WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arizona Board of Regents for and on behalf of Arizona State University v. Value Holdings, Inc.
Case No. D2001-0445
1. The Parties
Complainant is Arizona Board of Regents, for and on behalf of Arizona State University ("ASU"). Complainantís address is: PO Box 87203, Tempe, Arizona 85287-2003, USA. Respondent is Value Holdings, Inc. Respondentís address is: 6220 E. Thomson Road, Scottsdale, Arizona 85251-7039, USA.
2. The Domain Name and Registrar
This dispute concerns the following domain name: <asunudes.com> ("Domain Name"). The registrar with which the domain name is registered is: Melbourne IT, LTD. D/B/A Internet Names Worldwide ("Melbourne").
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint by email and in hard copy on March 27, and April 2, 2001, respectively. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 5, 2001.
Issuance of Complaint
The Complaint indicates that WHOIS records for the Domain Names list Respondent Value Holdings, Inc. at the following address: PO Box 5181, Scottsdale, Arizona 85261, USA. Complainant sent a copy of the Complaint by email to Respondent. Jack Erickson is the Administrative and Billing contact for the Domain Name.
Confirmation of Registration Details
On April 3, 2001, the Center transmitted, via email to Melbourne, a request for registrar verification in connection with this case. On April 4, 2001, Melbourne transmitted by email to the Center, their verification response confirming the domain name <asunudes.com> is registered through Melbourne IT, LTD and that Value Holdings Inc. is the Registrant with Jack Erickson as the Administrative Contact.
Notification of Complaint
On April 5, 2001, the Center transmitted to the Respondent, Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the response was due by April 24, 2001.
On April 26, 2001, the Center emailed to the parties Notification of Respondent Default.
Constitution of Administrative Panel
On May 14, 2001, the Center notified the parties via email that the Administrative Panel would consist of Mr. David Everett Wagoner as the Sole Panelist.
Compliance with the formalities of the Policy and the Rules
Upon review of the file, the Panel concludes that the Center has fully complied with the formalities of the Policy and Rules, that Respondent was given adequate notice of this proceeding, and that Respondent has been accorded due process.
4. Factual Background
Section 5 (e) of the Rules provides "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint." Here there are no exceptional circumstances and, therefore, the Panel decides the dispute based upon the Complaint and the Exhibits attached thereto and finds the following facts as established.
*12. Arizona State University (the Complainant) is a state university whose main campus is located in Tempe, Arizona, U.S.A. Founded in 1885, ASU is the largest university within the state of Arizona and ranks among the largest of institutions of higher learning within the United States. Total enrollment for the fall 2000 semester amounted to 50,365 students from across the United States and the world.
*13. The Universityís main campus supports 95 programs leading to a bachelorís degree, 75 programs leading to a masterís degree, and 41 programs leading to a doctoral degree. The University is also an internationally recognized research institution and center for the promotion of cultural and performing arts. For example, during fiscal year 1998-99, the University received $104.4 million in grant awards from federal, state, and local government, and private sources.
*14. Complainant is the owner of U.S. Trademark Registrations for ASU (U.S. Registration Nos. 1,433,973; 1,445,086; 1,449,742; and 1,462,309); SUN DEVIL (Registration Nos. 1,493,595); SUN DEVILS (U.S. Registration Nos. 1,552,926; 1,445,084; and 1,438,108); ARIZONA STATE (U.S. Registration Nos. 1,439,228; 1,445,085; 1,448,545; and 1,499,948); and ARIZONA STATE UNIVERSITY (U.S. Registration Nos. 1,449,597; 1,448,546; 1,450,896; and 1,499,947). See Annex D.
*15. Complainant is also the owner of numerous other U.S. Trademark Registrations, including ASU and Design marks (for example, U.S. Registration Nos. 1,445,083 and 2,231,419), SUN DEVIL and Design (including U.S. Registration Nos. 1,446,309, 1,555,794 and 1,499,790) and other marks.
