The Pennsylvania State University v. MARK LAUER / KEYSTONE ALTERNATIVES
Claim Number: FA1906001847529
Complainant is The Pennsylvania State University (“Complainant”), represented by Lucy J. Wheatley of McGuireWoods LLP, Virginia, USA. Respondent is MARK LAUER / KEYSTONE ALTERNATIVES (“Respondent”), represented by Steven L. Rinehart, Registered Patent Attorney, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gopsurv.com>, registered with GoDaddy.com, LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 12, 2019; the Forum received payment on June 12, 2019.
On June 13, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gopsurv.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gopsurv.com. Also on June 17, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 12, 2019.
On July 17, 2019, an additional submission on behalf of Complainant, together with a supporting Declaration was received by the Forum and was timely. It was considered by the Panel in the course of making its decision.
On July 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
On July 23, 2019, an additional submission on behalf of Respondent, together with an Annexure was received by the Forum and was timely. It was considered by the Panel in the course of making its decision.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is the flagship university for the Commonwealth of Pennsylvania, founded in 1855. Complainant has rights in the PSU mark through its registration of the mark with the multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,276,801, registered May 8, 1984). See Compl. Annex B. Respondent’s <gopsurv.com> domain name is identical or confusingly similar to Complainant’s mark as it completely subsumes the PSU mark and incorporates the generic terms “go” and “rv” as well as the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <gopsurv.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert internet users to Respondent’s own commercial website, displaying services related to Complainant. The services purportedly offered by Respondent falsely suggest it is affiliated with, sponsored by, or endorsed by Complainant. Respondent’s use of a disclaimer on the disputed domain name does not mitigate a finding that it lacks rights or legitimate interest in the disputed domain name.
Respondent registered and uses the <gopsurv.com> domain name in bad faith. Respondent incorporates Complainant’s mark and related content to give the false impression of an affiliation between Respondent and Complainant for its own commercial gain. Based on the fame of the PSU mark and the content displayed on the resolving webpage which relates to Complainant’s business, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration. Respondent’s use of a disclaimer on the resolving webpage does not mitigate a finding of bad faith.
B. Respondent
Respondent made the following contentions.
Respondent uses the <gopsurv.com> domain name to offer recreational vehicle rentals and camping information for graduates and fans of Pennsylvania State University (Complainant).
The <gopsurv.com> domain name is not confusingly similar to Complainant’s mark as Complainant’s mark is merely a three-letter expression. Previous Panels have been loath to recognize trademark rights in three-letter expressions.
Respondent has rights or legitimate interest in the <gopsurv.com> domain name because the disputed domain name is a noncommercial fan site with a limited and permissible degree of incidental commercial activity. Respondent pays tribute to Complainant but does not imitate it. Respondent also adds the terms “go” and “rv,” which are descriptive of the services which Respondent offers.
Complainant has rights or legitimate interest in the disputed domain name and registered the disputed domain name in good faith as Complainant has expressly and implicitly granted Respondent license to use the disputed domain name. Respondent has official sponsorship and marketing agreements with Complainant and an implied license based on Respondent’s public recognition and advertisement of Respondent’s services. Respondent also has an implied license to use the mark under the doctrine of first sale where Complainant’s product is diplomas and Respondent is identifying themselves as alumni of Complainant’s institution. Respondent makes fair use of the disputed domain name.
Respondent registered the <gopsurv.com> domain name on April 17, 2010. Complainant filed its Complaint on July 12, 2019, more than 9 years later and at least 7 years after it became aware of Respondent‘s use of the domain name. The proceeding is therefore barred by laches.
ADDITIONAL SUBMISSIONS
A. Complainant
Complainant submits that:
1. The Respondent’s contract of March 22, 2013 was with Penn State Sports Properties LLC (“PSSP”) and not with The Pennsylvania State University (“PSU”).
2. PSSP is not an affiliate or agent of PSU.
3. There is no evidence that the Complainant knew about the Respondent or granted Respondent any rights.
4. None of the Annexes submitted by the Respondent supports Respondent’s claim of authorization or awareness by the Complainant.
5. PSSP is not the trademark owner of the PSU marks and has no authority to grant a party permission to use a domain name containing the PSU Family of Marks. This is supported by the annexed Declaration.
6. The Complainant submits that the documents submitted by the Respondent do not show that it has a right or legitimate interest or that it registered the domain name in good faith.
