WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Board of Trustees of the University of Arkansas v. Freedom Domains
Case No. D2004-0130
1. The Parties
The Complainant is the Board of Trustees of the University of Arkansas, the governing board of the University of Arkansas, a public institution with a place of business in Little Rock, Arkansas, United States of America, represented by Williams & Anderson PLC, United States of America.
The Respondent is Freedom Domains, with an address in Bronx, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <universityofarkansas.com>, is registered with Intercosmos Media Group, doing business as directNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on February 18, 2004. On February 19, 2004, the Center transmitted by e-mail to Intercosmos a request for registrar verification in connection with the domain name at issue. On February 19, 2004, Intercosmos transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 26, 2004. The Center verified that the Complaint, together with the amendment, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
In accordance with Rules 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 1, 2004. In accordance with the Rule 5(a), the due date for Response was March 21, 2004.
No response was received from Respondent by the March 21, 2004, deadline. On March 23, 2004, the Center transmitted to Respondent, via e-mail, a Notification of Respondent Default.
The Center appointed Debra J. Stanek as the sole panelist in this matter on April 1, 2004. 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 Rule 7.
4. Factual Background
Complainant is the owner of United States federal trademark registrations and numerous foreign trademark registrations for UNIVERSITY OF ARKANSAS marks for "educational services" and other goods and services. Complainantís registration for the word mark UNIVERSITY OF ARKANSAS for educational services claims a date of first use of May 8, 1899. Complainant has used the UNIVERSITY OF ARKANSAS mark for over 100 years and has acquired rights in the mark under U.S. common law.
According to the Complaint, as of February 16, 2004, Respondent was the registrant of the domain name <universityofarkansas.com>. At that time, the website directed visitors to a page at <truthpage.homestead.com>, which contains commentary. Prior to that time, however, the website redirected visitors to the "www.abortionismurder.org" and "www.abortiontruth.com" websites. Since April 10, 2003, the <universityofarkansas.com> domain name has been registered to a number of entities, beginning with "High Traffic Pro-Life Domains only $999" (whois printout: April 11, 2003), "Pro-Life Domians [sic]" (whois printout: September 10, 2003), "Anti-Globalization, Domains" (whois printout: November 6, 2003), "aak" (whois printout: January 19, 2004), "babysafe" (whois printout: February 5, 2004), "protest domains (whois printout: February 13, 2004) and finally Respondent, Freedom Domains (whois printout: February 17, 2004).
5. Partiesí Contentions
The Complainant makes the following contentions:
The disputed domain name, <universityofarkansas.com>, is confusingly similar to Complainantís UNIVERSITY OF ARKANSAS trademark because it simply omits the spaces between the words and adds the top level domain ".com."
The Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not authorized Respondent to use the UNIVERSITY OF ARKANSAS mark, nor is Respondent an alumnus, or a participant in any of the Universityís auxiliary organizations. Respondent has not made a bona fide use of the domain name and has not demonstrated any intention to use the domain name for a bona fide business purpose because Respondent has used the domain name to redirect visitors to other, unrelated sites. In fact, Respondentís use of the domain name has caused actual confusion.
Finally, Complainant contends that Respondentís use of the domain name is neither a legitimate non-commercial use nor a fair use. The Complaint points to the fact that visitors to Respondentís site were redirected to other websites, including the "www.abortionismurder.org" and "www.abortiontruth.com" sites, which take sides on the issue of abortion and are not related to Complainant or its educational or other activities.
The Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent likely was aware of Complainantís well-known UNIVERSITY OF ARKANSAS mark, (2) Respondentís activities, under the name "Azra Kahn," have been the subject of other Administrative Panel decisions establish a pattern of registering domain names to prevent the owners of the corresponding trademarks from reflecting the marks in a corresponding domain name. In making this final contention, Complainant argues that the other prior registrants of the domain name, listed above, are the same parties as Respondent, and (3) to the extent that the various registrants are the same entity, registration under the name "High Traffic Pro-Life Domains only $999" reveals a motive to sell, rather than make bona fide use of, the domain name. Complainant contends, as an alternative, that if Respondent is not the same entity as the other registrants, Respondentís use of the domain name is misleading and not in good faith inasmuch as it attracts visitors to unrelated sites by trading on Complainantís reputation and well-known mark.
As noted above, Respondent has not responded to the Complainantís contentions.
6. Discussion and Findings
In order to prevail, the Complainant must prove:
(i) The <universityofarkansas.com> domain name is identical or confusingly similar to Complainantís UNIVERSITY OF ARKANSAS mark.
(ii) Respondent has no rights or legitimate interests in respect of the <universityofarkansas.com> domain name.
(iii) The domain name has been registered and is being used in bad faith.
