WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
University of Maryland University College
Nucom Domain Brokers & Urban Music Underground Club
Case No. D2002-0081
1. The Parties
The Complainant is University of Maryland University College, a public university constituted under Maryland law with its principal place of business at Adelphi, MD, United States of America. The Complainant is represented by the Assistant Attorney-General for the State of Maryland, Ms Jessica V Carter of Baltimore, MD, United States of America.
Until January 30, 2002, the registrant of the disputed domain name was Nucom Domain Name Brokers of Inverness, Scotland, United Kingdom (NDNB). After that date the registrant purported to be changed to Urban Music Underground Club of Dublin, Ireland (‘the Club’). The Panel will consider later in this decision the question of the appropriate Respondent(s).
2. The Domain Name and Registrar
The domain name at issue is <umuc.com>. Up until January 30, 2002 the domain name was registered with: Holdings.com, Inc. (trading as DotRegistrar.com) of Miami, FL, United States of America (‘the First Registrar’). After that date, the domain name was registered with Gandi Sarl of Paris, France (‘the Second Registrar’). The domain name was first registered on April 12, 1999.
3. Procedural History
The Complaint submitted by the above Complainant was received on January 25, 2002, (electronic version) and January 28, 2002, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center"). The Complainant served by Federal Express a copy of the Complaint and all annexures on NDNB in Inverness on January 29, 2002 and on the First Registrar in Miami on January 28, 2002.
On January 31, 2002, a request for Registrar verification was transmitted by the WIPO Center to the First Registrar, requesting it to:
-Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), Paragraph 4(b).
-Confirm that the domain name at issue is registered with the First Registrar.
-Confirm that the person identified as the Respondent is the current registrant of the domain name.
-Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
-Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") is in effect.
-Indicate that, under the Registration Agreement, the registrant submitted to the jurisdiction of the Courts as provided in the Policy.
-Indicate the current status of the domain name.
-Indicate the language of the Registration Agreement.
By email dated February 4, 2002, the First Registrar simply advised WIPO Center that it was not the Registrar of the domain name registration <umuc.com>.
-It had received a copy of the Complaint from the Complainant.
-NDNB had ceased to be the "current registrant" of the domain name as at January 30, 2002.
By reply dated February 7, 2002 in response to the WIPO Center’s request of February 5, 2002, the Second Registrar advised that the domain name was registered with it. The Club was the registrant. The UDRP applied to the domain name, which was in locked status. The language of the agreement was English and an appropriate acknowledgement of Court jurisdiction was found in the registration agreement. Robert Maguire of the same Dublin address as the Club was the administrative, technical and billing contact. The Second Registrar had not received a copy of the Complaint.
Both Registrars have currently incorporated in their agreements the UDRP adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
On February 8, 2002 (email) and on February 12, 2002 (hard copy) the Complainant filed an Amended Complaint which referred to the change in registrants and Registrars and sought to name the Club as an additional Respondent.
The advice from the Second Registrar that the domain name in question is in ‘locked’ status indicates the Club has not requested that the domain name at issue be deleted from the domain name database. It has not sought to terminate the agreement with the Second Registrar. Neither NDNB nor the Club has challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on February 19, 2002, transmitted by post-courier and by email a notification of the Complaint, Amended Complaint and Commencement of Administrative Proceedings to NDNB and the Club. Copies of the same documents were also emailed to the Second Registrar and to ICANN.
The recipients were advised that a Response to the Complaint was required within 20 calendar days in accordance with the Rules, by four sets of hard copy and by email.
A Response was received by the WIPO Center from the Club on March 8, 2002 (electronic) and March 14, 2002 (hard copy). No Response was filed by NDNB.
The Complainant had requested a three-member Panel and has paid the sum due to the WIPO Center.
WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It invited Mr. James Bridgeman of Dublin, Ireland and Mr. M Scott Donahey of Palo Alto, CA, United States of America to be Panelists. It transmitted to each of them a statement of acceptance and requested a declaration of impartiality and independence.
