WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
University of Notre Dame v. 24/7
Case No. D2001-1288
1. The Parties
The parties are University of Notre Dame, Notre Dame, Indiana 46556, U.S.A. (Complainant) and 24/7, 1718 Peachtree Street, Suite 548, Atlanta, Georgia 30309, U.S.A. (Respondent).
2. The Domain Name and Registrar
The domain name in dispute (the "Domain Name") is <notre-dame.com>. The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") in electronic form on October 23, 2001, and in hard copy (including the appropriate fee) with attachments on October 26, 2001. The Registrar verified the information required by Paragraphs 2(a) and 4 of the Rules for Uniform Dispute Resolution Policy on November 1, 2001. The Centerís formal requirements checklist was completed on November 2, 2001. The Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements.
A Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent (including its Technical, Administrative and Billing Contacts) by email to four separate email addresses, by fax to three fax numbers, and by courier with attachments to three addresses, all on November 2, 2001. Delivery to the email addresses was confirmed by what appear to be automatic responses. Delivery by fax to one of the fax numbers was confirmed as "OK", but not to the other two fax numbers. Delivery by courier to each of the three addresses apparently failed. Copies were also sent to Complainant, to ICANN and to the Registrar.
No Response having been received from the Respondent, the Center sent a Notification of Respondent Default on November 23, 2001.
Having submitted a Statement of Acceptance and Declaration of Impartiality and Independence, David W. Maher was appointed as the Single Member Panel on December 6, 2001. The Panel was required to forward its decision to the Center by December 20, 2001.
Having reviewed the file, the Panel concludes that the Complaint complied with the applicable formal requirements, was properly notified, and has submitted to a duly appointed Panel in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy") applicable to the Domain Name. There were no further submissions, extensions granted or orders issued. The language of the proceeding is English.
4. Factual Background
Complainant, Notre Dame University, is a well known and widely respected educational institution in the state of Indiana in the United States, and was founded in 1842. Its student body is drawn from all of the United States and from 87 foreign countries. It has achieved particular fame in the field of college sports. It maintains a web site at <www.notredame.com>, and has a family of ten trademark registrations in the United States Trademark Office including NOTRE DAME and related marks.
The Complaint in this matter includes exhibits showing that Respondent operates a web site at <www.notre-dame.com>. Another exhibit to the Complaint is a copy of a letter signed by Carl White, Respondentís Billing Contact, responding to a letter from Complainant regarding Respondentís web site.
The Complaint further refers to a dispute between the parties regarding the use by Respondent of a logo that is the subject of another of Complainantís registered trademarks. This dispute has apparently been resolved by Respondentís voluntary discontinuation of use of the logo. Respondentís web site includes links to various advertisers, including gambling services and magazines with adult content that Complainant finds objectionable.
As of December 18, 2001, Respondentís web site includes, among other things, the following statements:
"Notre-Dame.com is a fans guide to buying and selling tickets to all Notre Dame Fighting Irish college football games, home and away."
"Notre-Dame.com is not affiliated with Notre Dame University or the NCAA in any way, but is simply a fan's guide and tribute to a great University and football program, Notre Dame. <www.webtickets.com> is a private ticket broker that specializes in premium seating and tickets to sold-out games."
5. Partiesí Contentions
A. Complainant contends that Respondentís use, without permission, of a domain name that is practically identical to Complainantís trademark and domain name is a violation of United States trademark law, on the grounds that it creates a likelihood of confusion and further constitutes unfair competition and dilution. Complainant further contends that the registration and use of the Domain Name violates all three elements of Paragraph 4(a) of the Policy, in that:
(i) the Domain Name is identical or confusingly similar to Complainantís trademark rights in NOTRE DAME; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
B. Respondent has not filed a Response in this proceeding, but the letter from Respondentís Billing Contact, Carl White, dated October 3, 2001, appears to set forth Respondentís position. Mr. White wrote to a representative of Complainant asserting that Respondent is a ticket broker conducting a legitimate business buying and reselling tickets to Complainantís football games and that there is no likelihood of confusion because of the nature of its web site and the fact that the web site includes a disclaimer of affiliation with Complainant.
6. Discussion and Findings
The Panel finds that Complainant has trademark rights in NOTRE DAME, based on its extensive use of the name and its U.S. federal registrations. The Panel finds that the Domain Name "is identical or confusingly similar to" NOTRE DAME. The Panel does not believe that the addition of a hyphen between NOTRE and DAME distinguishes the Domain Name from Complainantís trademark.
As to Respondentís rights or legitimate interests in respect of the Domain Name, Respondent argues (in the letter from Respondentís Billing Contact attached as an exhibit to the Complaint) that it has a legal right to resell Notre Dame football tickets and, therefore, that it has the right to use Complainantís name to attract customers to its web site. Without taking any position on the legality of Respondentís business, it does not necessarily follow that it has the right to use Complainantís name on the Internet in a manner that functionally serves as Respondentís business name, and the two names are, for all practical purposes, identical. The same letter argues that there is no deception and that Respondentís disclaimer, and the widespread mention of Complainantís name on other web sites, eliminate the possibility that anyone could believe that Respondentís web site is "part of Notre Dame University".
It may be true that a reasonably careful customer would understand, after entering Respondentís web site, that it is not Complainantís web site. This does not mean that such a customer would have such understanding before entering the web site. The Panel finds that there is a high likelihood of confusion arising from Respondentís use of the Domain Name.
The Panel finds that Respondentís use of the Domain Name does not fall within the concept of fair use as the term is used in Paragraph 4(c) of the Policy. The Panel finds that Respondentís use of the Domain Name has the capacity to "misleadingly divert consumers or to tarnish [Complainantís] trademark". Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel further finds that Respondentís registration and use of the Domain Name is in bad faith within the meaning of the circumstances defined in Paragraph 4(b) of the Policy. The Panel finds that Respondent is using the Domain Name to "attract, for commercial gain, Internet users . . . by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [its] web site . . ."
Pursuant to paragraphs 4 (i) of the Policy, and 15 of the Rules, the Panel directs that the Domain Name <notre-dame.com> be transferred to Complainant.
David W. Maher
Dated: December 19, 2001