WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bastyr University v. G N S Dauphin Revant
Case No. D2002-0574
1. The Parties
Complainant is Bastyr University, of Kenmore, Washington, United States of America ("USA"). Respondent is G N S Dauphin Revant, of Portland, Oregon, USA.
2. The Domain Name and Registrar
The domain name at issue is <bastyr.com>. The Registrar is eNom, Inc. of Redmond, Washington.
3. Procedural History
The Complaint was filed through the Centerís on line submission process on June 20, 2002, and was received in hard copy form on July 2, 2002. The Center acknowledged receipt of Complaint by e-mail on June 20, 2002. That same date, the Center contacted the Registrar to inquire whether it had received a copy of the Complaint, whether the domain name was registered with the Registrar, whether the Respondent is the current registrant, and the other information required pursuant to paragraph 2(a)(4) of the Rules for the Uniform Domain Name Dispute Resolution Policy ("UDRP Rules"). On July 24, 2002, the registrar e-mailed the Center, confirming that it had received a copy of the Complaint, that the domain name is registered with it, that Respondent is the current registrant of the domain name, that the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") applies to the domain name, that the domain name is currently in a "locked" status, that the language of the registration agreement as used by the registrant for the domain name is English, that the registrant has submitted to the jurisdiction of the principal office of the registrar for court adjudication of disputes concerning the domain name. The registrar also provided contact details from its WHOIS database for the registrantís technical contact, administrative contact and billing contact for the domain name.
On June 28, 2002, the Center again e-mailed the registrar to advise that its WHOIS results did not correspond with the registrant information listed in the registrarís previous e-mail. Specifically, the WHOIS results listed G N S/Dauphin as the registrant while the registrarís e-mail listed VNL, LLC and/or TCS Eugene as the registrant.
In a series of e-mails between the Center and the registrar it was established that the registrant information provided by the registrar was incorrect and the WHOIS information was correct. The proper registrant as listed in WHOIS information is G G N N L/Dauphin.
On June 28, 2002, the Center issued a Complaint Deficiency Notification to the Complainant. The Deficiency Notification indicated the Complaint was not submitted in an original and four copies, did not list the registrant of record for the domain name (G N L/Dauphin) as the Respondent, and did not describe adequately the grounds on which the Complaint was made as required by the UDRP Rules Paragraph 3(B)(ix).
On July 2, 2002, the Complainant e-mailed the Center to advise the original and copies of the Complaint document had been sent and should have been received by WIPO (which indeed they were on July 2, 2002), and that the information listed with the registrar for the Respondent was changed after the electronic portion of the Complaint was filed. The Complainant advised the Center that "over the past two + years, the Respondent has repeatedly changed their registration information while, to the best of our knowledge, the actual owner has remained the same."
On July 9, 2002, the Center requested the Complainant to amend the Complaint by July 14, 2002, or it would be necessary to terminate the case. On July 10, 2002, the Center specified the deficiencies in the Complaint and again advised the Complainant of the deadline to submit the amended Complaint of July 14, 2002. On July 12, 2002, Complainant submitted by e-mail an Amendment of Complaint. Hard copies were received by the Center on July 15, 2002. On July 18, 2002, the Center went through its formal requirements compliance checklist, and confirmed the Amended Complaint complied with the requirements of the UDRP Policy and Rules. That same day the Center issued a Notification of Complaint and Commencement of Administrative Proceedings, setting the deadline for a Response as August 8, 2002. The Notification was forwarded to the parties by e-mail, facsimile and mail, and to the Complainant by e-mail.
Later that same day, the Respondent e-mailed the Center to request an extension of the deadline until September 8, 2002. On July 19, 2002, Complainant filed a ís Response objectinged to the request for extension of time, on the basis the Respondent has not shown this is an "exceptional" case justifying a departure from the rules.
On July 22, 2002, the Center e-mailed the parties, advising that the Respondent may submit its response by the deadline of August 18, 2002.
On August 18, 2002, Respondent submitted its response to the Complaint by e-mail. The Center acknowledged receipt of the response by e-mail on August 19, 2002, and forwarded a copy to the parties by e-mail. On August 22, 2002, the Respondent e-mailed the Center to advise that the e-mail addresses listed in the response for the Respondent and his representative are "not presently working due to a DNS error." Respondent requested the Center to direct all e-mail correspondence to a different e-mail address.
On September 6, 2002, the Center issued its Notification of Appointment of Administrative Panel and Projected Decision Date, appointing the undersigned as panelist in this proceeding and setting a deadline for issuance of the decision as September 20, 2002. This communication was forwarded to the parties by e-mail.
