University of Central Florida v. Knight
Publishing Inc.
Claim Number: FA0505000485962
PARTIES
Complainant
is University of Central Florida (“Complainant”),
represented by Youndy C. Cook, 4000 Central Florida Blvd., Millican Hall
Suite 360, Orlando, FL 32816-0015.
Respondent is Knight Publishing
Inc. (“Respondent”), 3361 Rouse Rd. #200, Orlando, FL 32817.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <ucfnews.com>,
<ucffuture.com> and <ucfindie.com>, registered with Dotster.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Mr.
Hugues G. Richard, Mr. Houston Putnam Lowry, Chartered Arbitrator, and Mr. Karl
V. Fink as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 31, 2005.
On
May 31, 2005, Dotster confirmed by e-mail to the National Arbitration Forum
that the domain names <ucfnews.com>,
<ucffuture.com> and <ucfindie.com> are registered
with Dotster and that the Respondent is the current registrant of the
name. Dotster has verified that
Respondent is bound by the Dotster 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
June 3, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 23,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@ucfnews.com, postmaster@ucffuture.com and
postmaster@ucfindie.com by e-mail.
A
timely Response was received and determined to be complete on June 23, 2005.
On
June 27, 2005, Complainant filed additional submissions in due time, complying
with Supplemental Rule 7.
On June 29, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Mr. Hugues G. Richard, Mr. Houston Putnam Lowry, Chartered
Arbitrator, and Mr. Karl V. Fink as Panelists.
On
July 4, 2005, Respondent filed additional submissions in a timely manner, complying
with Supplemental Rule 7.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
submits as follows:
1. Identical and/or Confusingly Similar:
Complainant
asserts it has common law rights in the UCF and UNIVERSITY OF CENTRAL FLORIDA
marks as well as statutory rights in both marks through registration of the
marks with the U.S. Patent and Trademark Office.
The
<ucfnews.com>, <ucffuture.com> and <ucfindie.com>
domain names are confusingly
similar to the UCF trademark held by Complainant, because each disputed domain
name incorporates Complainant’s UCF trademark.
For each of the disputed domain names, Respondent has simply added one
generic word to Complainant’s mark and varied the generic top-level
domain. Neither the addition of the
generic word “news,” “future” or “indie” nor the attachment of a different gTLD
to Complainant’s mark is sufficient to distinguish Respondent’s domain names –
nor do they avoid the confusingly similar element.
Complainant
has widely become known to the public in general as UCF and UNIVERSITY OF
CENTRAL FLORIDA and has continuously used both marks to identify a variety of
educational and entertainment services provided it.
2. Rights or Legitimate Interests:
Respondent is commonly known by the name of its publication,
the “Central Florida Future” and not as “ucfnews” or “ucffuture” or
“ucfindie.” Respondent does not provide
independent content at the <ucffuture.com> and at the <ucfindie.com>
domain names since both of them resolve to the <ucfnews.com>
website. Respondent cannot argue that
it is commonly known by domain names that it effectively holds passive.
Respondent’s
use of the disputed domain names is for commercial purposes. Respondent publishes a newspaper periodical
which solicits and accepts paid advertising.
Thus,
Respondent does not have legitimate rights in the domain names in question.
3. Registration
and Use in Bad Faith:
Respondent’s knowledge of Complainant’s
mark and its website’s failure to disclaim a relationship with Complainant in
an effective fashion are evidence of bad faith registration and use.
Moreover,
Respondent registered the disputed domain names and incorporated Complainant’s
mark with the intent to commercially benefit (i.e, paid advertising) from the
goodwill associated with Complainant’s mark.