*16. Since at least 1958, Complainant has used the "ASU," "ARIZONA STATE" and "ARIZONA STATE UNIVERSITY" marks to identify a variety of educational and entertainment services, including offering undergraduate, graduate, and post-graduate instruction; presenting cultural, scientific and entertainment events; and sponsoring a variety of intramural, intercollegiate and exhibition athletic and sporting events. Complainant has used its "SUN DEVIL(S)" marks in connection with the same activities since at least 1947. See Annex D.
*17. Since at least 1958, Complainant also has used all of these marks in connection with a successful Trademark Licensing Program, under which manufacturers are officially licensed to use marks and logos on select merchandise, including gifts and collectibles, apparel, and sports gear. See Annex D.
*18. Complainant advertises its educational and athletic services throughout the United States and the world; Complainant spends a sizable amount of time, effort, and money to promote its services through its trademarks. For example, on average, Complainantís licensing programs annually generate close to half a million U.S. dollars in revenue. For the year 2000, Complainantís licensing program spent approximately $100,000 U.S. to protect and promote its marks. See Annex E.
*19. Due to its continuous and extensive use of the "ASU," "ARIZONA STATE," and "SUN DEVIL/SUN DEVILS" marks since long prior to the Respondentís registration of the <asunudes.com> domain name, and its registration of these marks as trademarks in the United States, Complainant has built up strong trademark rights in these names and marks used in connection with a wide variety of educational and entertainment services.
*20. Due to the Complainantís extensive use of the marks and substantial promotional activities over the last five decades, "ASU" and "ARIZONA STATE" have acquired secondary meaning in connection with educational and entertainment services and collegiate athletic programs.
*21. "SUNDEVIL(S)" is not the generic term for an institution of higher education or associated entertainment or collegiate athletic programs. Accordingly, "SUN DEVIL(S)" is inherently distinctive when used in this context.
*22. Complainantís extensive, nationwide use of its marks for the last 42 years has created wide-spread recognition of the names "ASU," "ARIZONA STATE," and "SUN DEVIL(S)." Accordingly, these have acquired significant goodwill; moreover, the marks are famous and are entitled to a wide scope of protection under United States trademark law.
*23. According to the Tucows Open SRS WHOIS database, accessed on February 22, 2001, Respondent, Value Holdings, Inc., registered the <asunudes.com> domain name on September 25, 2000. See Annex A.
*24. Complainant accessed the site to which the <asunudes.com> domain name is connected, and found that the site contains nude photographs of men and women (purportedly Arizona State University students) and hard core pornography. A hard copy printout of the website obtained on March 5, 2001, is attached as Annex C.
*25. Although Respondent did modify the <asunudes.com> site by adding a disclaimer that the site is not affiliated with Arizona State University after receiving a cease and desist demand from the Complainant, the site continues to contain images and wording that deliberately associate the site with the University. The colors maroon and gold Ė the Universityís official school colors Ė are predominant and used throughout the site. The home page features a photograph of Arizona State Universityís Sun Devil Stadium and the description "Our Sexy Devils." Featured models are (or at least claim to be) students of the University. Banner advertisements soliciting models for the site feature photographs of "A Mountain," a nearby natural landmark that has been painted with the letter "A" in reference to ASU. See Annex C.
*26. The <asunudes.com> domain name at issue is confusingly similar to Complainantís "ASU" name and mark. The domain name incorporates the entire "ASU" name, and adds only the generic terms "nudes" and "com."
*29. Any attempts on the part of the Respondent to define "ASU" as "All State Undergraduate Nudes" are unconvincing in light of Respondentís efforts to associate the site with the University. There can be no doubt that "ASU" in <asunudes.com> refers to Arizona State University.
*30. Respondent Value Holdings cannot demonstrate any legitimate interest in the <asunudes.com> domain name. Value Holdings is not commonly known as "ASU" or "ARIZONA STATE UNIVERSITY." Value Holdings is not affiliated in any way with the Complainant; nor has it provided services to Complainant in connection with the above-identified names and marks. Finally, Value Holdings is not making a legitimate, non-commercial use of the <asunudes.com> domain name; its sole use of the name is in connection with its pay-for-access pornographic website.
*31. ASU contacted Value Holdings regarding this dispute in a letter dated December 18, 2000, and addressed to the companyís administrative contact and CEO, Mr. Jack Erickson. (A copy of that letter is attached as Annex H.)
