Complainant is the Board of Trustees of the University of Arkansas of Little Rock, Arkansas, United States of America, represented by Williams & Anderson PLC, United States.
Respondent is FanMail.com, LLC of Huntsville, Alabama, United States, represented by Bradley Arant Boult Cummings LLP, United States.
The disputed domain name <razorbacks.com> (the “Domain Name”) is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2009. On August 27, 2009, the Center transmitted by e-mail to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On August 27, 2009, Network Solutions, LLC transmitted by e-mail 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced August 31, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response September 20, 2009. The Response was filed with the Center September 18, 2009.
The Center appointed Robert A. Badgley, Douglas M. Isenberg and The Honourable Neil Anthony Brown QC as panelists in this matter on October 19, 2009. The Panel finds that it was properly constituted. Each member of 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.
The parties submitted supplemental filings, which the Panel, in its discretion, decided to accept and consider.
Complainant oversees the University of Arkansas, whose Fayetteville campus has used the nickname “Razorbacks” for its athletic teams since 1909. Complainant registered the mark RAZORBACKS with the United States Patent and Trademark Office in 1989, and holds numerous subsequent trademark registrations for that mark, as a word or in conjunction with design matter, in various jurisdictions. It is not seriously disputed that the Arkansas Razorbacks are a well-known team in various fields of National Collegiate Athletic Association (NCAA) sports.
It is alleged, supported by affidavit, and not disputed, that Complainant's university earned $1,454,046 in 1995 in fees for licensing its various RAZORBACKS marks – some of which marks are not merely the word “razorbacks” but also contain graphic elements. The corresponding licensing fee figure for 2008 was $1,775,823.
Respondent, as its name suggests, has since 1995 operated a business of offering “vanity” e-mail addresses to Internet customers. Respondent registered the Domain Name on August 7, 1995. There is nothing in the record to indicate that prior to 2008 a distinct website was established at <razorbacks.com>. It is not known, for instance, whether that Domain Name was simply “parked” for the 13-year period between 1995 and 2008, or whether it resolved to another website, such as Respondent's main site at <FanMail.com>.
Respondent is also the registrant of numerous other domain names, many of which are identical to the names of prominent NCAA sports teams, such as <aggies.com> (Texas A&M), <badgers.com> (Wisconsin), <wolverines.com> (Michigan), and <terrapins.com> (Maryland). It is not clear from the record whether, and when and how, these other domain names were registered, or whether and when they resolved to another website (such as Respondent's main site), and so forth.
In January 2003, more than seven years after the Domain Name was first registered, Complainant made its initial contact with Respondent. On March 12, 2003, Complainant's attorney sent a cease-and-desist letter to Respondent. Discussions and e-mail communications took place between the parties but their effect is a matter of dispute.
Respondent did not transfer the Domain Name to Complainant. Respondent did, however, remove the Domain Name from the list of vanity e-mail address offerings at its main site, <FanMail.com>. At that time, there was no separate website accessible via the Domain Name.
Five years later, in March 2008, Complainant by its attorney again contacted Respondent to demand transfer of the Domain Name to Complainant. On March 21, 2008, Respondent's counsel responded with the assertion that Complainant had lost any claim to the Domain Name by virtue of the doctrines of laches, waiver, and estoppel. Respondent also asserted that it had a legitimate interest in the Domain Name in connection with its vanity e-mail business.
On or about May 9, 2008, Respondent created a website at “www.razorbacks.com”. The website offers vanity e-mail addresses, and also lists numerous third-party uses of the term “razorbacks” that have nothing to do with Complainant's university. For instance, the site mentions “The razorback sucker – Endangered fish” , “Razorback Hunting Supplies” , “Razorback Chapter Airlift Tanker Association” , various American football teams such as the “Australian Razorbacks” , the “German Razorbacks” , the “Japanese Razorbacks” , the “Razorbacks Lacrosse Club” of Canada, and many other apparent uses of the term “razorbacks” , but not Complainant's university.
The website at “www.razorbacks.com” contains a fairly small disclaimer at the bottom of the home page, which states that FanMail is not “affiliated, endorsed, authorized, or associated in any way with any club, organization, school, college, university, professional team, or any country's government or armed forces.”
There were communications between the parties regarding the possible lease or other use of the Domain Name, but the effect of these communications is a matter of dispute.
