WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

University of Stuttgart v. Domain Search

Case No. D2000-0932

 

1. The Parties

The Complainant in this administrative proceeding is University of Stuttgart, Federal Republic of Germany, legally represented by the Chancellor in Charge, Mr. Joachim Schwarze, Stuttgart, Germany.

The Respondent is Domain Search, 4141 Ball Road, CA 90630 Cypress, USA.

 

2. The Domain Name and Registrar

The domain name that is subject of this Complaint is uni-stuttgart.com.

The registrar with which the domain name is registered is Network Solutions Inc, Baltimore, USA.

 

3. Procedural History

A Complaint was first submitted electronically and by fax to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 3, 2000. The WIPO Center sent an Acknowledgment of Receipt to the original Complaint, dated August 7, 2000. Due to some minor deficiencies the complaint was later amended and the final complaint as well as the requested hard copies was received by the WIPO Center on August 28.

On August 14, 2000, a Request for Registrar Verification was transmitted to the Registrar. The Registrar confirmed on August 17, 2000, the information in the request and forwarded the requested WHOIS details, and stated that the domain name was on "active" status.

The policy in effect at the time of the registration of the domain name at issue is the Network Solutionsī 4.0 Service Agreement.

The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on August 18/28, 2000.

The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy.

The required fee for a single-member Panel has been paid by the Complainant.

No formal deficiencies having been recorded, on August 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of September 18, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by the required means.

The Respondent has not filed a response. Accordingly, on September 19 the WIPO Center sent a Notification of Respondent Default to the parties.

On September 21, 2000, in view of the Complainantís designation of a single panelist the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in Case No. D2000-0932, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received, Mr. Knud Wallbergís Statement of Acceptance and Declaration of Impartiality and Independence, on September 26, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was October 9, 2000.

The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Uniform Rules and the WIPO Supplemental Rules, but without the benefit of a response from the Respondent.

 

4. Factual Background

The Complainant is Universität Stuttgart, or, in short, "Uni Stuttgart", the German University of the City of Stuttgart. The University is internationally known especially for its departments of engineering and economics.

According to Par. 1 and 2 of the German University Act of 10 January 1995, The Complainant is entitled and obliged to bear the name of "Universität Stuttgart". The University holds the domain name "uni-stuttgart.de".

 

5. Partiesí Contentions

A. Complainant

This complaint is based on the following grounds:

The domain names are, on its face, virtually similar to the corresponding name of the Complainant known as Universität Stuttgart, or, in short, "Uni Stuttgart". The University is internationally well known and held in high repute for its departments of engineering and economics.

In August 1998, the Complainant was informed that the Respondent had registered uni-stuttgart.com". The Web Site displayed pornographic contents as well as explicit lyrics and sounds.

The Respondent was contacted and was advised that the Complainants name be under protection of national laws. Moreover, the Respondent was notified that the common German abbreviation and indicator of the word and term "university" is "uni". Thus, the average user of WWW Services, such as search engines, would be highly likely to confuse the Respondentís pornographic Web Site with the Web Site of our client. As a result, this would lead to misleading and deceiving of users on the Internet, and thereby finally to dilution of our clientís name. Such confusion already had occurred since the Complainant had been informed about the URL by a considerable number of persons that expected to find the University of Stuttgart under the said Domain. In the medium term, the pornographic contents that the Complainant is associated with shall severely damage our clientís reputation.

Relating to the name "uni-stuttgart", Complainant has a long-standing right, whereas the Respondent, whose name and trademark is "Domain Search", is not entitled to use this name in commerce or elsewhere, as or in an URL, a Domain, and the like.

For a period of almost 2 years, there were no contents at all displayed under the said domain. In April 2000, the Complainant once again had to find out that the domain in dispute was in use. Once again the Complainant addressed the Respondent by letter.

The domain name in dispute is identical to the name by which the Complainant is known and recognised worldwide. It is almost identical to the name that the Complainant is legally obliged to bear ("Universität Stuttgart"). The abbreviation "Uni" is very common; in spoken German, no one would refer to a university by saying "Universität" but "Uni". Anybody familiar with the name will, when he/she sees the name, immediately associate it with the Complainant. The Respondent, on the other hand, has no legal rights and interests at all concerning the domain in dispute.