7. There is no evidence that Respondent’s use of the domain name was authorized by the Complainant.
8. The domain name did not resolve to a tribute or fan site as it is a commercial site.
9. There is no evidence to support the Respondent’s laches argument.
10. The Declaration annexed to the submission is by the Associate Athletics Director for Business Relations for the Complainant. It states that PSSP is a subsidiary of Learfield Communications, Inc. (“Learfield”) which has a written agreement among the Complainant, Learfield and PSSP. Learfield and PSSP are unrelated to the Complainant. PSSP has no right to grant any third party a license to use the Complainant’s trademarks in domain names and PSSP does not have the right or ability to grant any third party a license to use the Complainant’s trademarks in commerce in connection with the sale of goods or services without the express approval of the Complainant. There is no agreement between PSSP and the Respondent other than the 2013-2014 agreement provided by the Respondent in its Response. The Complainant has never given the Respondent any permission to use the Complainant’s trademarks in the domain name <gopsurv.com> or in connection with the Respondent’s regular business activities.
B. Respondent
1. There is no basis for the Complainant to argue that PSU has not express, apparent, actual nor implied agency to act for PSU when PSSP has, in fact, acted for PSU by authorizing Respondent and others to do business on PSU property, to advertise in printed publications of PSU, to give donations to PSU, and by requiring that PSSP obligate Respondent and others to
remit insurance information directly to PSU.
2. PSSP authorized the use of PSU’s trademark which gave rise to the Respondent’s right or legitimate interest in the domain name.
A letter from 2017 from the Associate Athletics Director for Business Relations of the Complainant to the Respondent (produced) contradicts his declaration annexed to the Complainant’s supplementary submission that “I am not aware of other contracts between Penn State Sports Properties LLC and Respondent.”
3. Respondent has been using the disputed domain name on PSU property with permission for nearly ten years. Attached are additional photographs of Respondent’s displays on Complainant property at Complainant athletic events to support this submission. The Complainant must have known and approved of this use.
1. Complainant is the flagship public university of the Commonwealth of Pennsylvania, having been chartered in 1855.
2. Respondent Mark Lauer is the Registrant Name of the disputed domain name and the Respondent Keystone Alternatives is the Registrant Organization of the disputed domain name, hereinafter referred to collectively as “Respondent”.
3. Complainant is the registered owner of the PSU mark, having registered the mark with the United States Patent and Trademark Office( “USPTO”).( Reg. No. 1276801, registered May 8, 1984).
4. Complainant is also the registered owner of one other PSU mark registered with USPTO and two international registrations for PSU, one registered in Canada and one registered in South Africa.
5. Respondent registered the <gopsurv.com> domain name on April 17, 2010.
6. Respondent has used the domain name for offering the rental of recreational vehicles known as RVs and related goods and services.
7. The evidence has established that the disputed domain name is confusingly similar to the PSU mark.
8. The evidence has established that Respondent has a right and legitimate interest in the disputed domain name.
9. The evidence has established that Respondent has not registered and used the disputed domain name in bad faith.
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."
Paragraph 4(a) of the Policy requires that 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 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.
In the course of reaching its decision, the Panel considered the Complaint and its Annexes, the Response and its Annexes and the additional submissions on behalf of Complainant and Respondent and their Annexes and took them into account.
The first question that arises is whether Complainant has a trade or service mark on which it can rely in the present proceeding. Complainant submits that it has trademark rights in the PSU mark through its registration of the mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,276,801, registered May 8, 1984). See Compl. Annex B. Complainant has established those registrations by evidence that the Panel accepts. Registration of a trademark with multiple trademark agencies is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Therefore, the Panel finds Complainant has established its rights in the PSU mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to the PSU trademark. Clearly, they are not identical, as the domain name contains additional terms that are not present in the trademark. However, the Complainant argues alternatively that the domain name is confusingly similar to the PSU mark as it completely subsumes the mark and incorporates the generic terms “go”, which has its ordinary meaning, and “rv” which would be taken to mean “recreational vehicle (especially a motorized caravan)” (“RV vehicles”) as well as the “.com” gTLD. The addition of generic terms and a gTLD to a complainant’s mark generally supports a finding that the domain name is confusingly similar to the mark, within the meaning of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Thus, the argument goes that the domain name would probably be taken to mean going to or supporting PSU which, in the community that would be likely to see the domain name, would be taken to mean The Pennsylvania State University (“PSU” or “Penn State”), and using recreational vehicles in association with that visit. Some members of the public would not read the domain name in that way, as they would not understand the significance of the letters PSU, but a sufficiently significant section of the public, interested in Penn State and using recreational vehicles, particularly at sports events, would see it in the way just described and would understand perfectly well what it meant.