The Complaint was filed on August 26, 2009.
Complainant alleges that the Domain Name <razorbacks.com> is both identical and confusingly similar to Complainant's registered trademarks for RAZORBACKS, that Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name has been registered and used in bad faith. Complainant maintains that it has established all three of these requirements and that the appropriate remedy is to transfer the Domain Name to Complainant.
In support of its case on the first of these three elements, Complainant maintains that <razorbacks.com> is identical and confusingly similar to the series of trademarks set out above in the “Factual Background” section because it incorporates the entirety of the marks.
Complainant then contends, to establish the second element, that Respondent has no rights or legitimate interests in the Domain Name because Respondent does not have a licence or any other permission to use the RAZORBACKS marks. Complainant further contends that Respondent has been using the Domain Name to provide e-mail addresses, which does not give rise to a legitimate interest because the Domain Name “is not a bona fide surname,” and Respondent is not commonly known by the Domain Name. Finally under this head, Complainant asserts that a legitimate interest in the Domain Name cannot be established through the doctrines of laches, estoppel, or acquiescence.
Complainant then alleges that the Domain Name was registered and is being used in bad faith because it may be inferred from the fame of RAZORBACKS mark and the names associated with it that Respondent chose the Domain Name to attract Internet users to its website to trade on the goodwill of the Complainant's athletic programs, and that Respondent had actual or constructive knowledge of the marks.
Moreover, Complainant contends that Respondent is in bad faith under the Policy because Respondent offered to lease the use of the Domain Name to Complainant, and because Respondent has also registered other “sports related domain names” associated with colleges.
Respondent denies each and every of Complainant's contentions. First, it denies that the Domain Name is either identical or confusingly similar to the RAZORBACKS marks. Respondent asserts that, of the numerous trademarks relied on by Complainant, only three consist of the single word “razorbacks”, and none of these three is used for services similar to those provided by Respondent. It then contends that the many and varied uses of the word “razorbacks” shows further that the Domain Name is not identical or confusingly similar to Complainant's marks.
Second, Respondent maintains that it has a right or legitimate interest in the Domain Name inasmuch as it resolves to a website referring to the many diverse subjects to which the word “razorbacks” relates, and by reference to which the public may create free e-mail addresses. The Domain Name has thus been made available as an e-mail address for subscribers, and such a use is legitimate as a bona fide offering of goods and services under the Policy.
Respondent also relies on the disclaimer on the <razorbacks.com> website which disavows any association with other entities.
Respondent also contends that the wide international use of the word “razorbacks” gives rise to a worldwide market for its e-mail services, which in turn gives it a legitimate interest in the Domain Name. Respondent claims, through an affidavit, that roughly half of the customers who use <razorbacks.com> as an e-mail address use international IP addresses, and contends that this shows that its “vanity” clients are not motivated to take up e-mail addresses by the sports teams of Complainant's university.
Third, Respondent argues that it neither registered nor used the Domain Name in bad faith within the meaning of paragraph 4(b) of the Policy. In particular, Respondent contends that the e-mail services it provides via the Domain Name are very different from the goods and services covered by Complainant's marks. Moreover, its e-mail service is legitimate and has been allowed to operate over many years with the apparent acquiescence of Complainant.
Respondent also relies on laches, estoppel and waiver as defenses to the Complaint. Respondent notes an eight-year period during which it operated a “legitimate bona fide and non-competing business” before Complainant made its first contact. Respondent then cites a further period of five years during which Complainant “remained silent.” It also relies on the fact that after Complainant contacted Respondent a second time, “it then remained silent for more than a year before initiating this proceeding.” These circumstances, Respondent contends, show Complainant's bad faith and the Respondent's good faith and the legitimacy of its use of the Domain Name.
Finally, Respondent contends that all of the facts and circumstances go to show that a finding of Reverse Domain Name Hijacking against Complainant is warranted.
Complainant filed a Supplemental Reply in which it submitted:
1. The correspondence passing between the parties shows that Respondent had offered to rent or lease the Domain Name to Complainant (presumably for financial gain).
2. Respondent's claim of there being many uses of the word “razorbacks” should be rejected as, in reality, in registering domain names Respondent was targeting college sports teams.