4. Factual Background
Complainant Bastyr University was founded in 1979. It amended its corporate name to the John Bastyr College of Naturopathic Medicine in 1989, and listed its official name as Bastyr College. In 1992, the College changed its name again to Bastyr University. The University offers degrees in fields of natural, complementary and alternative medicine, including acupuncture, oriental medicine, dietetics, naturopathic medicine, and other related subjects.
Defendant G N L/Dauphin LeMonde currently has linked the domain name <bastyr.com> to a web page with the notice "coming soon Ďyour "firstname.lastname@example.orgí " - keep checking for launch date and details! Are you looking for a Bastyr? We recommend ussearch.com!" The words "ussearch.com" on the website are a hyperlink to search engine named USSEARCH.COM." Previously, the domain name was linked to the website of <speedydomains.com>, a domain name registrar.
5. Partiesí Contentions
Complainant asserts that it was founded in 1979, to train naturopathic physicians using a scientific approach; that it is widely known as a pioneer in the field of natural, complementary, and alternative medicine, and one of the first US institutions in the field of science-based natural medicine. Complainant asserts it is preeminent internationally in its field, and submitted copies of articles which, Complainant asserts, demonstrate the widespread fame and reputation of its name.
Complainant asserts that it advertises and promotes the BASTYR mark and name through its website, academic publications, national magazines and newspapers, and has expended substantial amounts of money in this effort. Complainant argues that it has become known simply as "Bastyr," in the same way other U.S. colleges and universities are widely recognized by their first name.
Complainant asserts its mark and name have been in exclusive use for 24 years in connection with its educational treatment and research programs, and that its name and mark have become firmly and exclusively associated with the institution. Complainant asserts that as a result of this history, its name and mark have become well established and famous throughout the US and overseas in the relevant field. Complainant argues that the domain name <bastyr.com> could only be associated with Complainant, and therefore use of the domain name by an unaffiliated third party is misleading to the public.
Complainant asserts that it has acquired rights in its unregistered trade and service mark BASTYR; due to its extensive reputation, goodwill and investment in its name and mark, it owns common law rights under U.S. law in the mark and name BASTYR and would be entitled to bring an action for trademark infringement and passing off against any party which sought to infringe those rights.
Complainant asserts it maintains a website at "www.bastyr.edu" and has registered other corresponding domain names including <bastyr.org>, <bastyr.net>, and <bastyruniversity.com> ".net" and ".org". Complainant asserts that approximately 23,500 unique visitors view its webpage each month.
Complainant asserts that Respondent registered and used the domain name <BASTYR.com> in bad faith because (1) Respondent has never used the domain name to advertise or offer any information, goods or services; (2) Respondent was aware of Complainantís mark and rights at the time he registered the disputed domain name; (3) given the fame of Complainantís BASTYR mark and Respondentís lack of non-commercial or fair use of the mark, the Respondentís primary intention in registering the domain name was to prevent the Complainant from using the domain name as its proper right; and (4) Respondent provided false contact information to its registrar.
Specifically, Complainant asserts that Respondent used the disputed domain name as a pointer to an unrelated commercial web sitewebsite at <speedydomains.com>, which advertises the goods and services of parties not affiliated with the Complainant. Complainant provided a screen print of a website linked to the domain name <bastyr.com>, which promoted listed the services of a domain name registrar. The name BASTYR does not appear on the screen print, other than where it is typed in as the address for the web page.
Complainant asserts that the domain name is identical and confusingly similar to Complainantís unregistered trademark and trade name Bastyr, which Complainant asserts is distinctive and enjoys wide recognition in its industry.
Complainant asserts that Respondent has no rights or interests in its domain name because the disputed domain name is used only as a pointer to <speedydomains.com>, that there has been a lack of bona fide activity on the site since the time of registration and that Respondentís stated intentions of making legitimate use of the domain name in the future cannot establish current legitimate rights in the Respondent.
Specifically, Complainant asserts that Respondent has indicated to Complainant in communications that Respondent has future plans to use the domain name <bastyr.com> to provide e-mail services to people with the last name Bastyr. Complainant asserts this assertion is not credible because Respondent has been associated with the registrant of this domain name for a very long time, and has never made use of the domain name except as a pointer to another web sitewebsite. Complainant also asserts that Respondentís proposed use is objectively implausible because the term "Bastyr" does not appear as a common surname in U.S. Census records. Complainant asserts that Respondent could not use the domain name without the potential for consumer confusion with Complainantís famous trade name and trademark.