B. Respondent
Respondent does
not claim to have any interest specifically in regards to the disputed domain,
<ucfindie.com>. At
no point has the <ucfindie.com> domain name been published,
marketed, or used by Respondent for any website, e-mail, or other purpose and
Respondent has no plans to use the domain name for any purpose nor renew its
registration expiring January 7, 2006. For the remaining <ucffuture.com>
and <ucfnews.com> domain names, Respondent submits as follows:
1. Identical and /or Confusingly Similar:
Complainant does own a trademark
registration for the UCF mark and has exclusive rights within the scope of that
trademark. However, ‘news’ or
‘newspapers’ are not included in the scope of any issued registrations or
pending trademark applications of Complainant.
Respondent has continuously published on
campus since the University first held classes in 1968, establishing the
newspaper over a period of thirty-seven years as an accepted source of UCF news
and information. As such, Respondent
has obtained common law rights in the use of UCF mark with respect to ‘news’ or
‘newspapers.’ Therefore, the disputed
domain names are not confusingly similar to Complainant’s trademark.
2. Rights or Legitimate Interests:
Respondent argues that Complainant cannot help it
build a reputation under a domain name over a period of seven years, then claim
Respondent has no rights to those domain names and demand they be turned over
to Complainant. Supplementing Respondent’s argument that it should share in a
trademark for UCF with respect to ‘news’ or ‘newspapers,’ is the fact that by
aiding Respondent in publicizing and marketing the disputed domain names for a
number of years, Complainant has supported and encouraged Respondent’s use of
the contested domain names and the underlying trademarks.
Furthermore, Respondent is using the disputed
domains to disseminate information on the University of Central Florida, which
is a legitimate non-commercial use.
3. Registration
and Use in Bad Faith:
Even
if Respondent had knowledge of Complainant’s trademark, the fact that the
latter has helped publicize and market both Respondent’s domain names is
indicative of Respondent’s absence of bad faith.
Furthermore,
Respondent has attempted to contact Complainant in order to listen to the
latter’s suggestions pertaining to
style changes or specific wording on the website that could serve to reduce any
confusion Complainant believes may exist. Receiving no input from Complainant,
Respondent has extended its disclaimer. Such attitude cannot constitute bad
faith.
C. Additional Submissions
1. Complainant
<ucffuture.com>
is not in active use and therefore cannot serve to establish legitimate
rights.
Complainant
has not supported Respondent in its use of disputed domain names.
2. Respondent
Respondent
used <ucffuture.com> as its original primary web domain before
using <ucfnews.com>, therefore it has rights and legitimate
interest in that disputed domain name.
Since
Complainant had no objection to the
use of the disputed domains that it listed without comment, it did
support Respondent in its use of the disputed domain names.
FINDINGS
Complainant
contends that it has used the UNIVERSITY OF CENTRAL FLORIDA trademark or its
abbreviation UCF since at least as early as 1978. Respondent’s <ucfnews.com>
and <ucffuture.com> domain names were registered on October 2,
2002 and February 23, 1998, respectively.
It is clear to both parties that Respondent is not affiliated with
Complainant. However, the problem comes
from the fact that they were until 1993.
Respondent previously known as The FuTUre, before Complainant changed
its name from Florida Technological University to the University of Central
Florida in 1978, has continuously published on campus since the University
first held classes in 1968, establishing the newspaper over a period of
thirty-seven years as an accepted source of UCF news and information for
University students, staff, and alumni.
Respondent originated as the official
student news publication of UCF until Complainant itself split off the
newspaper and established it as an independent entity in 1993.
Respondent used the <ucffuture.com>
domain name as its primary web site since January 1998 but ceased to employ it
in October 2002 due to misdirected e-mail communications and lost web traffic.
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 on a balance of probabilities 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.
Failure
to prove one of the aforementioned criteria for the disputed domain name
results in the dismissal of the complaint.
Complainant has demonstrated that it has
common law and/or statutory rights in the UCF and UNIVERSITY OF CENTRAL FLORIDA
trademarks since it has used them since 1978. Furthermore, registration and
application for registration of the marks with the U.S. Patent and Trademark
Office clearly establish Complainant’s rights in the trademarks.
