network for students and alumni of Lebanon Valley
College. At no time has Respondent
offered any domain name for sale.
Complainant does not contend that Respondent registered the domain names
for the purpose of selling, renting, or otherwise transferring the domain names
to Complainant. Complainant merely
asserts that the registration of 23,000 domain names is evidence of
Respondent’s bad faith. That allegation
is insufficient to find an intentional bad faith registration. This factor shows that Respondent did not
register the domain names in bad faith.
Respondent did not register the domain names to prevent the Complainant from
using the domain name. Complainant does
not allege that Respondent purchased the domain names to prevent the
Complainant from using them. Rather,
Complainant states that its website is <lvc.edu> —the standard format for
educational institutions. Complainant
does not contend that it desired to use the disputed domain names prior to the
time Respondent registered those names.
Complaint used the mark LEBANON VALLEY COLLEGE for over a century before Respondent registered the domain names, giving it sufficient time to register the names if they were truly desired. There is no evidence that Respondent raced to the domain name registrar to usurp Complainant from registering the domain names.
Respondent registered the domain names to describe the contents of its social
network, not to prevent Complainant from using the names.
Respondent did not register the domain names for the purpose of disrupting the Complainant business. A complainant’s failure to produce any evidence that a respondent intended to disrupt the complainant’s business is evidence the domain name was not registered in bad faith.
Complainant does not allege that the registration of the domain names was to
disrupt Complainant’s business.
Complainant asserts that Respondent’s goals were to assist Complainant
by increasing exposure of Complainant to the public. Not only does this statement show that Respondent did not have
the requisite intent to disrupt, it had the goal of assisting Complainant. That is not bad faith intent.
The identity of the domain names is required in order to adequately describe
the students and alumni. Additionally,
Complainant provides no evidence how Respondent’s mere registration of the
domain names “is a deliberate attempt to disrupt Complainant’s institution and
its activities.” Absent support,
Complainant’s claim must fail.
Respondent did not register the domain names to intentionally attract
Internet users to its website by creating a likelihood of confusion. The lack of evidence showing Respondent’s
intent to attract Internet users to its website by creating a likelihood of
confusion shows that bad faith is not proven.
Furthermore, the use of a disclaimer is evidence that the respondent did
not register the disputed domain name in bad faith to confuse. Rather, Respondent registered the domain
names to accurately describe the contents of the services provided by
Respondent—a chat room for students and alumni of Complainant. There is no evidence that students, alumni,
or the general public will be confused based on Respondent’s domain names. Furthermore, Complainant cannot point to any
evidence that Respondent intended to cause confusion among the students and alumni
to attract them to its website. That
evidence is lacking because it does not exist.
Respondent places disclaimers or direct links to the schools on each of the
websites once a website is activated.
Such a disclaimer or direct link eliminates any potential for likely
confusion. Complainant’s only evidence
of Respondent’s bad faith is an “implicit admission” that Internet users will
be attracted to Respondent’s website because the domain names “are
straightforward” and “the most easily memorized addresses.” Respondent ‘s use of the domain names is to
describe the students and alumni of Complainant—a fair use under the nominative
fair use doctrine.
Respondent has yet to place content on the websites, again showing that Complainant has no evidence of any intent to cause consumer confusion. Complainant’s allegations provide no additional support for its claim of bad faith. Because Complainant lacks evidence that Respondent had bad faith intent to cause consumer confusion, this element must fail.
C. Additional Submissions
Complainant additionally contends as follows:
When analyzing whether a domain name mark is likely to cause confusion with another mark, one should generally accord little weight to the top-level domain ("TLD") portion of the mark.
Respondent has neither demonstrated that the parties operate distinct businesses nor that the goods and services are distinct.
The cases on which Respondent relies for the premise that domain names are not "confusingly similar" if the parties engage in different businesses are inapposite.
Clearly, the student and alumni services provided by both parties in the present case are significantly more related than (1) accounting and intellectual property services and pet grooming services and (2) umbrellas and insurance services, if not identical. As compared to the cases highlighted by Respondent, there is no doubt that the at-issue domain names used in the context of student and alumni services are confusingly similar to the student and alumni services provided by the very institution that the students and alumni attended.
Although Respondent alleges that it is making "demonstrable preparations" to develop these websites, it admits that no content exists on the websites addressed by the at-issue domain names. Respondent has failed to show any concrete preparations to develop the at‑issue domain names. The fact that it has activated other unrelated websites is irrelevant to the present case.
