The
Claim Number: FA0701000893000
PARTIES
Complainant is The Vanderbilt University (“Complainant”), represented by Natalya
L. Rose, of Bone McAllester Norton PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vanderbilt.mobi>, registered with Go Daddy
Software.
PANEL
The undersigned certifies that he has acted independently and
impartially and, to the best of his knowledge, has no known conflict in serving
as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.)
as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 19, 2007; the
National Arbitration Forum received a hard copy of the Complaint on January 19, 2007.
On January 19, 2007, Go Daddy Software confirmed by e-mail to the
National Arbitration Forum that the <vanderbilt.mobi> domain name is
registered with Go Daddy Software and
that the Respondent is the current registrant of the name. Go Daddy
Software has verified that Respondent is bound by the Go Daddy Software 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 January 23, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 12, 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
postmaster@vanderbilt.mobi by e-mail.
A timely Response was received and determined to be complete on February 2, 2007.
On February 9, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed the Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant, The Vanderbilt University, contends that the <vanderbilt.mobi> domain name is identical to Complainant’s VANDERBILT mark, Respondent does not have any rights or legitimate interests in the domain name and Respondent registered and used the domain name in bad faith.
B. Respondent, U Incorporated, contends it has legitimate rights
and interests in the domain name and
that the domain name was not registered nor used in bad faith. Respondent
alleges that it registered the <vanderbilt.mobi>
domain name in connection with an upcoming book by author Bryce Holt in his
series of spy thrillers that involve Complainant’s history and locale as a part
of the story.
Respondent claims that it did not register the disputed domain name intending to sell it to Complainant but only responded to Complainant’s offer. After being specifically asked by Complainant for a price, Respondent informed Complainant that it was willing to sell the domain for $6,850. This amount was determined as being a fair and reasonable price to reimburse Respondent for time, research, domain registration, travel costs, and loss of marketing capability. Respondent also offered Complainant a non-monetary option of having professors at Complainant’s university read Bryce Holt’s book and provide Respondent with a review and feedback.
Respondent
further claims that it has not prevented Complainant from reflecting its
mark in the domain name, disrupted Complainant’s business, or attempted to
divert Internet users to the domain name for its own commercial gain. Respondent
insists that it has, at all times, used the <vanderbilt.mobi>
domain name in good faith.
FINDINGS
Complainant is the owner of numerous
registrations for the marks consisting of, or comprising, its mark VANDERBILT
with the U.S. Patent and Trademark Office.
Complainant has been using the service mark VANDERBILT to identify and
distinguish its educational services since 1872, its athletic and casual wear
since 1909, and its healthcare, hospital, medical and medical research services
1979.
Respondent registered the <vanderbilt.mobi> domain name on September 29, 2006. After
Complainant contacted Respondent regarding its registration of the <vanderbilt.mobi>
domain name, Respondent responded that
it intended to use the disputed domain name in connection with an upcoming book. Respondent indicated that it would be willing
to transfer the disputed domain name to Complainant for the sum of $6,850 or
for writing and editing
advice from professors at Complainant’s university.
Respondent presently uses the disputed domain name to
divert Internet users to the web page titled <bryceholt.com> and to the
web site that promotes “psychological thrillers” by Bryce Holt.
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 has numerous trademark
registrations for the VANDERBILT mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,746,009 issued August 5, 2003;
Reg. No. 2,755,141 issued August 26, 2003; Reg. No. 2,778,959 issued November
4, 2003). These trademark registrations
sufficiently demonstrate Complainant’s rights in the mark pursuant to Policy ¶
4(a)(i). See Miller
Brewing
The <vanderbilt.mobi> domain name is identical to Complainant’s VANDERBILT mark pursuant to Policy ¶ 4(a)(i), as the domain name wholly incorporates the registered mark and does not add anything except the generic top-level domain “.mobi,” which panels typically consider irrelevant to a Policy ¶ 4(a)(i) analysis. See W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and the
burden then shifts to Respondent to show it does have rights or legitimate
interests. See Document Techs., Inc.
v. Int’l Electronic Communc’s Inc., D2000-0270 (WIPO June 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”); see
also Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
Respondent is not commonly known by the <vanderbilt.mobi> domain name, because the WHOIS information lists “U Incorporated” as the registrant of the domain name, and there is no other evidence in the record indicating that Respondent is commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to register or use a domain name incorporating Complainant’s VANDERBILT mark. Accordingly, Respondent does not have rights or legitimate interests in the domain name according to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is using the <vanderbilt.mobi>
domain name to redirect Internet users to a website at the
<bryceholt.com> domain name, which promotes books written by Bryce Holt,
including a forthcoming spy thriller that Respondent says will use
Complainant’s history and locale as a part of the story. Respondent’s use of the disputed domain name
does not represent a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb.
Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s
LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website
for commercial gain does not constitute either a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet
users seeking Complainant’s website to a website of Respondent and for
Respondent’s benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
Complainant also alleges that Respondent has
offered to sell the disputed domain name registration to Complainant for
$6,850, which Complainant claims is far in excess of Respondent’s out-of-pocket
costs. Respondent reiterates this price
in its Response, and also offers to transfer the disputed domain name in
exchange for writing and editing advice from several professors at
Complainant’s university. By offering to
sell the disputed domain name registration for monetary or non-monetary
compensation, Respondent does not have any rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun
Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under
the circumstances, the respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or
legitimate interests where the respondent registered the domain name with the
intention of selling its rights).
The Panel finds that
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that
Respondent has offered to sell it the <vanderbilt.mobi>
domain name for $6,850. In its Response,
Respondent reiterates its offer and also requests that several professors at
Complainant’s university review its work.
These requests for monetary and non-monetary compensation demonstrate
bad faith registration and use pursuant to Policy ¶ 4(b)(i). See
Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391
(Nat. Arb. Forum Sept. 11, 2000) (finding that the respondent demonstrated bad
faith by registering the domain name with the intent to transfer it to the
complainant for $3,000, an amount in excess of its out of pocket costs); see also Metallica v. Schnieder, FA 95636 (Nat.
Arb. Forum Oct. 18, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(i) where
the respondent offered to transfer the disputed domain name registration in
return for non monetary consideration such as a face to face meeting with the
complainant, phone calls from the complainant to two of the respondent’s
friends, and an interview).
By
diverting Internet users to its own website and promoting books unrelated to
Complainant’s university under the VANDERBILT mark, Respondent is taking
advantage of the confusing similarity between the <vanderbilt.mobi> domain name and Complainant’s VANDERBILT in
order to profit from the goodwill associated with the mark, and that such
registration and use constitutes bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb.
Forum July 21, 2006) (finding that the respondent took advantage of the
confusing similarity between the <theotheraol.com> and
<theotheraol.net> domain names and the complainant’s AOL mark, which
indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug.
29, 2000) (finding bad faith where the domain name in question is obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain).
The Panel finds that Complainant
has satisfied 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 <vanderbilt.mobi> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Panelist
Dated: February 19, 2007
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National Arbitration Forum