St. Lawrence University v. Nextnet Tech c/o Domain Dept
Claim Number: FA0701000881234
Complainant is St. Lawrence University (“Complainant”), represented by George
R. McGuire, of Bond, Schoeneck, & King PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stlawu.com>, registered with eNom.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On January 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 29, 2007, 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
The National Arbitration Forum received a timely Additional Submission from Complainant on February 2, 2007, and determined it to be complete pursuant to Supplemental Rule 7. The National Arbitration Forum received a timely Additional Submission from Respondent on February 5, 2007.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it owns common law rights in “ST. LAWRENCE UNIVERSITY” and “STLAWU,” and that Respondent’s domain name <stlawu.com > is confusingly similar to Complainant’s trademarks; that Respondent does not have any rights or legitimate interest with respect to the domain name; and that the domain name has been registered and used in bad faith.
Respondent contends that Respondent has no legal
rights in “STLAWU,” and that “STLAWU” is not confusingly similar to “ST.
LAWRENCE UNIVERSITY.” The Respondent
alleges that it registered <stlawu.com> as
an abbreviation of Stratovolcano Lawu, a volcano in
C. Additional Submissions
Complainant’s Additional Submission states that Complainant uses the STLAWU.EDU mark on all of its print promotional materials; that the <stlawu.com> website misdirects visitors to a list of third-party links, including competitor educational institutions and services; and that Respondent’s use of the domain name for a directory of commercial internet links does not constitute bona fide use. The Additional Submission also notes that Respondent’s site has never contained any content related to Stratovolcano Lawu or to volcanoes in general.
Respondent’s Additional Submission includes information about the
Stratovolcano Lawu volcano, a list of abbreviations, and information about
Complainant has used the mark ST. LAWRENCE UNIVERSITY since 1856 for educational, research and athletic services and related products. Complainant began to use <stlawu.edu> in association with its website in 1994. Complainant registered this domain name with the .edu top level domain in view of Complainant’s status as an educational institution. Complainant’s promotional materials, including catalogs, posters, booklets, etc. feature the website address <stlawu.edu>.
The <stlawu.com> site is “parked” at DomainSponsor.com, and the website lists many “pay-per-click” links which resolve to third party websites, including some sites for third party educational institutions and services. Respondent has authority to change the website content, and Respondent directed that changes be made to the website’s content and keywords after receiving the Complaint in this proceeding.
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 owns common law rights in its ST. LAWRENCE UNIVERSITY mark in view of its long-standing and prominent use of this mark. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant argues that the term STLAWU.EDU also deserves common law trademark status, because its <stlawu.edu> website has been widely used and recognized for thirteen years, and because STLAWU.EDU is consistently featured on Complainant’s promotional materials. This Panel agrees with this argument, and this Panel concludes that <stlawu.com> is confusingly similar to the ST. LAWRENCE UNIVERSITY and STLAWU.EDU marks. The domain name <stlawu.com> incorporates the STLAWU mark in its entirety and abbreviates the ST. LAWRENCE UNIVERSITY mark. The domain name creates the same commercial impression as Complainant’s marks, and the domain name relates to the same type of services, i.e., the promotion of educational services and institutions. The likelihood of confusion is exacerbated by the content of Respondent’s website in that certain sponsored links direct consumers to competitor educational institutions and services. Respondent’s website has consistently contained content related to higher education, and has used (as noted in the Complaint) St. Lawrence’s ST. LAWRENCE UNIVERSITY mark and “University” as a sponsored link to misdirect St. Lawrence consumers to competitor educational services such as <walden.edu>, <college.info.org>, <educationprovider.com>, <courseadviser.com>, among others.
failed to sufficiently distinguish the disputed domain name from Complainant’s
marks. As a result, the disputed domain
name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Microsoft
Corp. v. Montrose Corp., D2000-1568 (WIPO
Respondent has registered the domain name under the name “Nextnet Tech c/o Domain Dept,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <stlawu.com> domain name. This Panel concludes that Respondent has not established rights or legitimate interests in the <stlawu.com> domain name pursuant to Policy ¶ 4(c)(ii). See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometer.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent claims that the <stlawu.com> domain name is an
abbreviation for a volcano in
The <stlawu.com> domain name resolves to a commercial web directory that displays a series of links to other educational institutions as well as education-related goods and services. Respondent is commercially benefiting from redirecting Internet users who reach Respondent’s website to third-party websites, by earning “click-through” fees. This use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The fact that DomainSponsor.com authored the content of the <stlawu.com> website does not absolve
Respondent from responsibility. The
Panel in Lo Monaco Hogar, S.L.,
D2005-0896 (WIPO Dec. 2, 2005), held
that “‘[t]he fact that a third party is effectively operating the website on
behalf of Respondent, and making payments to the Respondent on behalf of that
use, does not insulate Respondent from the conduct of its authorized
agent.’ The ‘using’ of the domain name
to divert users is sufficient evidence of the registration and use of
the domain name in bad faith….”
This Panel also concludes that Respondent is using the disputed domain name in bad faith by diverting Internet users to a pay-per-click site displaying links to various competing websites. Respondent receives “click-through” fees for each consumer it diverts to third-party websites and Respondent is taking advantage of the confusing similarity between the <stlawu.com> domain name and Complainant’s ST. LAWRENCE UNIVERSITY and STLAWU.EDU marks in order to profit from the goodwill associated with the marks in violation of Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stlawu.com> domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
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