All Panelists duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules. The Complainant has paid the appropriate fees to WIPO Center.
On April 15, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Paragraph 5(b) of the Rules, in the absence of exceptional circumstances, the Panel is required to forward its decision by April 29, 2002.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint and the Amended Complaint meet the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a public University based in the state of Maryland, United States of America with some 38,479 students (as at 2001). It has various locations in the United States of America, Europe and Asia. It offers a variety of degrees in several disciplines and employs 5,000 faculty and general staff worldwide. It specializes in the provision of distance learning – particularly for the United States armed forces.
Complainant is commonly known by the acronym UMUC. It has US service marks registered for this name for educational services. One was registered on March 6, 2001, the other on June 22, 1999.
In the summer of 2001, the web page for <umuc.com> featured a ‘for sale’ announcement which prompted an inquiry from the Complainant. On June 20, 2001 a Mr. Andrew Foster on behalf of NDNB offered to sell the name for $89,500 or lease it for $1,790 per month. On August 2, 2001 Complainant’s attorney sent a ‘cease and desist’ letter to NDNB to which there was no reply. As at December 5, 2001 the web site still announced that the disputed domain name was for sale. A search by the Complainant in August 2001 on the Whois database showed the Respondent’s address as Jersey, Channel Islands.
The Club claims to be known as UMUC throughout the wider music community in Ireland. It has 153 active members in Dublin.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s marks.
NDNB is in the business of brokering or selling domain names for profit and does not use the disputed domain name for the legitimate offering of goods and services or for any legitimate non-commercial or fair use without intent for commercial gain.
It acquired the name primarily for the purposes of selling or leasing it for valuable consideration and therefore, by reasons of its offer to Complainant, is acting in bad faith, which can also be inferred from its lack of response to the ‘cease and desist’ letter.
The name was transferred by NDNB in violation of Para 8 of the Policy.
There are no marks registered in the US or the European Community for UMUC other than the Complainant’s.
The Club, in the document filed on its behalf by its secretary, Robert Maguire, contacted NDNB in May 1999 about purchasing the name. After initial discussions which were inconclusive, the Club settled on a purchase price with NDNB in November 2001. The transaction was completed on January 23, 2002. On January 30, 2002, the registration of the name was transferred to the Second Registrar, the Club’s preferred Registrar.
On February 5, 2002, Ms. Carter, on behalf of the Complainant, offered to purchase the name for $1,000.
The Club had no knowledge of the Complaint with WIPO until February 8, 2002.
The Club has never used the name in bad faith, but for the benefit of its members. All will have an opportunity to have a permanent web page and email address when the site is developed. The site will publicize the Club’s activities.
6. Determination as to who is the Proper Respondent
Before considering the merits of the Complaint, the Panel must determine who is the proper Respondent.
Under the Policy, a registrant may not transfer a Domain Name registration to another holder or another Registrar during a pending proceeding under the Policy or for 15 business days after its conclusion. The Complaint is initiated by the trademark owner sending a properly constituted Complaint to any provider provided by ICANN – Rule 3(a). A copy must already have been sent to the Respondent by the Complainant – Rule 3(b)(xii). The date of commencement of the proceeding is the date on which the provider completes its responsibilities in connection with forwarding a copy of the Complaint to the Respondent (after checking all the formalities, which can take several days) – Rule 4(c). Quick-witted Respondents may seek to escape the jurisdiction of the Panel by transferring the Domain Name to a new holder or to a new registrar after receipt of the copy of the Complaint, but before the formal commencement of the proceeding. Neither a change of registrant nor even of registrar affects the proceedings. (See British Broadcasting Corporation v. Data Art Corporation/Stoneybrook, WIPO Case No. D2000-0683; Kabushiki Kaisha Isetan v. Stars Web International and Isetan Inc., WIPO Case No. D2001-0732). It is the view of this Panel that an order for transfer of the Domain Name may be made against both NDNB and the Club to the Complainant, if the requisite elements of the Policy have been proved on a preponderance of the evidence. (See also AT & T Corp v. WNZ (and aliases) WIPO Case No. D2001-1160). The above paragraph is a modified quotation from the decision in that case.
