WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
President and Fellows of Harvard College v. Resource Marketing
Case No. DBIZ2002-00021
1. The Parties
The Claimant is President and Fellows of Harvard College, a charitable corporation organized and existing under the laws of the Commonwealth of Massachusetts, having its principal place of business at Massachusetts Hall, Cambridge, Massachusetts, United States of America.
The Respondent is Resource Marketing, an entity with a mailing in Greensboro, North Carolina, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <harvard.biz>, which domain name is registered with 123 Registration, Inc., having its principal place of business at Sarasota, Florida, United States of America ("123").
3. Procedural History
Complainant filed a STOP Complaint with the World Intellectual Property Arbitration and Mediation Center ("the Center") on April 22, 2002. The Complainant has standing to file such a Complaint, as Complainant timely filed the required Intellectual Property (IP) Claim Form with the registry operator, NeuLevel. As an IP Claimant, Complainant noted its intent to file a STOP Complaint against Respondent. The Center transmitted an Acknowledgement of Receipt of Complaint on April 23, 2002.
The Center verified that the Complaint satisfied the formal requirements of Start-Up Trademark Opposition Policy for .biz ("STOP Policy"), the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules"). The Panel has independently determined and agrees with the assessment of the Center that the Complaint is in formal compliance with the requirements of the STOP Policy, the STOP Rules, and the WIPO Supplemental STOP Rules. The required Panel fees were paid on time and in the required amount by Complainant.
No deficiencies having been recorded, on April 27, 2002, A Notification of STOP Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent (with Copies to the Complainant, eNom, and ICANN), setting a deadline of May 19, 2002, by which the Respondent could file a Response to the Complainant. The Commencement Notification was transmitted to the Respondent by email to the email addresses indicated in the Complaint and specified in NeuLevel's WHOIS database. In addition, the Complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the STOP Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On May 24, 2002, not having received a formal Response, the Center sent the Respondent a Notification of Respondent Default.
On June 28, 2002, having received his Statement of Acceptance and Declaration of Impartiality, the Center appointed M. Scott Donahey to serve as Panelist in this matter and forwarded to the parties a Notification of Appointment of Panel.
4. Factual Background
Complainant was established in 1636 and is the holder of several trademarks for HARVARD. Complainant first used the HARVARD mark in commerce in 1638, and Complainant has continuously used the mark in connection with the promotion and sales of various services. Since at least as early as 1827, Complainant has used the HARVARD mark in connection with the promotion and sale of various goods. Complainant's first registered trademark for HARVARD dates to 1990. Complaint, Annex E.
Respondent is not licensed to use Complainant's trademarks, nor is there any other relationship between the parties that would entitle Respondent to use the mark.
On March 27, 2002, Respondent registered the domain name at issue. Complaint, Annex A. Respondent has made no use of the domain name at issue. Complaint, Annex H. On April 16, 2002, Complainant sent Respondent a cease and desist letter by certified mail. Complaint, Annex J. On April 17, 2002, Complainant received an email from Respondent offering to sell the domain name at issue for $2,000. Complaint, Annex K. Complainant did not respond thereto.
5. Parties’ Contentions
Complainant contends that the domain name at issue is identical to Complainant's HARVARD mark. Complainant contends that Respondent has no right or legitimate interest in respect of the domain name at issue, and that Respondent has registered the domain name at issue in bad faith.
Respondent does not contest Complainant's allegations.
6. Discussion and Findings
Paragraph 15(a) of the STOP Rules provides that the Panel is 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."
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered in Intellectual Property IP claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the .biz generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant's Rights in the Mark
Complainant has rights in the mark HARVARD as demonstrated by its registered trademarks.
Rights or Legitimate Interests in Respect of the Domain Name at Issue
Respondent makes no assertion of rights or legitimate interests in respect of the domain name at issue. Where Complainant asserts that Respondent has no rights or legitimate interests and where Respondent fails to contest such assertions, the Panel is entitled to infer that Respondent has no such rights or interests. See, e.g., Sarna Kunststoff Holding AG v. Coldwell Banker Burnet, WIPO Case No. DBIZ2001-00038.
Bad Faith Registration or Bad Faith Use
Under the STOP Policy, Complainant must only show either bad faith registration or bad faith use, not both as are required under the UDRP. Here, as in most cases likely to be brought under the STOP Policy, there has been no use. The question arises, how is the Complainant to show bad faith registration.
In the present case Respondent offered to sell the domain name at issue to Complainant for $2,000. Complaint, Annex K. The registration fee normally charged by 123 is $63 for a two-year period. Complaint, Exhibit M. This is the precise conduct that the STOP Policy, Paragraph 4(b)(i) identifies as bad faith registration or use. See, also, Fisher Communications, Inc. v. Escape Ventures, Inc., WIPO Case No. DBIZ2001-00041.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent has registered or is using the domain name in bad faith. Accordingly, pursuant to Paragraph 4(i) of the STOP Policy, the Panel requires that the registration of the domain name <harvard.biz> be transferred to the Complainant.
M. Scott Donahey
Dated: July 11, 2002