*32. Mr. Erickson responded to ASUís December 18 letter via an E-mail communication dated December 27, 2000. A copy of this E-mail is attached as Annex I. In this response, Mr. Erickson refused to cease operation of the website. Instead, he agreed only to remove the name "ASU" from the metatags associated with the <asunudes.com> site, and indicated that he would place a notice disclaiming association with the University on the site. However, the <asunudes.com> site remains in operation, and, as discussed above, continues to associate itself with the University.
*33. According to the Register.com WHOIS database, accessed in December of 2000, Jack Roberts was at one time listed as the registrar of <uncgirls.com>. See Annex J. According to an article dated August 22, 2000, Jack Erickson is also known as "Jack Roberts." See Annex K.
*34. Until March of 2001, the site associated with the <uncgirls.com> domain name contained nude pictures and hard core pornography, as well as references to the University of North Carolina Chapel Hill. The February, 2000 printout of the site is attached as Annex L.
*35. As of the time of filing this Complaint, the <uncgirls.com> website is inactive. Moreover, Mr. Erickson/Roberts is no longer listed as the registrar or the administrative contact for the domain name <uncgirls.com>. According to the Tucows Open SRS database, accessed on February 23, 2001, the current registrant for <uncgirls.com> is "Eric Draven." See Annex M. The Complainant notes that this may be an alias, as "Eric Draven" was the name of the principal character in the movie "The Crow." See Annex N.
*36. According to the Network Solutions, Inc. WHOIS database accessed on March 2, 2001, Mr. Erickson is also the registrant for <showmethehooters.com>, which is connected to another pornographic website. See Annex O. This registration may implicate third-party trademark rights, as "Hooters" is a federally registered trademark belonging to Hooterís, Inc., a Florida corporation. See Annex P.
*37. Value Holdingís registration and subsequent use of the <asunudes.com> domain name constitutes bad faith.
*39. By linking ASUís marks to its pornographic website, Value Holdings is tarnishing ASUís famous marks. Moreover, Respondentís website creates a negative association with the Complainant, and damages Complainantís public reputation as an institution of higher learning and sponsor of athletic and cultural events.
*41. Respondentís likely use of aliases in connection with the registration of <uncgirls.com> is additional evidence of bad faith.
*The numbers are Paragraphs of the Complaint.
5. Partiesí Contentions
The Complaint alleges that the Domain Name is nearly identical and confusingly similar to the ASU Marks, that Respondent registered the Domain Name in bad faith for the purpose of capitalizing on the famous ASU Marks and profiting from the international and domestic goodwill ASU has built up in its famous trademarks and that Respondent has no rights or legitimate interests in respect of the Domain Name.
B. The Response
Respondent filed no response.
6. Discussion and Findings
Paragraph 4.a of the Policy directs that Complainant must prove, with respect to the domain name in issue, each of the following:
(1) The domain name in issue is identical or confusingly similar to the Complainantís trademarks or service marks; 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.
Paragraph 4.b of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c of the Policy sets out three illustrative circumstances any one of which, if proved, shall demonstrate Respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar Domain Name
Complainant has proved that Respondentís Domain Name is confusingly similar to trademarks in which Complainant has rights.
The <asunudes.com> domain name at issue is confusingly similar to Complainantís "ASU" name and mark. The domain name incorporates the entire "ASU" name, and adds only the generic terms "nudes" and "com."
A number of prior UDRP panel decisions have recognized the confusing similarity between a trademark and a domain name where the domain name has merely added generic terms to the mark. See, e.g., Ebay Inc. v. Ebay4sex.com and Tony Caranci, Case No. D2000-1632 (WIPO January 18, 2001) (finding that "ebay4sex.com" was confusingly similar to complainantís "ebay" mark); General Electric Co. v. Basalt Management, Case No. D2000-0925 (WIPO October 25, 2000) (finding that registrantís "generalelectricsex.com" was confusingly similar to complainantís "General Electric" mark); America Online v. Belmont Studios, Ltd., Case No. D2000-0979 (WIPO October 4, 2000) ("icqpornjokes.com," "icqsexchat.com," and "freeicqsex.com" all confusingly similar to complainantís "icq" mark); Caterpillar, Inc. v. Roam the Planet, Ltd., Case No. D2000-0275 (WIPO March 25, 2000) ("catmachines.com" confusingly similar to complainantís "CAT" and "CATERPILLAR" trademarks).