The Panel considers that by filing a Response, the Club must be taken to have consented to being joined as a Respondent, even although the correct Respondent is NDNB.
However, in view of the disregard of the Policy by NDNB and the First Registrar – both of whom had notice that the Complaint had been filed – the Panel’s inquiry must focus, not on the Club, but on NDNB. Even if what the Club says is correct and it was a beneficial but unregistered owner, at the date the Complaint was filed, NDNB was the registrant as at that date and must therefore be the focus of the Panel’s consideration.
The register maintained by an ICANN registrar must provide accurate information as to the identity of domain registrants. The human person or other legal entity shown as the registrant must be assumed to be such by third parties seeking to ascertain a registrant’s identity by such means as a Whois search. There is no place for the registration of bare trustees or agents for unnamed beneficiaries, principals or would-be purchasers. In that respect, a domain name register is like the register for land and shipping under the Torrens system found in many common law jurisdictions. In other words, the register is everything: no unregistered interests can prevail against the interests of bona fide third parties relying on information available on the register for all the world to see.
7. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under Paragraph 4(a) of the Policy, is to show:
-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;
-That the Respondent has no legitimate rights or interests in respect of the domain name; and
-The domain name has been registered and is being used in bad faith.
In the view of the Panel, the disputed domain name is identical to the registered service marks in which the Complainants has rights. That fact is sufficient to enable the Complainant to satisfy the first criterion under Paragraph 4(a) of the Policy.
The Complainant gave the NDNB no rights or legitimate interests in the disputed domain name. NDNB has no trademark or service mark registrations. That finding can sometimes be sufficient for the Complainant to discharge the initial evidential burden in the second criterion. Paragraph 4(c) of the Policy indicates that a Respondent can demonstrate rights or legitimate interests in the domain name. Thus:
(i)before any notice to you of the dispute, your use of or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii)you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii)you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly direct customers or to tarnish the trademark or service mark at issue.
However there is no evidence from NDNB to warrant an enquiry by the Panel on whether NDNB comes within any of the limbs of Paragraph 4(c) of the Policy. The second criterion is proved.
However, the Panel is unable to infer that NDNB registered the name in bad faith. The Complainant enjoys, obviously, a large reputation in its home state and no doubt its mark ‘UMUC’ is well-known there. However, its mark as an educational institution cannot be said to be such as might command world-wide recognition such as the mark ‘MIT’ or ‘LSE’. The Complainant offered no evidence as to the extent of its outreach in the United Kingdom. It provided media articles about its distance education programmes – particularly for US forces. Nothing in this material could create an inference that the mark was known in Scotland at the date of registration.
The Panel cannot infer that a registrant in Scotland would know of the fame of the Complainant’s mark at the date of registration. There are no trade or service registrations of the mark in the United Kingdom or the European Union. The case is no different from the many WIPO cases where a trademark owner in Country A is unable to produce evidence from which a Panel can infer that a domain name registrant in Country B would or should have known of the fame of the mark. (See KCTS Television Inc v. Get-on-the-Web Ltd, WIPO Case No.D2001-0154 and VZ Vermögens Zentrum AG v. Anything.com, WIPO Case No.D2000-0527).
The bare assertion that NDNB is a dealer in domain names, without more, is insufficient to discharge the burden of proving bad faith registration. The mark is a combination of four letters which does not suggest anything or anywhere in particular. Dealers frequently deal in names consisting of such combinations of letters. Consequently, the Panel finds the third criterion not proved and the Complaint must be dismissed.
The Panel decides that:
The Complaint be dismissed.
Hon. Sir Ian Barker QC
Mr. M Scott Donahey
Mr. James Bridgeman
Dated: April 29, 2002