The disputed domain name creates the impression that they are the legitimate and official web page addresses of the Complainant and that any of the information contained therein, will be the accepted official statements, views and/or comments of the Complainant. The way in which the Respondent is using the domain names is misleading because he is using them to spread his own, unauthorised information.

Thus, the average users of WWW Services are likely to be irritated by expecting the Web Site of the Complainant and finding that of the Respondent. As a result, this will bring about misleading and deceiving of users on the Internet. It will finally lead to a dilution of the Complainantís name. Such threat of confusion shall definitely lead to annoyance among interested parties. The contents the Complainant thereby is associated with shall severely damage his high reputation.

In view of what is said above, it is the Complainant's submission that:

The domain name was registered in bad faith.

The Respondent has no rights in respect to the domain that is the subject of the complaint because he is not acting on behalf of the Complainant and has no authorisation from the Complainant to act on its behalf.

The disputed domain name was registered to portray the Complainant negatively, effectively opposing and disrupting the standing of the Complainant in the world of science. By using the domain name the Respondent has intentionally attempted to attract Internet users to its site by creating a likelihood of confusion with the Complainantís name as to the affiliation of the respondentís web site.

The use by the Respondent of the registered domain name does not constitute fair use since he is using them to mislead Internet users to his web site, which tarnishes the name of the Complainant.

It is the Complainantís submission that the Respondent knew, alternatively should have reasonably foreseen that the registration of the domain names would infringe upon or otherwise violate the rights of the Complainant.

It is the Complainantís submission that the Respondent knew, alternatively should have reasonably foreseen that he was not registering the domain names for a lawful purpose.

The Respondent knew that he was using the domain names in violation of applicable laws or regulations.

B. Respondent

Respondent has not filed any response.

 

6. Discussion and Findings

According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respects of the domain name; and

iii) that the domain name has been registered and used in bad faith.

i) Similarity with Complainants rights

The domain name <uni-stuttgart.com> is confusingly similar to the name under which the Complainant is internationally known and to which the Complainant has statutory rights in Germany namely Universität Stuttgart. Such names enjoy a legal protection equivalent to trademark or servicemark protection in many jurisdictions and must be

considered as being covered by the UDRP, cf. Case No. D2000-0308: <oxford-university.com> and Case D2000-0378: <universityofalberta.com>

ii) Respondents legitimate interests

The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating he mark.

The Respondent has not furnished any evidence in support of their rights or legitimate interest in the name. Uni-stuttgart is not a generic term nor is it a term that would be natural to chose for any kind of business activity other than that of the Complainant.

On this background the Panel finds that the Respondent has no prior rights or legitimate interests in the domain name.

The preconditions in the Policy, Paragraph 4(a)(i) and (ii), cf. 4(c) are therefore fulfilled.

iii) Bad faith

Paragraph 4(a)(iii) cf. 4(b) of the Policy further provides registration and use in bad faith.

As stated above Uni-stuttgart is not a generic term nor is it a term that would be natural to chose for any kind of business activity other than that of the Complainant. The Panel therefore finds that it is unlikely that the Respondent has acquired the domain name without having knowledge of the Complainants name. The Panel also finds that Respondent must have been aware of the deception and confusion that would inevitably follow if he used the domain name to which he has not demonstrated to have any rights or legitimate interests.

Further, the Panel finds that by using the domain name the Respondent has intentionally tried to attract Internet users to the web site, and that this inevitably (and to the Respondentís knowledge) would be able to disrupt or otherwise harm the reputation of the Complainant.

On this background also the elements in Article 4(a)(iii) are present in this case.

Consequently, all the preconditions for cancellation or transfer of the domain name according to Paragraph 4(a) of the Policy are fulfilled.

The Complainant has requested transfer of the domain name.

 

7. Decision

In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is confusingly similar to the name of the Complainant in which the Complainant has statutory rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and 15 of the Rules, the Panel requires that the registration of the domain name uni-stuttgart.com be transferred to the Complainant.

 


Knud Wallberg
Presiding Panelist

Dated: October 6, 2000