WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
President and Fellows of Harvard College
v. Texas International Property Associates - NA NA
Case No. D2008-0597
1. The Parties
Complainant is President and Fellows of Harvard College, Cambridge, Massachusetts, United States of America.
Respondent is Texas International Property Associates - NA NA, Wheatland, Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <harvarduniversitypress.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2008. On April 17, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On the same date, Compana LLC transmitted by email to the Center its verification response confirming that 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 April 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2008. On April 28, 2008, the Center received a letter from Counsel for Complainant stating that Respondent had agreed to transfer the name voluntarily and requesting that the proceedings be suspended for thirty days to allow the transfer to occur. On April 29, 2008, the Center notified the parties that the proceedings had been suspended until May 28, 2008. On May 22, 2008, the Center received a request from counsel for Complainant that the suspension be lifted and the proceedings re-instituted. On May 22, 2008, the Center notified the parties that the matter had been re-instituted. Respondent was given until June 5, 2008, to file a Response in this matter.
On June 5, 2008, Respondent filed a Response. On June 6, 2008, the Center issued its Acknowledgement of Receipt of Response.
The Center appointed M. Scott Donahey as the sole panelist in this matter on June 23, 2008. 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
Complainant is the oldest institution of higher education in the United States of America, founded in 1636. Harvard University Press is a licensee of Complainant and was established by Complainant in 1913. It is engaged in the publishing of academic and non-academic books, with offices in Cambridge, Massachusetts and in London, the United Kingdom of Great Britain and Northern Ireland. It is also engaged in retail bookstore services and in wholesale book distribution. It has a presence online, retailing books through its web site at “www.hup.harvard.edu”.
Complainant is the owner of hundreds of HARVARD and HARVARD UNIVERSITY related trademarks, including HARVARD UNIVERSITY PRESS, which issued on December 5, 2000, and which shows a first use in commerce in 1913. Complaint, Calixto Declaration, Exhibit 6.
Respondent is a d/b/a for Dauben, Inc., a corporation of which Joseph “Joey” Dauben is president, allegedly located at 4041 W. Wheatland, Suite 165-417, Dallas, Texas 75237 United States of America. Microsoft Corporation v. Dauben, Inc. d/b/a Texas International Property Associates, Civil Action No. 3:08-CV-0098-L, United States District Court for the Northern District of Texas, Dallas Division, Defendant’s Initial Disclosures, served on April 8, 2008. Respondent registered the domain name at issue on December 27, 2004. Complaint, Karol Declaration, Exhibit 3. Respondent uses the domain name to resolve to a web site which is headed “Welcome to harvarduniversitypress.com”, followed by the statement, “For resources and information on Harvard university Press and Harvard business review”. The site is a classic parking site with links to competing academic institutions, and no links to Complainant, Harvard University Press, or other entities related to Complainant. Respondent is not licensed or otherwise permitted to use any Harvard-formative marks.
Complainant contacted Respondent by letter dated February 27, 2008, sent via email and certified mail requesting that Respondent voluntarily transfer to domain to Harvard. Complaint, Annex 9. The letter was sent to the address for the registrant, technical, and administrative contact of the disputed domain name all of which were identical to the address for Dauben, Inc. In reply, Respondent sent an email dated February 29, 2008, promising a substantive reply within three weeks. Complaint, Annex 10. When Complainant received no substantive reply, on March 24, 2008, counsel for Complainant again contacted Respondent by email, demanding Respondent’s position within five business days. Complaint, Annex 11. On March 25, 2008, Respondent replied by email, promising a substantive response within one week. Complaint, Annex 12. On April 9, 2008, having received no further response, Complainant’s counsel attempted to contact Respondent at the telephone number listed in the Whois, however the phone number in the Whois was not a working number. Complainant then filed the present Complaint.
5. Parties’ Contentions
Complainant alleges that the domain name at issue is identical to Complainant’s HARVARD UNIVERSITY PRESS mark, that Respondent has not been authorized in any way to use Complainant’s mark and that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent registered and is using the domain name at issue in bad faith, noting the facts that 40 adverse UDRP decisions have been issued against Respondent, that Respondent is using the domain name as a parking site to generate pay-per-click revenue, that the user is confused as to the sponsorship of the site, and that Respondent uses the site to link directly to competitors of Complainant, that Respondent had to have knowledge of Complainant’s mark, that Respondent apparently provided false contact information to the registrar, and that Respondent failed to substantively respond to any of Complainant’s communications.