Indeed, although the general practice in making the comparison now under consideration is not to have regard to any material other than the domain name and the trademark, the record will show in due course that when the Respondent came to present the domain name in its website and social media, it separated the constituent letters to form three terms, “go”, PSU in capital letters and “rv”, making it very clear what the domain meant and emphasizing that the whole domain name revolved around its association with the Complainant. The Panel understands from the totality of the evidence that the Respondent made no secret of the fact that this was its intention.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s PSU trademark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Having considered that principle, the Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PSU trademark and to use it in its domain name, adding the generic terms “go”, which has its ordinary meaning, and “rv” which would be taken to mean RV vehicles.
(b) The domain name thus created would be taken by those who are likely to see the domain name as confusing similar to Complainant’s PSU trademark;
(c) Respondent registered the <gopsurv.com> domain name on April 17, 2010 ;
(d) Complainant offers RV vehicles and related goods and services for hire in association with sports events that it conducts;
(e) Respondent has used the domain name to offer RV vehicles and related goods and services for hire in association with sports events conducted by Complainant and to that extent the Respondent is competing with the Complainant in what it is offering.
As Complainant has made out its prima facie case, the onus of proof shifts to Respondent and the Panel must now inquire whether Respondent has rebutted that prima facie case against it.
Respondent bases its case on several grounds which it also relies on to argue that its registration and use of the domain name have been in good faith, rather than bad faith as has been alleged. It is therefore convenient to discuss both issues together.
Respondent argues in the Response that its registration and use of the domain name including the PSU trademark for hiring out recreational vehicles has been with the knowledge and consent of Complainant and that this gives rise to a right to register, and a legitimate interest in, the domain name and the use to which it has been put. In support of this contention, Respondent argues that for more than nine years, the Complainant and Respondent have been in constant communication and done a large amount of business together. That has been the case, Respondent submits, because during that time it has been renting RV vehicles to fans of PSU wishing to camp on or near Penn State’s campus and attend PSU sporting activities or events, particularly, in the context of the present case, football matches. Moreover, it is said that all of this has been done with the knowledge and approval of the Complainant.
Respondent goes further and submits that during the same period in excess of nine years, the Complainant has expressly and repeatedly authorized the Respondent to offer the services described above by using the Disputed Domain name and doing so on Penn State property, thereby giving rise to an express and implied licence to use the domain name including the PSU trademark and in particular to use it at Penn State events. This in turn gives rise to Respondent’s right and legitimate interest in the domain name and its good faith in registering and using the domain name.
In support of its contentions, Respondent has exhibited a series of documents, which are important and probably pivotal to the outcome of this case. That is so because the Respondent has not adduced any direct evidence from persons who say of their own knowledge that the Complainant expressly and repeatedly authorized Respondent to offer the hire of RV vehicles, using the domain name, and on PSU property, which the Respondent says is its case. The Response itself supports the above as the position of the Respondent and its counsel has certified that the contents of the Response are complete and accurate and the Panel has given due regard to that certificate. However, the only direct evidence on behalf of the Respondent on these issues comes from the documents and they are therefore significant.
In considering the documents and, indeed, in considering the whole of the material, the Panel has also had regard to the submissions of the Complainant in the Complaint, which are certified as complete and accurate, its additional submission and the Declaration of the Associate Athletics Director for Business Relations for the Complainant.
There are 8 documents or groups of documents and the Panel has examined all of them carefully. For ease of understanding, the Panel will deal with them in turn, giving in each case the Respondent’s summary of the document, the Complainant’s reply and the Panel’s ruling on each document and on their overall or cumulative effect.
Each of the documents is in the form of an Annex to the Response and they are as follows.
A. Annex A. An invoice from the Complainant for $6375.00 said by the Respondent to be an invoice “requiring payment by the Respondent to become an official sponsor of Penn State Sports.”
Complainant’s reply. Complainant says that the document on its face shows that it relates to a contract with an unrelated third party Learfield Communications, Inc and its subsidiary Penn State Sports Properties (actually Penn State Sports Properties, LLC) and not with the Complainant.