Respondent erroneously focuses on a nominative fair use defense to excuse its use of Lebanon Valley's Trademarks. Nominative fair use of another's trademark may be considered a legitimate use however the trademark, or in this case, the domain name, must first be in use. Here, Respondent has made no use of the at-issue domain names; consequently, its reliance on federal trademark and domain name case law is inappropriate.
Respondent is not "entitled to the protection of the safe harbor accorded by [ICANN] Policy Paragraph 4(c)(i) for domain name owners who have made a bona fide use of their name, as well as Paragraph 4(c)(ii) for domain owners who have become commonly known by the domain name" or Paragraph 4(c)(iii) for domain name owners who are making a legitimate fair use of the domain name.
If Respondent’s proposed use of the at-issue domain names constitutes nominative fair use, such use cannot overcome the second element of this defense, i.e., such use may not be intended for commercial use to misleadingly divert consumers.
Respondent described its goals at the time it registered the domain names and explicitly highlighted its commercial plans for them. Respondent’s claims that it now has a strategic plan to offer an online social network appears to be an attempt to divert attention from its express original purpose, evidenced in both the Press Release and response to Lebanon Valley's cease and desist letter.
Respondents own words in its Press Release and response to Lebanon Valley's cease and desist letter show Respondent intended to disrupt Complainant’s business. Respondent stated that it registered the specific domain names because "[m]ost educational websites are designated by a '.edu' or '.org' suffix, which often are complex and difficult to remember." Respondent claims that "[its domain names] are straightforward -- the name of the school and the mascot. And .com and .net remain the most easily memorized addresses." These statements exemplify Respondent's intent to attract Internet users to its website.
Respondent would not register "easy" domain names and then compare them with "complex" educational domain names if it did not desire to lure Internet users to use its websites.
Respondent again argues that the parties are not competitors and thus its use of the domain names will not disrupt Lebanon Valley's business. However, the parties offer identical or substantially similar student and alumni services and Respondent's use of the domain names, and therefore, will disrupt Lebanon Valley's business.
Respondent's claimed attempt to eliminate "any potential for likely confusion" by placing a disclaimer on the websites located at the at-issue domain names once the website is activated is irrelevant. First, the websites “located” at the disputed domain names are inactive. Accordingly, no disclaimers have been placed and "any potential for likely confusion" cannot be eliminated. Second, the fact that Respondent intends to include such a disclaimer suggests, in and of itself that Respondent acknowledges confusion between the Trademarks and the at-issue domain names is likely.
Respondent’s original goals and plans for the at-issue domain names included generating revenues, assisting in the marketing of Lebanon Valley's products, and providing service to, and creating a joint venture with, Lebanon Valley. Respondent’s decision to ignore, or at least fail to explain such a critical change in the scope of its use of the at-issue domain names is clear evidence of its bad faith.
Respondent additionally contends as follows:
Respondent does not dispute that Complainant need only prove that the at-issue domain names are either identical or confusingly similar. Respondent does not contest the fact that its at‑issue domain names are similar to Complainant’s school names and mascots.
The key point regarding the similarity of the names is the necessity for Respondent to use the names to accurately describe Complainant’s students and alumni—and for that matter Complainant’s institution. Respondent had a legitimate right to register the at-issue domain names to describe its services.
Complainant provides no retort to demonstrable business preparations by Respondent. Complainant’s only rebuttal is that Respondent “has only developed one or, at most, two active websites.” That statement shows that Respondent has made demonstrable preparations to its social network—it does in fact have active websites.
Complainant’s statement that Respondent’s activation of other websites “is irrelevant” to the present case is incorrect. The at-issue domain names are part of a larger network composed of over 25,000 domain names.
A Respondent need not actually use a domain name for the nominative fair use doctrine to apply; demonstrable preparations to use domain names are sufficient. Respondent may rely on the nominative fair use doctrine because it is undisputed and admitted by Complainant that Respondent has made demonstrable preparations to use the domain names.
Complainant’s suggestion that Respondent is changing its strategy is unfounded.
A commercial use may still be a nominative fair use absent intent to mislead or tarnish.
There is no evidence that Respondent intended to attract Internet users to its website by creating a likelihood of confusion.
