WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pepperdine University v. The CJ Group, LLC

Case No. D2007-1389

 

1. The Parties

The Complainant is Pepperdine University, Malibu, California, United States of America, represented internally by Eryn P. Murphy.

The Respondent is The CJ Group, LLC of Manhattan Beach, California, United States of America, represented by Craig Johnson of Rolling Hills, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <pepperdineblog.net> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2007. On September 24, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On September 24, 2007, GoDaddy.com, Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 September 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2007. The Response was filed with the Center on October 16, 2007.

The Center appointed William R. Towns as the sole panelist in this matter on November 1, 2007. 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.

 

4. Factual Background

The Complainant is a higher educational institution originally founded in 1937. The Complainant acquired university status in 1971, but has always operated under the name Pepperdine. The Complainant owns seven federal trademark registrations issued by the United States Patent and Trademark Office (“USPTO”) for PEPPERDINE and PEPPERDINE-composite marks. The Complainant further has registered and uses the following domain names in connection with websites providing information about Pepperdine University and its undergraduate, graduate, law and business degree programs: <pepperdine.edu>, <pepperdine.com>, <law.pepperdine.edu>, and <bschool.pepperdine.edu>.

The Respondent registered the disputed domain name <pepperdineblog.net> in June 2005. The domain name currently resolves to the “www.pepperdineblog.net” website, described on the site’s home page as a place “for sharing the latest news and . . . thoughts, ideas, and opinions concerning Pepperdine and the world at large.” The website provides links relating to Pepperdine sports, news, campus events, and information about events in the surrounding community of Malibu, California, and contains a disclaimer of any affiliation with or endorsement by Pepperdine University. The Respondent’s website also contains a number of what appear to be pay-per-click advertising links. Some of these pay-per-click links appear to be related to Pepperdine University, but instead direct internet users to commercial websites or to webpages of other higher educational institutions.

On or about January 23, 2006, the Complainant sent the Respondent a cease and desist letter, to which the Complainant received no response. Subsequently, the Complaint commenced this proceeding.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that is has acquired common law trademark rights in PEPPERDINE arising from its continuous use since 1937. Similarly, the Complainant asserts common law trademark rights in PEPPERDINE UNIVERSITY arising from its use since 1971. In addition, the Complainant points to multiple United States trademark registrations obtained for PEPPERDINE in connection with educational services and apparel, as well as United States trademark registrations for PEPPERDINE WAVES and PEPPERDINE UNIVERSITY 1937 FREELY YE RECEIVED FREELY GIVE. The Complainant asserts that it has invested significant time, money, and effort developing and promoting its marks and maintaining its good reputation.

According to the Complainant, the Respondent initially registered the disputed domain name on June 17, 2005, without the Complainant’s permission, and is using the disputed domain name to direct internet users to the Respondent’s “www.pepperdineblog.net” website. The Complainant contends that the disputed domain name is identical and confusingly similar to trademarks in which the Complainant has established rights. The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name because (1) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; (2) the Respondent is not commonly known by the disputed domain name; and (3) the Respondent is not making a legitimate noncommercial or fair use of the domain name.

The Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because (1) the Respondent is not authorized to use the Complainant’s marks or to register a domain name that is identical to the Complainant’s marks; (2) the Respondent has no relationship with the Complainant; and (3) the Respondent at most has not used the domain name as anything more than a place marker for a future blog regarding issues in the Pepperdine community.

According to the Complainant, the Respondent is not making an active use of the domain name for the following reasons. First, while the “www.pepperdineblog.net” site contains links to Pepperdine sports, news, campus events and local resources, the Complainant contends that these are merely links to general information websites such as “google.com” and “moviefone.com”, or else are inoperable. The Complainant further contends that there are virtually no blogs, thoughts, ideas or opinions regarding Pepperdine on the website, even though the website is held out as a place “for sharing the latest news and . . . thoughts, ideas and opinions on issues concerning Pepperdine.”

According to the Complainant, the Respondent registered and is using the disputed domain name in bad faith. The Complainant argues that the disputed domain name can only refer to the Complainant, and that the Respondent registered the disputed domain name primarily for the purpose of capitalizing on the goodwill inherent in the Complainant’s marks to attract internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s marks. The Complainant contends that the Respondent’s website also gives the overall appearance that the site is produced and supported by the Complainant, notwithstanding the disclaimer.