Panel’s Ruling. The Panel notes that the document records that “Keystone Alternatives Mark Lauer” bought the sponsorship of sports at Penn State in 2013 and 2014 and that there was a contract of some sort to which the Respondent was a party. The fact that the arrangement lead to the issuing of an invoice suggests that PSSP understood it to be a commercial arrangement. The fact that the parties to the invoice are PSSP and the Respondent suggests that all involved understood that the sponsorship was related to the work that the Respondent did, namely the hiring of RV vehicles using the disputed domain name. As to whether the contract was with The Pennsylvania State University via PSSP or solely with Penn State Sports Properties, in whose name the invoice is written, with no implications or consequences for Penn State itself, is another question. The Respondent in effect says the former. Complainant says in effect, the latter. That question will be resolved shortly, but in the meantime it is beyond argument that that there was a commercial dealing of some sort in 2014 that involved the Respondent paying for sponsorship of sports events taking place at Penn State in 2013 and 2014 and that Penn State Sports Properties, LLC thought it appropriate to render the invoice to the Respondent, the registrant of the disputed domain name. The invoice thus supports the Respondent’s case.
B. Annex B. “Exemplary Marketing and Sponsorship Agreements for 2013 and 2014”, authorizing the Respondent “to do business on the Complainant’s property and display the domain name on PSU property…”.
Complainant’s Reply. The Complainant makes a series of criticisms of this document and the reliance placed on it by the Respondent, including that it relates only to the two years 2013 and 2014, that it does not confer a right to use the PSU trademark except for two displays in those two years and does not allow the use of a domain name including the PSU mark. But the underlying objection is that “Complainant has not authorized PSSP any right (sic) to sublicense use of the PSU Family of Marks in any domain….The nature of a corporate sponsorship program does not permit use of Complainant’s trademarks in a Domain for commercial purposes.”
Panel’s Ruling. The Agreement shows that there were at least some commercial dealings between Penn State Sports Properties, LLC and Keystone Alternatives, LLC in 2013, as the Agreement is in their names; that it related to the years 2013 and 2014 and that it allowed two displays in “the Blue-White Weekend Fan Festival area” which is presumably part of the Complainant’s property. Again, the question remains whether the contract was with The Pennsylvania State University or solely with Penn State Sports Properties, LLC in whose name the contract is written, with no implications or consequences for Penn State itself. The Respondent in effect says the former. Complainant says in effect, in reply, the latter. As with Annex A, this question will be resolved later.
C. Annex C. Insurance certificates. These are 7 insurance certificates from Erie Insurance Exchange “sent to the Complainant as the Complainant required of the Respondent to offer services at Complainant athletic events.”
Complainant’s Reply. They are unrelated to this proceeding as they are for “contractor –carpentry, landscaping and snow removal.”
Panel’s Ruling. The Panel does not accept that the insurance certificates are unrelated to this proceeding and finds that they do relate to it. It is true that the insurance certificates include, among many other things, a reference to a contractor carrying out carpentry, landscaping and snow removal. However, the insurance taken out is not confined to coverage for those activities, but goes far beyond them, as is apparent from a reading of the documents. It should also be noted that the documents cover the Complainant and the Respondent in this proceeding by name, including a specific reference to “The Pennsylvania State University” (not PSSP) as “Certificate Holder”, so there is no question here of whether this arrangement involved the Complainant, i.e., the University, or merely Penn State Sports Properties, LLC, which is not mentioned at all. It clearly did involve the Complainant. The insurance involved was clearly of an extended nature and covered activities that the named parties must have known was being carried out from 2010 to 2017, so it is obvious that there was some sort of continuous arrangement requiring insurance in which the parties to this proceeding were involved and to which both sides agreed and that it continued over several years.
This, by itself, negates the Complainant’s submissions that “Complainant and Respondent do not have an existing or previous relationship” and that “Complainant and Respondent have never entered into a contractual arrangement.”
Moreover, although the Complainant draws attention to the words “contractor-carpentry, landscaping and snow removal”, the Panel takes them to be a reference to the situation where that work is performed by a contractor who might not otherwise be covered by the insurance, and the certification is for insurance coverage additional to the principal insurance being affected by the policy.
The principal insurance obtained by the contract is commercial general liability, including damage to rented premises, ”personal and adv injury” , general aggregate and “products insurance”, all of which are relevant to the type of commercial arrangement the Respondent contends that it had with the Complainant . The documents are therefore consistent with the Respondent’s general submissions. Indeed, for one year, 2011, there is additional insurance for “hired autos” and “non-owned autos” which is even more closely related to the arrangement for which the Respondent contends, namely the renting of RVs. The insured party is the Respondent and the insurance certificates are supplied to the Complainant and are therefore entirely consistent with the Respondent’s claims that it had an arrangement with the Complainant at least from 2010 to 2017 under which it hired out RV vehicles and with the Complainant insisting on those activities being covered by insurance of which it required to be notified, as it was notified by this series of certificates.