Complainant’s argument that the intended placement of a disclaimer on websites to be addressed by the at-issue domain names shows Respondent’s intent to confuse is unreasonable. The placement of a disclaimer on Respondent’s website is a clear indication that Respondent does not intend to cause confusion.
Complainant provides no evidence to support a contention that Complainant intended to disrupt Complainant’s business. In fact, its only argument on this point is that the at-issue domain names are “straightforward” and “easily memorized.” Of course they are—they accurately describe Complainant, its students, and its alumni. In no way, however, does this mean that Respondent registered or used the domain names with intent to disrupt Complainant’s business.
FINDINGS
Having considered the Complaint, the Panel
finds that:
(1) the domain names registered by the Respondent are identical 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 names; and
(3) the domain names have been registered and are being used in bad
faith.
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.
Complainant alleges
that it has continuously used the LEBANON VALLEY COLLEGE and FLYING DUTCHMEN
marks in connection with its educational services and entertainment services in
the nature of sporting events.
Complainant further alleges that it has used the LEBANON VALLEY COLLEGE
mark since 1867 and the FLYING DUTCHMEN mark since 1936. Complainant’s LEBANON
VALLEY COLLEGE and FLYING DUTCHMEN marks have acquired secondary meaning
among consumers as identifying Complainant’s educational services and
entertainment services. Common law trademark rights are sufficient to
demonstrate rights under paragraph 4(a)(i) of the Policy. Therefore, Complainant need not own a
trademark registration in order to demonstrate its rights in the LEBANON VALLEY
COLLEGE and FLYING DUTCHMEN marks. See
SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
May 18, 2001). Complainant’s continuous
use of the marks for such long periods of time is sufficient for Complainant to
establish common law rights in the marks under Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum, May 31,
2006). Moreover, Respondent does not
credibly refute Complainant’s assertions that it has trademark rights in the
at-issue domain names.
The at-issue domain names are identical in form to a concatenation of Complainant’s trademarks LEBANON VALLEY COLLEGE and FLYING DUTCHMEN. Combining marks will not preclude a finding of confusing similarity. Nor will the addition of the “.com” TLD (top level domain) since it is widely held that the addition of a TLD is discounted when comparing a domain name with a trademark. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000); see also Trademark Manual of Examination Procedures (TMEP) §1207.01(b)(iii). A TLD has no source-indicating significance.
Notwithstanding that the domain names are
formally identical to Complainant’s trademarks, Respondent initially urges that
the domain names are neither confusingly similar nor identical to Complainant’s
trademarks because Complainant –a college, sponsors a different classes of
services that the Respondent.
Respondent claims to be in the business of offering a social networking facility to students and alumni of
thousands of individual high schools, colleges, and universities. Some panels have considered the class of
goods to be relevant to an analysis under paragraph 4(a)(i) of the policy. This Panel sees no rational basis for such
consideration.
While the class of good of each mark is a
factor in analyzing whether or not two marks are confusingly similar in a
trademark infringement action under the Lanham Act, it does not make sense to
consider the class of goods or services under a Policy ¶ 4(a)(i) analysis. In many UDRP proceedings there is no class
of goods at all connected with the at-issue domain names; for example when the
domain name is registered for resale or is dormant. Furthermore, a plain reading of paragraph 4(a)(i) simply requires
a panel to consider whether or not the domain name is “identical or confusingly
similar.” There is nothing in the
Policy that suggests that “confusingly similar” be given any definition other
than its plain meaning. There is no
basis for a panel to read a legal definition apparently excised from United
States trademark law as the definition for “identical or confusingly similar”
under paragraph 4(a)(i) of the Policy.
In fact there is no reason to look beyond the domain name at all, when
determining whether or not a domain name is “identical or confusingly similar”
to a respondent’s domain name. One
panel put it this way:
The test of confusing similarity under the
Policy is confined to a comparison of the disputed domain name and the
trademark alone, independent of the other marketing and use factors usually
considered in trademark infringement or unfair competition cases.
Kirkbi AG v. Dinoia, D2003-0038
(WIPO March 9, 2003).
Therefore, the at-issue domain names, each a
concatenation of Complainant’s trademarks, are shown to be identical to the
Complainant’s trademarks.
Complainant must first make a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy. The threshold for such prima facie showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once it made a prima facie case, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests in the at-issue domain name.