Respondent cannot argue that there is no confusion because consumers are not likely to believe that an institution of higher learning like Arizona State University would be associated with Respondentís pornographic website. As one WIPO administrative panel has noted:
Arguably, nobody is likely to believe that companies of the standing of the Complainant, Coca-Cola, Chevrolet, et cetera are in any way associated with websites, which incorporate their principal trade marks in conjunction with the word "sex." Accordingly, it may be that "confusion" of that kind is only a remote risk. However, in the circumstances of this case where, notwithstanding the Respondentís denial, it is plain that the Respondent selected the Domain Name with the Complainant very much in mind, what the Respondent has done would in most jurisdictions constitute a tort. . . . [A court] would certainly regard the Domain Name as being sufficiently similar to the trademark in which the Complainant has rights.
General Electric, Case No. D2000-0925. (See Annex G.)
B. Respondentís Rights or Legitimate Interests in the Domain Name
The Panel finds that Respondent has no rights or legitimate interests in the Domain Name, which the Panel finds was inspired by and copied from Complainant's name and trademarks.
Respondent Value Holdings cannot demonstrate any legitimate interest in the <asunudes.com> domain name. Value Holdings is not commonly known as "ASU" or "ARIZONA STATE UNIVERSITY." Value Holdings is not affiliated in any way with the Complainant; nor has it provided services to Complainant in connection with the above-identified names and marks. Finally, Value Holdings is not making a legitimate, non-commercial use of the <asunudes.com> domain name; its sole use of the name is in connection with its pay-for-access pornographic website.
C. Domain Name Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith.
Value Holdingís registration and subsequent use of the <asunudes.com> domain name constitutes bad faith. Bad faith in this matter is demonstrated by the following:
a. The registration of the <asunudes.com> domain name years after Complainantís first use of the ASU, ARIZONA STATE, and SUN DEVIL(S) marks
b. The respondentís failure to cease use of the domain name.
c. ASUís extensive and long-term use of its marks, the resulting fame of those marks, and the fact that the respondentís website uses words, images, and color to associate its pornographic content with ASU.
d. The respondentís ownership of the registration for <showmethehooters.com> as well as his prior (and perhaps present) registration of <uncgirls.com>, and the latter siteís association of the University of North Carolina with its pornographic materials.
By linking ASUís marks to its pornographic website, Value Holdings is tarnishing ASUís famous marks. See Mattel Inc. v. Internet Dimensions, Inc., No. 99 Civ 10066, 2000 WL 973745, at *4-5 (S.D.N.Y July 13, 2000); Ford Motor Co. v. Lapertosa, 126 F.Supp 2d 463, 466 (E.D. Mich. 2000). Moreover, Respondentís website creates a negative association with the Complainant, and damages Complainantís public reputation as an institution of higher learning and sponsor of athletic and cultural events. See, e.g., Mattel, 2000 WL 973745, at *8 (defendantís pornographic website "BARBIEíS PLAY PEN" tarnished plaintiffís BARBIE trademark, as well as plaintiffs "wholesome public image."). (See Annex F.)
Respondentís likely use of aliases in connection with the registration of <uncgirls.com> is additional evidence of bad faith. See Home Director, Inc. v. HomeDirector, Case No. D2000-0111 (WIPO April 11, 2000). (See Annex G.)
In light of the foregoing, the Panel decides that:
(1) The Domain Name registered by Respondent and at issue here is confusingly similar to Complainantís trademarks,
(2) Respondent has no rights or legitimate interests in respect of the Domain Name at issue, and
(3) The Domain Name at issue has been registered and is being used in bad faith by Respondent.
Accordingly, the Panel decides that the Registration of the Domain Name set forth in paragraph 2 of this Decision shall be transferred to Complainant.
David Everett Wagoner
Dated: May 31, 2001