Finally, it should be noted that the insurance certificates are sent to “The Pennsylvania State University, c/o Risk Management Office…”, suggesting that the Complainant knew that whatever the Respondent was doing, it carried some potential risk to the Complainant, and on at least one occasion to the Pennsylvania State Police, suggesting that what was being insured against was regarded by all concerned as being of considerable significance.
The insurance certificates are therefore relevant to the issue whether the Respondent had a right or legitimate interest in the disputed domain name and tend to support the view that, to the knowledge of the Complainant, the domain name was being used from 2010 till 2017 for a significant commercial activity requiring liability insurance and notification to the Complainant itself and the State Police. The presumption therefore must be that the Complainant knew of and consented to this ongoing activity and presumably beyond, unless and until it was terminated.
D. Annex D. These documents are “PSU football schedules printed by the Complainant itself and distributed to PSU fans… advertising Respondent’s services using the Disputed Domain name…” for 2014 and 2017.
Complainant’s Reply. These schedules were not printed and distributed by the Complainant. The Complainant also notes that the use of Complainant’s logos is further evidence of Respondent’s bad faith.
Panel’s Ruling. It is difficult for the Panel to reach a concluded view on this issue, but the fact that the schedules were printed and in circulation at all, suggests that it would have been known to those who saw them that in 2015, 2016, 2017 and 2018 the Respondent, identified by name, website address and in one year its domain name, was in the market for offering RV rentals at Penn State football games and was using the PSU trademark as part of its promotion.
E. Annex E. Respondent’s social media pages showing its use of the PSU mark and Respondent’s RVs at Complainant’s events.
Complainant’s Reply.
The screenshots are “irrelevant to this dispute.” These pages do not show that the Respondent has a right or legitimate interest in the domain name, but rather they show that the Respondent is attempting to cause confusion with respect to the use of the PSU mark.
Panel’s Ruling. The extract shows that the Respondent presents its domain name in an advertisement, so that the term “go” is in smaller print than the “PSU”, clearly intending to highlight the term “PSU” and to make it clear that in some way there is an association with PSU. The Panel notes that the Complainant has not denied that the social media pages show “Respondent’s RVs at Complainant’s events.” The Panel also notes that the photograph of the RV was posted, and the page itself was created, on January 25, 2012, and that the advertisement invites bookings for 2019; accordingly it appears that the pages relate to activities occurring over several years. The Panel therefore does not accept that the screenshots are irrelevant. The Respondent contends that it has a right or legitimate interest in the domain name which is demonstrated by the fact that it advertised the domain name including the PSU mark and located its RVs at Complainant’s events; the social media pages in evidence tend to suggest that this was so.
F. Annex F. This is “a photograph of a display of Respondent on PSU property, for which Respondent paid, making use of the Disputed Domain and advertising Respondent’s services…”.
Complainant’s Reply.
The Annex is a photograph of a banner reading “RV’s Delivered & Set-up.” It does not contain the domain name and has no bearing on this proceeding.
Panel’s Ruling.
The photograph does not appear to carry the domain name in a readily visible form. However, the Panel notes that the Respondent’s supplementary submission contains other photographs of RV vehicles at sporting events that the Respondent describes as “photographs of Respondent’s displays on Complainant property at Complainant athletic events. It defies credulity for the Complainant to now affirm it never had knowledge of, nor ratified, any of the use of Respondent.” The photographs are:
(a) one photograph showing an RV with the address of the website to which the Respondent’s domain name resolves;
(b) one photograph showing an RV with the address of the website to which the Respondent’s domain name resolves and also the domain name itself with the PSU part of the domain name emphasised and an adjoining caravan to the RV, also with the domain name visible and the PSU part of the domain name emphasised;
(c) one photograph with two RV vehicles but no identifying insignia;
(d) one photograph showing an RV with the address of the website to which the Respondent’s domain name resolves;
(e) one photograph showing an RV with the domain name itself with the PSU part of the domain name emphasised;
(f) one photograph of several RVs with no identifying insignia;
(g) one photograph of several RVs with no identifying insignia.
There is thus some photographic evidence which tends to support the Respondent’s case.
G. Annex G.
A donation form of PSU in the name of the Respondent, showing Respondent making and PSU accepting, a donation from the Respondent of RV services.