B. Respondent

The Response identifies the Respondent as The CJ Group, LLC and Craig Johnson. According to the Response, Craig Johnson, a former Pepperdine student, originally registered the disputed domain name initially in 2002. The Respondent maintains that the only reason for registering the disputed domain name was to create a noncommercial, social networking site. The Respondent denies any intent to wrong or harm Pepperdine University.

The Respondent maintains that the “www.pepperdineblog.net” website is a legitimate noncommercial website, and that a fair use is being made of the disputed domain name. The Respondent asserts that no attempt has ever been made to use any of the logos, trademarks or service marks in which the Complainant has rights, and notes that the website contains the following disclaimer: “This is a non-commercial site that is in no way endorsed by, or affiliated with, Pepperdine University.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <pepperdineblog.net> is confusingly similar to the Complainant’s PEPPERDINE mark, in which the Complainant unquestionably has established rights through registration and continuous and extensive use. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of its registration with the USPTO. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Under paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525. Here, the disputed domain name incorporates the Complainant’s PEPPERDINE mark in its entirety. The generic suffix “blog” does not dispel the confusing similarity of the disputed domain name with the Complainant’s mark. See, e.g., Merck KGaA v. Paul Rostkowski, WIPO Case No. D2005-1017; and Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain. It is uncontroverted that the Complainant has not authorized the Respondent to use the Complainant’s PEPPERDINE mark, nor has it authorized the Respondent to register a domain name corresponding to that mark. There is no indication that the Respondent has been commonly known by the disputed domain name. Further, the content of the Respondent’s website clearly reflects the Respondent’s awareness of the Complainant and the Complainant’s mark.

The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to him of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent does not claim to be using the domain name in connection with any offering of goods or services, and does not claim to have been commonly known by the domain name. However, the Respondent claims to be making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. The Complainant concedes that the Respondent’s website contains links to Pepperdine sports, news, campus events, and local resources.

The Panel is not convinced, however, that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name under paragraph 4(c)(iii). The Respondent invited the Panel to review its website in reaching a decision in this case. The Panel did so, and has noted the presence of what appear to be pay-per-click advertising links. The website provides search categories entitled “Pepperdine”, “Pepperdine University”, “Pepperdine Graduate School”, “Pepperdine MBA Program” and “Accepted into Pepperdine”, which suggest information about Pepperdine University and its undergraduate, graduate, law and business degree programs, but instead divert internet visitors seeking information about the Complainant to commercial websites or websites of other higher education institutions.

In reviewing the Respondent’s website, the Panel further noted that the website was built by BuildingBlogs.com. The contact information provided for BuildingBlogs.com is “BuildingBlogs@CJGroup.biz”. Thus, it appears that the Respondent is in the business of building websites. A further link is provided to the BulletinBlog Home Page, which provides links to a number “blogs” for other colleges and universities, including Harvard, Stanford and UCLA, built by BuildingBlogs.com. All are substantially similar if not identical in appearance and design to the “www.pepperdineblog.net” website.

Based on a review of the Respondent’s website, the Panel considers the Respondent’s claim that the disputed domain name was registered only for the purpose of creating a noncommercial, social networking site to be pretextual. It appears more likely to the Panel that the Respondent registered the disputed domain name to generate pay-per-click advertising revenue from the website and to promote its own business based on the attractive quality of the Complainant’s mark.

The Respondent’s use of the disputed domain name for such purposes belies any legitimate noncommercial or fair use of the domain name under paragraph 4(c)(iii) of the Policy. See, Bata Brands S..r.l v. Charles Power, WIPO Case No. D2006-0191. Further, the Respondent’s use of the disputed domain name based on the attractive quality of the Complainant’s mark to generate pay-per-click revenue or promote its own business does not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. See, Educational Testing Service (ETS) v. International Names Ltd., WIPO Case No. D2007-0449.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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;

(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

It is evident from the circumstances of this case that the Respondent was aware of the Complainant’s PEPPERDINE mark when it appropriated that mark for use in its domain name, and the Panel so finds. For the reasons discussed above, the Panel finds the Respondent’s claim to be making a noncommercial or fair use of the disputed domain name to be pretextual, and further finds that the disputed domain name was registered and is being used in bad faith by the Respondent in an attempt to profit from and exploit the Complainant’s PEPPERDINE mark. See, e.g., ETS, supra.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

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 <pepperdineblog.net> be transferred to the Complainant.


William R. Towns
Sole Panelist

Dated: November 15, 2007