WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Board of Regents of the University of Nebraska v. Karolek
Case No. D2003-0307
1. The Parties
The Complainant is The Board of Regents of the University of Nebraska, of Lincoln, Nebraska, United States of America, represented by Senniger, Powers, Leavitt & Roedel of United States of America.
The Respondent is Karolek, n/a, Poland.
2. The Domain Name and Registrar
The disputed domain name <huskerfevercard.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 22, 2003. On April 23, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On April 24, 2003, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the incomplete contact information as indicated above for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2003.
The Center appointed Howard P. Knopf as the sole Panel in this matter on June 4, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
A date for decision was set for June 18, 2003.
4. Factual Background
The Panel accepts the following as non-contested facts based upon the record as filed, and in the absence of any submission by the Respondent.
The Complainant, a university in Nebraska, U.S.A. owns several trademarks that are registered in the United States Patent and Trademark Office ("USPTO") incorporating the word HUSKER. The most relevant is HUSKER FEVER, registration number 2, 546, 473 registered March 12, 2002. The USPTO registration indicates that the mark is registered for printed material, namely posters, brochures containing information about a fan loyalty program, cards used to participate in a fan loyalty program, decals and stickers and for services, namely promoting fan loyalty to the athletic teams of the University of Nebraska by offering discounts and special offers on the goods and services of sponsors, free merchandise, and purchase points from the use of fan membership cards.
The Complainant established a website named "www.huskerfevercard.com" at an unstated time, but has supplied a copy of a version obtained from "www.archive.org" of portions of the website as it existed on June 19, 2000. This material confirms the efforts of the Complainant to market a "loyalty program" with cards using the website.
For reasons which are not explained in the Complaint, the Complainant discontinued its "www.huskerfevercard.com" website on April 1, 2002, when it discontinued its HUSKER FEVER CARD program.
The Respondent registered the domain name in dispute, namely <hukserfevercard.com> on October 3, 2002, just over 6 months after the Complainant’s domain name registration for the exact same domain name had lapsed.
The domain name is said by the Complainant to now be used to divert or transfer visitors to "www.exquisiteasians.com," a pornographic website. However, at the time of preparation of this decision (June 17, 2003), the Panel found that the disputed domain name merely returns an error message when access is attempted.
5. Parties’ Contentions
The Complainant alleges that it has a trademark registration for HUSKER FEVER and that it has common law trademark rights for HUSKER FEVER CARD.
The Complainant alleges that that the Respondent’s domain name is confusingly similar to its registered trademark and essentially identical to its unregistered trademark HUSKER FEVER CARD, the addition of ".COM" as the gTLD being irrelevant.
The Complainant alleges the Respondent’s use of a lapsed domain name to divert traffic to a pornographic website constitutes bad faith, and that the failure of the Respondent to provide full contact information or to respond to e-mail efforts at contact also constitute bad faith.
The Respondent did not reply to the Complainant’s allegations and is in default.
6. Discussion and Findings
The Complainant must prove the classic trilogy of elements. According to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights; and
(ii) The 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.
In a default situation, the Panel may draw such inferences as it deems appropriate (paragraph 14(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). While the Complaint will not necessarily be accepted at face value in a default situation, in this instance the Complaint is carefully prepared, well reasoned and adequately documented in terms of evidence.
Turning to each of these elements, the Panel finds as follows.
A. Identical or Confusingly Similar
There can be no doubt that the Respondent’s domain name is confusingly similar to the Complainant’s registered trademark for HUSKER FEVER and is essentially identical to the Complainant’s common law trademark.
The frank admission by the Complainant that it let the domain name registration lapse and that it has discontinued its HUSKER FEVER CARD program gives some pause for concern by the Panel as to whether the key relevant trademark may have been "abandoned" under American law.
However, there can be no presumption of abandonment pursuant to the three year rule set forth under the Lanham Act § 15 U.S.C.A § 1127 since the Complainant’s evidence is that the mark was in use up until April 1, 2002.
While litigation (to which this proceeding is analogous) "does not substitute for the required use of the mark in the marketplace", there is no evidence on record of "intent not to resume." In the absence of any submissions from the Respondent, the Panel is not about to venture any further as to whether the key relevant trademark has been abandoned. However, just as the trademark system does not encourage warehousing of unused trademarks, the UDRP system should not serve to encourage indefinite time to reclaim lapsed – especially deliberately lapsed – registrations. However, this is not the case in which this point need or should be pursued.
The Panel is satisfied that the Respondent is using a domain name that is identical or confusingly similar to a registered and unregistered trademark in which the Complainant has valid and subsisting rights.
B. Rights or Legitimate Interests
The Respondent has put in no evidence or submissions. The Panel must accept the Complainant’s unanswered allegation that the only use of the disputed domain name at the time the Complaint was filed was to divert to a pornographic site. At the time of decision, repeated attempts to visit the website resulted only in error messages. The Panel can only infer that the Respondent has deactivated the diversion operation at this time and must accept that it was in place at the time of the Complaint.
Since the Respondent’s name appears to be KAROLEK, which bears no resemblance to the disputed domain name, it is not apparent in the absence of any evidence how the Respondent could possibly claim any rights or legitimate interests in the disputed domain name based upon his or her own name.
C. Registered and Used in Bad Faith
As to bad faith, there are numerous previous decisions holding that the use of a domain merely for referral or affiliation purposes, especially to pornographic websites, can constitute bad faith. There is a well known practice by which the referral website owner can benefit financially from such links, even if the said owner does not actually operate the pornographic websites to which he provides the link. This is the uncontradicted allegation in this instance. The use of a lapsed domain name to divert traffic to pornographic websites has been held to constitute bad faith. It is unnecessary to consider the further allegations of bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <huskerfevercard.com> be transferred to the Complainant.
Howard P. Knopf
Dated: June 18, 2003
1. Unregistered or common law trademarks
may also form the basis of a Complaint. See MatchNet plc. v. Mac Trading, WIPO
Case No. D2000-0205
2. McCarthy on Trademarks, § 17:11
3. McCarthy on Trademarks, § 17:11
4. McCarthy on Trademarks, § 17:20
5. See Geocities v. Geociities.com, WIPO Case No. D2000-0326 and Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370.
6. Pedro Latorre Beroiz v. Domain Strategy, Inc., D2002-0508 (registering a lapsed domain name and directing it to a pornographic website "raises an overwhelming presumption" that the registration and use of the domain name is in bad faith).