Complainant’s Reply. This is not evidence that the Complainant received any such donation. The donation form is irrelevant.
Panel’s Ruling. The Panel does not accept that the donation form is “irrelevant.” The form clearly offers an “RV Package” of the use of an RV and accessories valued at $2,600 given by the donor who is described as “GoPSURV.com” of Red Lion PA, which is of course the disputed domain name. It appears to be for a Live Auction and Silent Auction for the benefit of Penn State College of Agricultural Sciences Alumni Society. Its significance is that the gift is described as “RV Package for Penn State v. Michigan State 2014 Home Game…”, and therefore related to a Penn State game at which the Respondent claims its services were available and which it was offering at a function under the auspices of the Complainant. The form is headed “Penn State.”
Although obviously not conclusive, it tends to suggest that in 2014, the Respondent was offering an “RV Package” at a Penn State game, using the entirety of the disputed domain name as the donor of the offering and covering an activity that the Respondent submits shows it had a right or legitimate interest in the domain name. It therefore carries some weight in favor of the Respondent.
H. Annex H. A letter from an attorney evidencing that two of the Respondent’s employees were formerly employed by PSU and worked closely with Respondent while at PSU to market the Respondent’s services through <gopsurv.com>.
Complainant’s Reply. There is no supporting documentation for the factual matters asserted in the letter. The only contract of which there is evidence is the Marketing and Sponsorship Agreement referred to earlier which was with the separate company Penn State Sports Properties, LLC , a subsidiary of Learfield Communications, Inc.
Panel Ruling. The Panel would not have admitted parts of this letter into evidence. However, it is evidence from the attorney for Mr. Lauer that he, the attorney, knows that Mr. Lauer entered “many contract (sic)” with “Penn State Sports” over a 15 year period to promote “GoPSURV.com”.
Cumulative Effect of the Documents
In total, the documents show that there has been a agreement with some commercial elements between the Complainant and the Respondent and one of which the Complainant must have known and, because it continued for so many years, one which the Complainant allowed to continue and in which it acquiesced. Originally, the relationship was supported by the payment of $6,375, paid by the Respondent to PSSP on behalf of the Complainant and it continued by the Complainant’s acquiescence and on terms that the Panel must assume the Complainant regarded as satisfactory. That is the cumulative effect of the documents.
In particular, the insurance certificates show that:
(a) Such a relationship existed in each of the years 2010, 2011, 2012, 2013, 2014, 2015, 2016 and 2017;
(b) The insurance was for commercial general liability, showing a commercial activity;
(c) The insurance contracts were between the registrant of the domain name and the insurance company;
(d) The Complainant is being furnished with certificates showing that the Respondent has taken out the insurance and the certificates are being sent by a representative of the insurance company or its agent to the Complainant by name, obviously to show it that the insurance has been taken out and that the Complainant will know that it has been taken out and that at least in one year it was important enough to notify the State Police and in other years to send the certificates c/o Penn State’s Risk Management Office.
The PSU football schedules suggest that the Respondent’s offering of hiring out RVs was also known to some extent because of the printed PSU football schedules.
Moreover, the social media pages showing RV vehicles, illustrate that the Respondent was openly asserting its use of the Complainant’s PSU trademark at least between 2012 and 2018 and offering the use of RVs at “a Penn State football game”, with no apparent objection from Complainant. It is difficult to conclude that the Complainant was unaware of this being done and, the longer it continued over the years, the more likely it is that the Complainant acquiesced in it.
Several of the photographs that have been adduced in evidence by the Respondent, evidence that has not at the time of writing been challenged, also show that the Respondent was openly asserting its use of the Complainant’s PSU trademark and advertising its own domain name and website, which was clearly being done to solicit new business, and that it was doing so on or adjacent to the Complainant’s property and at its games. Again, the Panel finds on the evidence that the Complainant was aware of what was taking place and acquiesced in it.
The donation form shows that in 2014 the Respondent was offering an “RV Package” for an identified Penn State football match, apparently a home game, in the name of the disputed domain name and doing so on a form headed “Penn State”, albeit for an alumni society. This is clearly a statement that the RV Package will be available to the lucky winner at a home game at Penn State.
The attorney’s letter shows that that he, the attorney, knows that Mr. Lauer entered “many contract (sic )” with “Penn State Sports” over a 15 year period to promote “GoPSURV.com” (sic).