Complaint, a holder of trademarks in the at-issue domain names, asserts that Respondent is not commonly known by the at-issue domain names and is not affiliated with Complainant. Complainant further states that it has not given its consent, license or other authorization to Respondent such as to permit Respondent’s to use its trademarks in domain names or otherwise. Complainant has thus made the initial requisite showing under paragraph 4(a)(ii).
Complainant, having made a prima facie
showing that Respondent lacks rights and interest in the domain name,
the burden then shifts to Respondent to show that it affirmatively has
rights in the at-issue domain names. To
wit, Respondent claims that it “made use of, or demonstrable
preparations to use, the domain name … in connection with a bona fide
offering of goods or services” pursuant
to paragraph 4(c)(i) of the Policy, and further that it has rights under the
“nominative fair use doctrine” presumptively pursuant to, and consistent with,
paragraph 4(c)(iii).
The trouble regarding Respondent’s paragraph 4(c)(i) claim is that
although Respondent has made substantive steps in establishing a business use
for the at-issue domain names, Respondent’s business plans call for the use of
Complainant’s trademarks and most likely hundreds, if not thousands, of other
trademarks for which it neither has license nor permission to use. Indeed, Respondent admits that the at-issue
domain names as well as the other domain names registered in conjunction with
Respondent’s business plans were selected precisely because they unambiguously
describe or identify particular schools.
Therefore, while it appears that Respondent made substantive business
plans regarding the use of the at-issues domain names as well as numerous other
domain names categorically consisting of school names and school mascots, such
use does not appear to be bona fide.
As discussed more fully below, Respondent’s use of the <lebanonvalleycollegeflyingdutchmen.com> and <lebanonvalleycollegeflyingdutchmen.net>
domain names does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See
G.D. Searle & Co. v. Mahony,
FA 112559 (Nat. Arb. Forum June 12, 2002).
Respondent argues that using Complainant’s
marks in its domain names is a “fair use” and therefore its use does not
infringe on Complainant’s trademark rights.
See Policy ¶ 4(c)(iii).
Respondent contends that it is using the at-issue domain names because
they are necessary to describe Respondent’s services. Respondent suggests that this is a “fair use” under 15 U.S.C.
1115(b)(4). A fair use defense exists
where the subject mark is used only “to describe the goods or services of [a]
party, or their geographic origin.” 15
U.S.C. 1115(b)(4). Such a defense is
appropriate where the trademark refers to or describes the goods or services of
the party asserting the defense. But
Complainant’s trademarks do not directly describe respondent’s services. Rather, the marks indirectly refer to
Respondent’s target markets and are descriptive of the Complainant.
Respondent cites the 9th Circuit
case New Kids on the Block v. News Am. Pub., Inc., for the proposition that it has rights in the
at-issue domain names based on “nominative fair use.” Unlike a fair use under 15 U.S.C. 1115(b)(4), which is concerned
with a putative infringer describing its own goods or services through
another’s trademark, nominative fair use is concerned with the use of a mark to
describe the goods or services of the mark holder. New Kids on the Block v. News Am. Pub., Inc., 971
F.2d 302 (9th Cir. 1992). Given Respondent’s claim that it is making
use of the at‑issue domain names because they are necessary to describe
something, and observing that what they describe is Complainant, a nominative
fair use defense seems suited to the instant dispute.
In New Kids, the Court announces a three-part test to determine whether or not there was a “fair use” of another’s trademark when the trademark is used by an alleged infringer to describe the goods or services of another.
First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service, and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
Id at 308.
If we consider each of Complainant’s
trademarks in isolation, the first part of the test appears to be
satisfied. For example, LEBANON VALLEY
COLLEGE is perhaps the only practical way to unambiguously refer to
Complainant. However, concatenating
Complainant’s FLYING DUTCHMAN trademark to Complainant’s LEBANON VALLEY COLLEGE
trademark to form Respondent’s domain names runs directly a foul of the second
prong of the New Kids’ test. The
inclusion of Complainant’s FLYING DUTCHMAN mark is more than what is
“reasonably necessary to identify [Respondent’s] product or service.”
The Panel therefore concludes that Respondent
does not have rights or interest in the at‑issue domain names.
A panel may find that a Respondent acted in bad faith under the Policy for one or more of the Policy’s enumerated bad faith triggers setout in paragraph 4(b) or for other conduct indicative of the Respondent’s bad faith in registering and using at-issue domain names.