Policy ∂ 4(a). The Policy sets out four sets of circumstances that may evidence a Respondentís bad faith registration and use under ∂ 4a(iii), see Policy ∂ 4(b), as well as examples of circumstances that may evidence a Respondentís rights or legitimate interests in a domain name, see Policy ∂ 4(c).
Although Respondent has not answered any of the allegations or evidence of the Complaint, a default does not automatically result in a finding for Complainant. Rather, the Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondentís default as it considers appropriate. See Rule 14(b).
A. Respondentís Domain Name is Identical or Confusingly Similar to Complainantís Mark.
Complainant has established its trademark rights in the UNIVERSITY OF ARKANSAS mark by providing proof of its numerous federal and foreign trademark registrations and the pages from Complainantís website and other materials. The <universityofarkansas.com> domain name effectively incorporates Complainantís the UNIVERSITY OF ARKANSAS mark in its entirety. Neither the omission of the spaces between the terms nor the addition of the ".com" top level domain alters this conclusion.
The Panel finds that Respondentís domain name is confusingly similar to Complainantís trademark.
B. Respondent Has No Rights or Legitimate Interests in the Domain Name.
Establishing that the Respondent has no rights or legitimate interest in the domain name, proving a negative, can be difficult. Some panels have held that the burden of establishing this element is light, because the evidence lies within Respondentís knowledge. Others have held that after a Complainant makes a prima facie showing, the burden shifts to the Respondent to rebut Complainantís evidence. These approaches are consistent with the general structure of the Rules. Rule 3(b)(ix)(2) requires the Complainant to show why a the Respondent "should be considered as having no rights or legitimate interests in respect of the domain name(s) . . . ." (emphasis added), while Rule 5(b) requires the Respondent to "[r]espond specifically to the statements and allegations contained in the [C]omplaint."
The Panel concludes that Complainant has adequately demonstrated that none of the three examples set forth in Paragraph 4(c) of the Policy are applicable here.
First, it does not appear that Respondent was making a bona fide use of the domain name before notice of the dispute. Complainant has provided evidence that at various times from April 2003 through the filing of the Complaint, the domain name simply directed visitors to other sites. As noted above, the disputed domain name is confusingly similar to Complainantís well-known mark. Further, the printouts of web pages to which visitors have been directed do not reveal any connection between the disputed domain name and Respondent.
Second, although Complainant does not provide evidence of trademark searches or other investigations, it does not appear that the disputed domain is Respondentís legal name or is used to identify Respondent.
Third, it does not appear that Respondent is making a legitimate non-commercial or fair use of domain name. The printouts of the pages to which visitors are directed have no relationship to Complainant, its educational services, or its other goods or services. In fact, it appears that Respondent merely uses the UNIVERSITY OF ARKANSAS mark to attract attention to those other, unrelated sites.
Where, as here, Complainantís UNIVERSITY OF ARKANSAS mark is well-known, Respondentís name does not resemble the domain name or the UNIVERSITY OF ARKANSAS mark, Respondent uses the website to direct visitors to completely unrelated sites, Complainant has not authorized Respondentís use, and Respondent has failed to respond, Complainant has met its burden.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Respondent Has Registered and Used the Domain Name in Bad Faith.
Complainant has established that Respondent has registered and used the domain name in bad faith. While it does not appear that the specific circumstances detailed in the Policy as evidencing bad faith necessarily exist here, those circumstances are not intended to be exhaustive. See Policy, ∂ 4(b) (examples of bad faith are specified "without limitation"). Bad faith may be established by other evidence.
As noted above, Respondentís domain name is confusingly similar to the UNIVERSITY OF ARKANSAS mark. Moreover, it is relevant that Complainantís registered trademark UNIVERSITY OF ARKANSAS has been in use for many years and is well-known in connection with the educational institution. It is not unreasonable to impute to Respondent an awareness of Complainantís rights.
Nor is it unreasonable to conclude that Respondentís use of the domain name was intended to attract visitors who were actually seeking Complainantís site. Further, Complainant has provided evidence that Respondentís domain name did in fact attract visitors who were seeking Complainantís site.
In addition, while not resting its decision on this basis, the Panel believes that it is likely that Respondent is the same entity as one or more of the registrants previously associated with the <universityofarkansas.com> domain name. Of the prior registrants identified above, all but two have a Bronx, New York address that is identical to that of the current Respondent, including the registration under the name "High Traffic Pro-Life Domains only $999," from which one could infer an intention to sell the domain name for more than oneís out-of-pocket costs. See Policy ∂ 4(b)(i).
Further, the Panel has already concluded that Respondent has no right or legitimate interest in the domain name and that Respondentís site does not make a bona fide offering of goods or services.
Under these circumstances, the Panel finds that Respondent has registered and used the domain name in bad faith.
For the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name, <universityofarkansas.com>, be transferred to the Complainant.
Debra J. Stanek
Date: April 14, 2004