Complainant asserts that Respondent registered and is using the domain name in bad faith because Complainantís name BASTYR had become so well known in connection with Complainantís business that the Respondent had to know about it, and therefore Respondentís registration of the mark in the domain, without justification, is proof of bad faith. Complainant asserts that Respondent is "taking a free ride on the fame of Complainantís mark to attract interested website visitors to sites affiliated with his own, unrelated business. Consumers would expect to find Complainant at the domain name address comprised of Complainantís name, particularly since Complainant owns virtually all the other domain names which correspond to its mark and name, and uses the internetInternet extensively to present information about its services."
As additional evidence of bad faith, Complainant asserts that Respondent used a false address and telephone number in registering the domain name in dispute, and that Respondent has deliberately concealed his identity to hide a long-standing connection with the past registrants of this domain name. Specifically, Complainant asserts that the present registrant, Dauphin Revant, is the alter-ego of Fin LeMonde and Russ Wilson, and that the same person is the true owner and operator of all these entities and web sitewebsites. Complainant asserts that "Respondent is trying to make it difficult to be caught committing acts of cyber-squatting by, among other things, by not giving his real name, using pseudonyms or a variety of different names and fictitious company names, using different registrars, and using addresses outside of the country when he appears to be actually located somewhere in the United States."
Finally, Complainant asserts that Respondent "and his proxies have a history of registering domain names, some of which are identical or confusingly similar to registered trademarks, and of holding the domain names without any intention of using them legitimately." Complainant supported this assertion with an affidavit, but did not attach a listing of such domain names.
Respondent asserts Complainantís claim that BASTYR is famous and distinctive are "overblown"; that Complainant is a small institution with a current enrollment of about 1,000 students which is not well-known outside of its specialty of naturopathic medicine. Respondent asserts that a newspaper article submitted with the Complaint characterizing the Complainant as "widely acknowledged to be the leading university for natural health sciences in the U.S." was a paid press release using the Complainantís own words, not a work of independent journalism.
Respondent asserts that Complainant never made trademark claims to either Bastyr Bastyr University or BASTYR alone, nor did it ever provide constructive notice of such a claim under Washington State or U.S. law, or provide legal notice of the trademark in any form.
Respondent asserts that in a telephone conversation with Complainantís employee, the employee stated that the Complainant "doesnít have a trademark." Respondent asserts that Complainantís claim that BASTYR is famous and distinctive is controverted because an unrelated consulting firm by the name of Bastyr Group, with its own web page at "www.bastyrgroup.com", has been in operation for several years.
Respondent asserts that even if Complainant did establish common law rights to its name, such rights would only extend to the states in which the right holder actually engages in commercial activity, and that since Complainant operates only within the state of Washington, such rights would not affect the activities of the Respondent, who is located in the state of Oregon.
Respondent asserts that it is utilizing the domain name legitimately to direct visitors to a professional "people searching" service as well as to advertise a planned e-mail service. Respondent further asserts that Bastyr is a common surname in the U.S. and Europe, and that there are at least 100 Bastyrs in the state of Minnesota alone.
Respondent asserts that it lacks bad faith in registration and use of the domain name because the "several hundred" domain names he owns "are to the very best of knowledge generic terms and phrases, geographical place names, surnames, as well as many Ďcatchy phrasesí that he himself coined." Respondent asserts that he has never been shown to be engaged in the pirating or infringing of trademarks. Respondent asserts that Complainant has failed to present evidence supporting the assertion that Respondent was aware of Complainant and its alleged trademark. Rather, Respondent asserts that he was not aware of Complainantís existence let alone any trademark claims at the time he registered the domain name. Respondent asserts that Complainant itself concealed its identity in correspondence with the Respondent, and that the representative of Complainant who contacted Respondent by e-mail never identified himself as working for Complainant nor made a trademark claim.
Respondent asserts Complainantís assertion that 23,500 unique visitors per month visit its web sitewebsite serves as evidence that these InternetInternet users "had no trouble finding Complainant despite the existence of Bastyr.comÖ"
Respondent asserts he has never attempted to sell the domain name to anyone at any time, and instead turned away what he was led to believe was a bona fide inquiry to purchase the domain name.
Respondent asserts that he did not provide false contact information, but that his "full legal name" is in fact Dauphin Revant LeMonde, he often goes by "Fin LeMonde" and is well known throughout the domain name industryÖ" Respondent asserts that the contact information errors which Complainant deems fraudulent were merely "typographical and abbreviatorial errors"; asserting that (for example) his listing of "Port, Or" was merely an abbreviation for Portland, Oregon.
Respondent claims he "has in the past caused the name to be transferred between various corporate entities under his authorityÖ", but that this does not indicate a pattern of deception; rather, that the transfers were made for "legitimate restructuring purposes" and not to hide Respondentís identity. Respondent asserts that he has "received all U.S. . Postal mail and Fed Ex deliveries sent to Respondent at any address."