A domain name must be “registered and used” in bad faith. Even though there is no content addressed by the at-issue domain names there should be no denying that the at‑issue domain names are nevertheless “in use.” The at-issue domain names are admittedly crucial to the Respondent’s business plan and are “used” in that regard.
In making a determination under paragraph 4(a)(iii) of the Policy the Panel looks to the circumstances surrounding the registration and use of the at-issue domain names. First, the Respondent’s business plan calls for registration of tens of thousands of domain names including the two at-issue trademark incorporating domain names. It is no great leap to presume that thousands of other domain names in Respondent’s portfolio also consist of the trademarks of others. However, the fact that Respondent registered 25,000 plus domain names is not evidence, in and of itself, of Respondent’s bad faith. There is no per se prohibition against a single domain name registrant having multiple registrations, or even tens of thousands of registrations. The fact that the at-issue domain names were registered for the ultimate purpose of commercial exploitation, without more, does not suggest any impropriety. Indeed, even the resale of domain names is a permitted use, so long as the registrant has rights in the domain name. (Citations omitted).
Second, as mention above within the Panel’s discussion of the nominative fair use doctrine, the at-issue domain names are not composed of the minimum elements of Complainant’s trademark necessary to describe Respondent’s services. Each domain name uses two of Complainant’s trademarks, ostensibly to “describe” or identify Lebanon Valley College. As the Panel also noted above, the at-issue domain names do not describe the Respondent’s services so much as they describe an element of Respondent’s target market ---students of Complainant’s college.
Third, Respondent’s claim that it will assist
or promote the Complainant is not a defense since Complainant as holder of the
trademarks has, in the absence a fair use, the right to control the
circumstances under which its trademarks are used. Subjective benevolence on the part of the Respondent does not
mitigate the need for Respondent to obtain the trademark holder’s consent
before using its trademarks.
Fourth, Respondent makes the claim that it
will quiet potential confusion as to the source of its services by posting a disclaimer
on any future website referenced by the at-issue domain names. But if the Respondent really wanted to
disclaim affiliation and eliminate the potential source confusion between
itself and the Complainant’s school, it could have simply used domain names
that were not identical to Complainant’s trademarks.
Fifth, it does not seem reasonable that
Respondent’s sole motivation for registering the domain names was out of “necessity” to describe the
Complainant. For one thing, Respondent
could use third level names or aptly named subdirectories. That is, instead of using <www.lebanonvalleycollegeflyingdutchman.com>,
the Respondent could have used <lebanonvalleycollege.respondentname.com>
or <respondentname.com/lebanonvalleycollege>, where “respondentname” is
the Respondent’s business name or trademark.
Similarly, the Respondent could have inserted its own business name or
trademark into a domain name along with the school name or mascot, for instance
<lebanonvalleycollegerespondentname.com>.
Whether or not such variations would pass
muster under the Policy is not considered here. The Panel only aims to point out that there were less intrusive
domain naming alternatives available to Respondent which appear to be easy to
remember and descriptive of the Complainant’s school. The existence of online entities such as <classmates.com>
that offer services similar to those announced by Respondent without using
trademarked second level domain names, further suggests that that there is no
real “necessity” to use trademarked domain names in Respondent’s business. In light of the foregoing, Respondent’s
claimed reason for using school names in its domain names is at best
dubious.
Sixth, the likely motivation for Respondent
to register a very large array of domain names was the advantage that might be
gained by cross‑linking the domain names to increase search engine
visibility. Search engines use the
number of links to a website from other Internet domains as a metric of the
website’s popularity. The quality of
the link is also a factor. Links from
related websites are considered to be of higher quality and therefore weigh
more heavily than links from unrelated websites in determining a website’s
popularity factor. “Link popularity” is
considered in the ranking algorithms of virtually all search engines; the
greater the “link popularity,” the higher the rank. Although perhaps not practical, Respondent might create up to
25,000 links to each domain name.
It is not clear whether or not this kind of
artificial technical manipulation of search results, without more, constitutes
bad faith. Certainly using domain names
in this fashion is neither illegal, nor against any domain name registration
agreement per se. While
insufficient to demonstrate bad faith, it does indicate the importance of
search engine visibility to the Respondent’s business plan. It also further shows that there may be more
to Respondent’s motivation in registering the school domains than the “necessity”
discussed in its papers.