From this evidence the Panel concludes that it is more probable than not, that for several years the Respondent had an ongoing relationship with the Complainant under which it conducted its RV business at Penn State games using the PSU mark in its domain name, that it was able to do this openly and with the approval and consent of the Complainant. As there is no evidence of when, if ever, this relationship was terminated, it is a ground for concluding that it gave rise to a right and legitimate interest in the domain name.
There is, in addition to the documents, other evidence which raises the issue of the role of the company Penn State Sports Properties LLC.
The evidence involving the status of Penn State Sports Properties LLC
The Complainant maintains that The Respondent’s contract was with Penn State Sports Properties LLC ( (PSSP) and not with The Pennsylvania State University (PSU), that PSSP is not an affiliate or agent of PSU, that PSSP had no authority to grant a party permission to use a domain name containing the PSU marks, that there is no evidence that Respondent’s use of the domain name was authorized by the Complainant, that PSSP and its parent Learfield are unrelated to the Complainant and that PSSP has no right to grant any third party a license to use the Complainant’s trademarks in domain names.
Having regard to the totality of the evidence the Panel does not accept those submissions. The totality of the evidence shows that PSSP was at all material times the agent of the Complainant and that the Complainant gave it both actual and ostensible authority to enter into the contractual arrangements that existed between the Complainant and the Respondent and that when it made those arrangements with the Respondent, PSSP was acting with the authority of the Complainant. That is shown by statements of both the Complainant and PSSP.
First, the Complainant has a declared policy on the use that may be made of its trademark and that policy applies specifically to the PSU trademark that is in issue here. That is known because in its Supplementary Submission, the Respondent tendered a letter dated May 12, 2017 from the Assistant Athletics Director of Business Relations to the Respondent. In that letter, the Assistant Director, having identified the University policies on this matter, said that the Complainant’s trademark could only be used with a grant of specific rights “by the University or its licensed designee Penn State Sports Properties.” (emphasis added). This shows that PSSP was the agent of the Complainant during the material period and that it had express power to permit the use of the PSU mark in the disputed domain name. Indeed, it is difficult to see how the Complainant could submit to the Panel that “PSSP is not an affiliate or agent of Complainant” when its own policies say that it is the University’s “licensed designee.”
Secondly, the Complainant has its own website which is in evidence, namely www.psu.edu.This website covers all aspects of a university’s life with one exception: Athletics. The single word “Athletics” appears in the list of headings on the website but when the word “Athletics” is clicked on, the hit is immediately re-routed to www.gopusports.com, which is the website of PSSP, where all aspects of sports and games involving the University are dealt with. It is, in fact, the alter ego of the university, so far as sports and athletics are concerned. It was therefore clearly an agent of the Complainant.
One of the matters dealt with by PSSP on behalf of Penn State is sponsorship in athletics which states, inter alia:
“Penn State Sports Properties is the locally based Learfield IMG College team committed to extending the affinity of the Penn State brand to businesses and corporations of all sizes looking to align with the undeniably loyal and passionate collegiate fan base. As Penn State Athletics’ exclusive multimedia rightsholder, Penn State Sports Properties manages all aspects of the rights relationship, providing corporate partners both traditional and new media opportunities with Penn State University.[i]”(emphasis added).
Thirdly, the Marketing & Sponsorship Agreement that is the Respondent’s Annex B states that PSSP holds “the exclusive athletic marketing and sponsorship rights for Penn State University (“University”).”This is entirely inconsistent with the Complainant’s submissions that “PSSP is not an affiliate or agent of PSU” and other submissions of the Complainant.
The Panel draws the conclusion that PSSP was at all material times acting as the agent of the Complainant with actual and ostensible authority and that it was contracting on behalf of the Complainant when it entered into the Marketing and Sponsorship Agreement for 2013 and 2014 and the ongoing relationship between the Complainant and the Respondent. In so far as any of the other events referred to above, involving the Complainant and the Respondent, were carried out by PSSP, the Panel finds that on the evidence and drawing reasonable inferences from the evidence, PSSP was acting for and with the authority of the Complainant, including giving the Respondent permission to use the Complainant’s PSU trademark in the domain name <gopsurv.com>.
That conclusion is reinforced by a recent addition to the evidence, namely the letter dated May 12, 2017 from the Assistant Athletics Director of Business Relations to the Respondent, annexed by the Respondent to its supplementary submission (“the 2017 letter”). It will be recalled that the Complainant submitted in its supplementary submission that there was “no evidence showing that Complainant knew about Respondent…”. However, the 2017 letter opens with the statement: ‘“We are aware of your commercial promotion and rental of recreational vehicles (RV) for University Intercollegiate Athletics on the University Park campus.” This establishes that the Complainant did in fact know of the Respondent and its activities.