The Panel finds that all three of the
Respondent’s domain names are confusingly similar to the Complainant’s UCF
mark. The addition of generic words
such as “news”, “future” and “indie” to Complainant’s UCF mark is not
sufficient to negate a finding of confusing similarity between the domain names
and the mark. In Pfizer, Inc. v. Suger, WIPO Case No. D2002-0187,
the Panel found that because the subject domain name incorporates the VIAGRA
mark in its entirety, and deviates only by the addition of the word “bomb,” the
domain name is rendered confusingly similar to the complainant’s mark.
In
addition to adding generic words to the UCF mark, Respondent also added the
generic top-level domain “.com” to the mark.
Again, this addition is insufficient to conclude that there is no
presence of confusing similarity. In Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb.
Forum Dec. 6, 2003), the Panel decided, “It has been established that the
addition of a generic top-level domain is irrelevant when considering whether a
domain name is identical or confusingly similar under the Policy.”
For
these reasons, the Panel finds that Complainant has met the first criterion as
per paragraph 4(a)(i) of the Policy in regards to <ucfnews.com>,
<ucffuture.com> and <ucfindie.com>.
Complainant
contends Respondent does not provide independent content at the <ucffuture.com>
site since it resolves to the disputed <ucfnews.com> site and
therefore, Respondent cannot
legitimately claim that its business operations would be hurt by being forced
to give up a domain name that it does not actively use. The Panel finds that Respondent does have
rights in the <ucffuture.com> domain name even if the latter
resolves to <ucfnews.com>.
Indeed, Respondent was once called “The FuTUre” and is now called
“Central Florida Future;” hence, the disputed domain name, <ucffuture.com>,
is related to Respondent’s historic evolution and appellation.
Concerning the disputed domain name, <ucfnews.com>,
Respondent has demonstrated it is using it in connection with its publication
entitled “Central Florida Future” which has been published since 1968. Respondent’s main objective is to keep the
university community informed, such purpose constituting a bona fide
offering of goods and services. See Modern
Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding
that the Respondent’s operation of a bona fide business of online prop
rentals for over two years was evidence that the respondent had rights or
legitimate interests in the disputed domain name).
For
these reasons, the Panel finds that Complainant has not met the second
criterion as per paragraph 4(a)(ii) of the Policy; i.e. absence of rights or
legitimate interests of Respondent in regards to <ucfnews.com> and
<ucffuture.com>.
Respondent has admitted it does not have
any specific interest concerning the <ucfindie.com> domain name,
therefore the Panel finds that Complainant has met the second criterion as per
paragraph 4(a)(ii) of the Policy in regards to that domain name.
The Panel’s finding that Complainant has
not proved the matters required to be established under Paragraph 4(a)(ii) of
the Policy in regards to the <ucfnews.com> and <ucffuture.com>
domain names renders it unnecessary to
consider Paragraph 4(a)(iii) of the Policy; the three enumerated criteria being
cumulative.
Respondent has not contested Complainant’s allegation
of registration and use in bad faith in regards to
the <ucfindie.com> domain name. Therefore, Complainant has
proved the third criterion pertaining to the registration and use in bad faith
of above-mentioned domain name as required by section 4(a)(iii) of the Policy.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED for the <ucfindie.com>
domain name.
Accordingly, it is Ordered that the <ucfindie.com>
domain name be TRANSFERRED from Respondent to Complainant.
Not
having established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED for the <ucfnews.com>
and <ucffuture.com> domain names.
Accordingly, it is Ordered that the <ucfnews.com>
and <ucffuture.com> domain names should remain registered in the name of
Respondent.
Mr. Hugues G. Richard, Presiding Panelist
Mr. Houston Putnam Lowry, Chartered Arbitrator, and Mr. Karl V.
Fink, Panelists
Dated: July 13, 2005
National
Arbitration Forum
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