6. Discussion and Findings
A. Applicable Policy Provisions
The UDRP Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) The 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.
UDRP Policy, Section 4(a).
It is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Fedín Entmít, Inc. v. Bossman, WIPO Case No. D99-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
i) Circumstances indicating that [the Registrant has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
ii) [The Registrant has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Registrant has] engaged in a pattern of such conduct; or
iii) [The Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) By using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, InternetInternet users to [its] web sitewebsite or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web sitewebsite or location or of a product or service on [its] web sitewebsite or location.
UDRP Policy, Section 4(b). These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:
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 or 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 divert customers or to tarnish the trademark or service mark at issue.
UDRP Policy, Section 4(c).
B. Opinion of the Panel
1. Is the domain name identical or confusingly similar to a trademark in which Complainant has rights?
The word BASTYR is derived from a surname, as the Complainant was named for its foundersí teacher, Dr. John Bastyr. While the name may be unusual in some places, listings such as that produced by Respondent indicate a number of Bastyrs living in the United States. As such, the name will likely be perceived as a surname, which must acquire distinctiveness in order to serve as a trademark. 2 McCarthy on Trademarks, ß ß 13.2 and cases cited therein (2002).
Complainantís submission of evidence supporting its claim for continuous use to promote services since 1979, makes a case for distinctiveness. Complainantís Complaint is supported by articles in the trade referencing it as BASTYR rather than just "Bastyr University." That combined with its lengthy use of the term in connection with its educational facilities appear to provide Complainant with common-law trade name and service mark rights in the name BASTYR, which is identical to the term "Bastyr" in the domain name in dispute.
While Complainant has made a case that its use of the mark is sufficient to show BASTYR has acquired distinctiveness, the quantum of evidence was insufficient to show the mark was strong and well-recognized by a substantial segment of the public. The significance of this will be discussed below with regard to bad faith.
2. Does Respondent have no rights or legitimate interest in the domain name?
Likewise, it appears Complainant has demonstrated that Respondent has no rights or legitimate interest in the domain name. Respondent has made no use of the domain name in connection with the bona fide offering of goods and services, nor made demonstrable preparations for the same prior to receiving notice of the dispute. Further, of the names by which Respondent has apparently been known, none are "Bastyr." Finally, since there is no use of the domain name other than as a pointer or placeholder, Respondent cannot (and does not) claim he is making a legitimate non-commercial or fair use of the domain name.
3. Was the domain name registered and used in bad faith?
Complainantís complaint falls short in the area of bad faith. In essence, Respondentís asserted acts of bad faith are (1) registering the domain name <bastyr.com> when it should have known of Complainantís existence; (2) registering several unidentified domain names which are asserted to be identical or confusingly similar to registered trademarks and holding them without intention to use them legitimately; (3) providing incomplete or inaccurate information to the Registrar, and (4) transferring the domain name repeatedly from one related entity to another.
While Complainant has proved that use of its name is sufficient for BASTYR to acquire significance as meaning the services provided by Complainant, Complainantís evidence fell short of proving that the impression its name made was strong enough or known widely enough that Respondent should be expected to be aware of it. In particular, there was no evidence either that Complainant publicized its services or received publicity in Oregon (where Respondent is located), or that it offered or promoted its services to audiences outside its field of naturopathic medicine. Therefore, this panel cannot conclude that Respondent should have been aware of Complainant when the domain name was registered.
Complainant asserts that Respondent registered many other domain names confusingly similar to registered trademarks without intent to use them legitimately. However, Complainant failed to provide evidence of any of these domain names, and therefore the Panel cannot evaluate this assertion.
Further, in view of the fact that Respondent received all communications directed to it by Complainant, and that at least some of the incorrect entries in Respondentís contact information were clearly abbreviations or misspellings, the quantum of evidence arrayed against Respondent does not rise to the level of abusive registration of the domain name. Respondent may be in the business of warehousing domain names; however there is insufficient proof that Respondent has knowingly registered trademarks (and in particular, Complainantís mark) with the intent of blocking or diverting traffic, or extorting money for their sale. For this reason the case cited by Complainant, A. H. Belo Corporation v. King TV and Five Kings, WIPO Case No. D2000-1336, is inapposite. In that case Plaintiff had a registered trademark which is prima facie distinctive and which provides constructive notice nationwide.
For the reasons stated hereinabove, and pursuant to Paragraph 4(i) of the UDRP Policy, and Paragraph 15 of the UDRP Rules, this Panel denies the remedy requested by Complainant.
Jordan S. Weinstein
Dated: October 4, 2002