The 2017 letter then appears to prohibit “the rental of RVs on University property” but not the use of the disputed domain name or the inclusion in the domain name of the PSU trademark, the issue that is in dispute in the present proceeding. When the letter turns to that subject it states that “…the use of the University intellectual property , including the University name, its trademark and associated imagery …is also restricted…(and) may not occur without a grant of specific rights by the University or its licensed designee, (PSSP)…”, concluding with a citation of the Complainant’s policies. This would appear to say that PSSP did in fact have power to grant the right to use the PSU trademark in the domain name, and is consistent with the Respondent’s contentions and evidence.
In total, the Panel concludes that the evidence adduced has made out a case to the satisfaction of the Panel that the Complainant on the balance of probabilities, and including via the agency of PSSP, authorized Respondent to offer the hire of RV vehicles while using the domain name and the Complainant’s PSU trademark, at and in association with PSU sporting events.
The Panel therefore accepts the principal submission of the Respondent that the Complainant by its conduct, including via the agency of PSSP, authorized the Respondent to offer its services at PSU athletic events using the domain name that incorporates the Complainant’s PSU trademark and acquiesced in the Respondent doing so.
It has been generally accepted since the implementation of the UDRP that if a respondent could show “Complainant’s acquiescence to Respondent’s use of the domain name…” this could give rise to a right or legitimate interest in a disputed domain name as it did in 2000 in one of the earliest UDRP decisions: Draw Tite Inc.,v. Plattsburg Spring Inc. WIPO Case, D-2000-0017. Consent, express or implied by conduct, has long been regarded as capable of giving rise to such a right or legitimate interest, subject always to the facts which will vary from case to case. Thus, the words used by the panel in Celebrity Signatures International, Inc. v. Hera�s Incorporated Iris Linder, WIPO Case No. D2002-0936 are instructive and evocative of the present case: “It does not appear that she (the Respondent) did so with the intent to be a cybersquatter or to unfairly trade on Complainant's good will. To a significant degree, Complainant's own actions created the circumstances in which Respondent could reasonably conclude that her conduct was permitted.”[ii] Those words could well be applied to the present proceeding.
In the present case, the Complainant must be presumed from the evidence to have been aware of the Respondent’s activities, acquiesced in them and by that means consented to the use of the domain name, giving rise to a right or legitimate interest in the domain name and negating the notion of registration and use of the domain name bad faith.
That concludes the major ground relied on by the Respondent to show how it has a right or legitimate interest in the disputed domain name.
Other grounds relied on.
The Respondent also relies on other grounds to show a right or legitimate Interest in the domain name. Those grounds are that the Respondent is commonly known by the domain name, that its website is a fan site and that the case comes within the first sale doctrine. As the Respondent has already made out the ground of a right or legitimate interest in the domain name, it is not necessary to examine those other grounds.
Accordingly, the Panel finds that the Respondent has a right and legitimate interest in the disputed domain name that arises from the consent and acquiescence of the Complainant to the Respondent’s use of the PSU mark in its domain name and using the domain name in its business in the manner described.
Laches
The Respondent submits that the Complainant’s case should be denied “on the basis of laches alone.” It is not necessary to decide if the proceeding would or should have been denied on the ground of laches alone, as the Panel has found that it should be denied on the substantive grounds discussed above.
Complainant has thus failed to make out the second of the three elements that it must establish.
If a Panel concludes that Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), the Panel may also find that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). The Panel has concluded that that is an appropriate principle to apply in the present case. In doing so, the Panel finds that the Respondent did not register or use the domain name in bad faith. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
The Panel also finds that Respondent has not registered or used the <gopsurv.com> domain name in bad faith for the additional reason that it has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith); see also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)).
Complainant has thus failed to make out the third of the three elements that it must establish.
Reverse Domain Name Hijacking
The Respondent has submitted that the Panel should make a finding of Reverse Domain Name Hijacking (“RDNH”) against the Complainant. In the exercise of its discretion and having regard to all the circumstances, the Panel has decided that this is not an appropriate case in which to make a finding of RDNH.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <gopsurv.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 29, 2019
[i] https://www.learfield.com/partner/penn-state-nittany-lions/
[ii] See also the discussion of the cases in Levine, Domain Name Arbitration , Legal Corner Press, New York, 2015, pp.338-9
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