Without admitting to any of the elements of bad faith under the policy, Respondent filed a Response in which it consented to transfer.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Panel decisions have long held that the gTLD suffix is to be disregarded in determining whether the domain name at issue is identical or confusingly similar to Complainant’s mark. InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075. Accordingly, the Panel finds that the domain name at issue is identical to Complainant’s HARVARD UNIVERSITY PRESS mark. The Panel also finds that the domain name at issue is confusingly similar to Complainant’s HARVARD mark.
Complainant has not authorized Respondent to use its mark, and Complainant’s HARVARD mark, to which the domain name at issue is confusingly similar, is duly famous and a mark with which Respondent must have been familiar prior to registration of the domain name at issue, and whose familiarity to Respondent is confirmed by the links on the parking site which link to competitors of Complainant.
Complainant contends that Respondent is a serial cybersquatter, and points to 40 WIPO cases involving Respondent, all of which found against Respondent. Having recently had a number of cases involving Respondent, the Panel is compelled to agree. In all of these recent cases Respondent effectively used a template response, substituting names and dates that were unique to a particular case. Each case included the same language and case citations in consenting to the transfer of the domain name without admitting that Respondent acted in bad faith and without conceding any of the three elements which must be established under the policy. Respondent consistently requests that the transfer be compelled without consideration of the factors. This Panel cannot condone Respondent’s conduct in such manner. In the present case, Respondent has acted in serious bad faith.
Respondent had to have knowledge of Complainant’s famous mark at the time it registered the domain name at issue. Moreover, the use of the domain name on a parking site with links to Complainant’s competitors confirms that knowledge.
Respondent is using the domain name at issue to resolve to a web site at which links to Complainant’s competitors are listed. Respondent is obviously deriving income from such links on a pay-per-click basis. This is a violation of paragraph 4(b)(iv) of the policy and constitutes bad faith registration and use. ACCOR v. Steve Terry/North West Enterprise, Inc., WIPO Case No. D2006-0649.
Respondent apparently gave false contact information to the registrar in the form of an inoperative telephone number. The provision of false contact information may under certain circumstances indicate an element of bad faith. Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Respondent repeatedly responded to communications from Complainant by promising to give Complainant a substantive response at some time in the near future. However, prior to the filing of the Complaint, Respondent never furnished such substantive response.
D. Bad Faith Abuse of Process
Rule 10 enumerates the powers of the Panel. Rule 10(d) requires that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”. Recently the Panel has seen that Respondent is engaging in intentional delaying tactics in order to drag out the proceedings, undoubtedly in order to maintain the revenue stream that Respondent is receiving from its bad faith use of the domain name for the longest possible time.
In the recent case of Barbara Brennan, Inc. v. Texas International Property Associates, WIPO Case No. D2008-0351, on April 3, 2008, Respondent filed its response. On April 4, 2008, Complainant requested that the proceedings be suspended to permit the voluntary transfer of the domain name to Complainant. On April 7, 2008, the Center issued its Notification of Suspension, suspending the proceedings for thirty days. On May 6, 2008, the Center received a Request to Reinstitute Proceedings, because Respondent had allegedly been unable to obtain the authorization code for the domain name at issue, and thus was unable to effect a transfer. On May 8, 2008, the Center reinstituted the proceedings. This resulted in a delay of thirty-four (34) days.
In the present case, the Response was originally due on May 12, 2008. On April 28, 2008, the Center received a letter from Counsel for Complainant stating that Respondent had agreed to transfer the name voluntarily and requesting that the proceedings be suspended for thirty days to allow the transfer to occur. On April 29, 2008, the Center notified the parties that the proceedings had been suspended until May 28, 2008. On May 22, 2008, the Center received a request from counsel for Complainant that the suspension be lifted and the proceedings re-instituted. On May 22, 2008, the Center notified the parties that the matter had been reinstituted. Respondent was given until June 5, 2008, to file a response in this matter. This resulted in a delay of twenty-four (24) days.
It seems as if Respondent has hit on a new tactic of promising to arrange for voluntary transfer, getting agreement for Complainant to suspend the proceedings so that such voluntary transfer can occur, and then, after some time had passed, informing Complainant that Respondent was unable to make the transfer. While the Panel has the duty to “ensure that the administrative proceeding takes place with due expedition”, the Panel neither has the power to award sanctions against an intentionally delaying party, nor to award attorney’s fees. This Panel also believes it would be entirely appropriate for a provider to bring this decision to the attention of any filing party bringing a Complaint against this particular Respondent if only to avoid needless time wasting as a result of seemingly disingenuous “settlement” offers. The Panel realizes that such a step would place an added burden on the already over-burdened Center, but it seems an avenue in which this apparent delaying tactic can be effectively thwarted.
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, <harvarduniversitypress.com>, be transferred to the Complainant.
M. Scott Donahey
Dated: July 7, 2008