There are other reasons for registering the
at-issue domain names as well as the other school-name domain names. After an Internet user performs a search
engine query the search engine returns a ranked list of URLs relating to the
searched keyword. Common sense tells us
that the user will likely believe that entries in the returned list with
trademarks or trade names in the second-level domain name portion of the URL,
are likely to be authorized or sponsored by the named party. This seems especially true where, as here,
the name or trademark is not generic or descriptive.
For example, an Internet user who searches
using the keyword “software” and is presented with a URL reference containing
<microsoft.com> is likely to believe that any content linked to such URL
will be sponsored or affiliated with Microsoft Corporation. The searcher will be initially confused as
to the source or sponsor of the referenced content if Microsoft is not in fact
the content’s sponsor. On the other
hand, the non‑Microsoft sponsor will gain traffic from the user’s
confusion. This initial interest
confusion will exist regardless of what content the URL references.
Initial interest
confusion results when a consumer seeks a particular trademark holder's product
and instead is lured to the product of a competitor by the competitor's use of
the same or a similar mark. See Buckman, 183 A.L.R. Fed. 553. Even
though the consumer eventually may realize that the product is not the one
originally sought, he or she may stay with the competitor. Id. In that way, the
competitor has captured the trademark holder's potential visitors or
customers.
***
Initial interest confusion in the internet context derives from the unauthorized use of trademarks to divert internet traffic, thereby capitalizing on a trademark holder's goodwill.
Australian Gold,
Inc. v. Hatfield, 436 F.3d 1228, 1238-1239 (10th Cir. 2006)
As setout in Edina Realty, Inc. v. Themlsonline.com, at least seven circuits have adopted the initial interest confusion doctrine. See Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2nd Cir. 1987); SecuraComm. Consulting, Inc. v. SecuraCom Inc., 984 F. Supp. 286 (D.N.J. 1997, rev'd on other grounds, 166 F.3d 182 (3rd Cir. 1999), appeal after remand, 224 F.3d 273 (3rd Cir. 2000); Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 204 (5th Cir. 1998); Forum Corp. of N. Am. v. Forum, Ltd., 903 F.2d 434, 442, n.2 (7th Cir. 1990); Brookfield Communs., Inc. v. W Coast Entm't Corp., 174 F.3d 1036 (9th Cir. 1999); Australian Gold v. Haeld, 436 F.3d 1228, 1238-39 (10th Cir. 2006); HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 U.S.P.Q.2d 1819 (TTAB 1989), aff'd on other grounds, 902 F.2d 1546 (Fed. Cir. 1990). 2006 U.S. Dist. LEXIS 13775 (D. Minn. 2006).
In our case, once
Respondent’s business plans come to fruition an Internet user who after
querying a search engine encounters a URL reference containing one of the
at-issue domain names, will be initially confused into thinking that by
clicking that reference he or she will be directed to content sponsored by the
Complainant. However, the user will
instead be direct to a website controlled by the Respondent.
Respondent’s business strategy admittedly
centers on its very large array of domain names where each domain name is
composed of the name(s) and/or trademark(s) of a school. Respondent appears to be technologically
sophisticated and appears to have registered the large number of domains
primarily to increase its search engine presence. It would be surprising if Respondent were not aware that its use
of domain names containing trademarks would result in initial confusion to
Internet users in the manner discussed above and thereby increase traffic to
its websites.
The Panel concludes that the Respondent
registered and uses the at‑issue domain names with the knowledge or
belief that once Respondent’s business plans becomes fully operational, certain
Internet users will be initially confused into visiting its websites. By using the at‑issue domain names in
conjunction with its planned business and with knowledge of the consequences
setout above, Respondent appears to be intentionally creating a mechanism to
attract Internet users to its websites, for commercial gain, by exploiting such
users’ initial interest confusion as to the source, sponsorship, affiliation,
or endorsement of the services Respondent plans to offer. This type of conduct is substantially
addressed in paragraph 4(b)(iv) of the Policy and is evidence of
registration and use of a domain name in bad faith.
Therefore, the Panel finds that Respondent
has registered and is using the at-issue domain names in bad faith.
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 <lebanonvalleycollegeflyingdutchmen.com>
and <lebanonvalleycollegeflyingdutchmen.net> domain names be TRANSFERRED
from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 3, 2006
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