Regents
of the University of Michigan v. Warpsmith
Claim Number: FA0511000596354
Complainant is Regents of the University of Michigan (“Complainant”), represented by Paul R. Fransway of Pear Sperling Eggan & Daniels P.C., 24 Frank Lloyd Wright Drive, Ann Arbor, MI, 48105. Respondent is Warpsmith (“Respondent”), 514-135 Daniels St., Raleigh, NC, 27605.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <michiganwolverines.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 14, 2005; the National Arbitration Forum received a hard copy of the Complaint November 17, 2005.
On November 15, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <michiganwolverines.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 12, 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@michiganwolverines.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 15, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <michiganwolverines.com>, is confusingly similar to Complainant’s MICHIGAN and WOLVERINES marks.
2. Respondent has no rights to or legitimate interests in the <michiganwolverines.com> domain name.
3. Respondent registered and used the <michiganwolverines.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Regents of the University of Michigan, is the
owner of the MICHIGAN (Reg. No. 1,310,132 issued December 18, 1984) and
WOLVERINES (Reg. No. 2,357,021 issued June 13, 2000) marks, which it has
registered with the United States Patent and Trademark Office (“USPTO”).
The marks are used by the University of Michigan, which is a
constitutional corporation and state university with its main campus in Ann
Arbor, Michigan. The University has
been in operation since 1817, and is one of the largest and most well-known
universities in the United States with the largest alumni population in the
country. The University’s sports teams
have been known as the WOLVERINES since at least 1879.
Respondent registered the <michiganwolverines.com> domain name on October 2, 1997. After registering the disputed domain name, Respondent contracted with the owner of the website at the <footballfanatics.com> domain name to receive commission on sales from Internet users diverted to the website by Respondent. For a period of time after registering the domain name, it led to a website that offers collegiate apparel, including products displaying Complainant’s registered marks. Through this contract, Respondent received approximately 10% of each sale made to a user redirected by Respondent.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 established by extrinsic proof in this proceeding that it has rights and legitimate interests in the marks that are contained within the disputed domain name. The Panel finds that Complainant’s registrations of its MICHIGAN and WOLVERINES marks with the USPTO are sufficient to establish Complainant’s rights in the marks in connection with Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <michiganwolverines.com> domain name incorporates Complainant’s MICHIGAN and WOLVERINES marks, adding only the generic top-level domain (“gTLD”) “.com.” Combining Complainant’s marks creates a domain name that is confusingly similar to each mark, and the addition of the gTLD is not enough to overcome this finding under Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established its rights and legitimate interests in the marks contained within the disputed domain name. Complainant has the initial burden under Policy ¶ 4(a)(ii) to prove its rights and to show that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie showing, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant presented a prima facie showing. The Panel now considers whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <michiganwolverines.com> domain name. Furthermore, Complainant contends that it has not authorized or licensed Respondent to register or use domain names that incorporate Complainant’s MICHIGAN and WOLVERINES marks. The Panel determines that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant argues that Respondent is using the <michiganwolverines.com> domain name to redirect Internet users who would be seeking Complainant’s products and services to a third-party website at <football fanatics.com>. Complainant contends that, by contract with the owners of that website, Respondent earned a portion of each sale of products bearing Complainant’s protected marks to Internet users diverted through Respondent’s domain name. The Panel determines that Respondent’s use of Complainant’s MICHIGAN and WOLVERINES marks to profit from the goodwill associated with the marks through a third-party website does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). Furthermore, such opportunistic use of a confusingly similar domain name also is not in association with a legitimate noncommercial of fair use of the domain name under Policy ¶ 4(c)(iii). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith. Respondent’s use of the <michiganwolverines.com> domain name to divert Internet users searching under Complainant’s MICHIGAN and WOLVERINES marks to a third party’s commercial website offering collegiate apparel, including items bearing Complainant’s marks, is evidence that Respondent was attempting to confuse Internet users as to Complainant’s association with the resulting website. Furthermore, Respondent earns commissions from orders placed by these diverted users, which is indicative of Respondent’s purpose in diverting Internet users for profit. The Panel finds that these circumstances are evidence of bad faith registration and use in association with Policy ¶ 4(b)(iv). See 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); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <michiganwolverines.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 29, 2005.
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