3. Respondent's alleged disclaimer was of no effect and should be disregarded.
4. The modus operandi of Respondent is cybersquatting for the purpose of making profit from a vanity e-mail service.
Respondent's Supplemental Response to Complainant's Supplemental Reply
Respondent filed a Response to Complainant's Supplemental Reply in which it submitted:
1. The evidence shows that Respondent did not offer to sell or lease the Domain Name to Complainant.
2. The misrepresentation of the facts by Complainant strengthens Respondent's case for a finding of Reverse Domain Name Hijacking.
3. There is no substance in Complainant's allegation that Respondent has engaged in cybersquatting, for the facts show that there is a worldwide demand for e-mail services using the word “razorbacks.” Respondent also repeated its allegations that Complainant's delay in exercising its alleged rights supports Respondent's case.
Both parties elaborated on their contentions and to the extent not already set forth above, they will be set forth and addressed in context in the “Discussion and Findings” section below.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Complainant's delay in filing the Complaint and Respondent's Defense of Laches
At the outset, the Panel believes it necessary to discuss Complainant's considerable delay in filing this case under the Policy. This is because Respondent raised the issue of laches in both its 2008 correspondence to Complainant and in its Response to the Complaint. The Panel also observes that the applicability of laches under the Policy has garnered some, but not much, commentary in prior cases.
As a general matter in litigation, laches is a defense to some claims where the plaintiff has unreasonably delayed pursuing his claim, and as a result of such delay the defendant has suffered prejudice. Unlike a statute of limitations, which attempts to draw a bright temporal line between a time-barred claim and a timely claim, laches is a more malleable doctrine, and often entails a deeper factual inquiry.
A majority of the Panel (Messrs. Badgley and Brown) is prepared to acknowledge the possible applicability, in appropriate and limited circumstances, of laches in a case under the Policy.
Rule 15(a) provides that “a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In the United States, where both parties in this case reside, the doctrine of laches is a longstanding and universally recognized principle. It has been said that laches does not fall within the “catchall” language of Rule 15(a) because, strictly speaking, it is a principle of equity and not law. See, e.g., The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 (October 7, 2002). Messrs. Badgley and Brown take the view, however, that it is not unreasonable to consider laches as falling within Rule 15(a) given that, in many if not most jurisdictions in the United States and in countries such as the United Kingdom and Australia, the formerly sharp line between law and equity has been blurred if not effaced by the amalgamation of law and equity. Indeed, it would appear unlikely that when they used the expression “principles of law that it deems applicable,” those who drafted the Rules meant “principles of law but not equity.”
It has also been said that laches should not apply to cases under the Policy because UDRP cases are supposed to be streamlined and quick, and application of a laches defense entails too intensive a factual inquiry to lend itself to the celerity of the UDRP process. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (July 1, 2003) (laches defense runs counter to the Policy's objectives). That may be true in some instances, but in others, Messrs. Badgley and Brown believe, it is possible that disposition of the laches question might be no more difficult than disposition of other questions that routinely come before UDRP panelists. Again, a majority of the present Panel (Messrs Badgley and Brown) believes that, in appropriate and limited circumstances, a laches defense might be sufficiently clear based on the limited record, so that its application would not unduly complicate or prolong the UDRP process.
However, the considerable delay in bringing this case does color the merits of the dispute. As has been observed in prior cases, even if laches does not apply, delay may reflect the strength, or lack thereof, of a complainant's case. See, e.g., AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485 (August 29, 2005) (although laches does not provide a separate defense under the Policy, it “may sometimes be relevant in considering whether the requirements of the Policy have been satisfied”). For instance, the record in this case does not include much if any hard evidence surrounding Respondent's decision to register the Domain Name 14 years ago. Instead, as is discussed below, Complainant relies heavily on the fame of its university sports teams and asks the Panel to draw inferences therefrom.
Ultimately, the majority of the Panel (Messrs Badgley and Isenberg) does not decide this case on the basis of a laches defense. This is because, among other reasons, Respondent did not present any hard evidence of prejudice it suffered as a result of Complainant's considerable delay.
Panelist Brown takes the view that whether the delay is properly characterized as laches or not, the considerable delay on the part of Complainant in bringing the Complaint militates against its success in this proceeding. It should be remembered that Respondent registered the Domain Name as long ago as August 7, 1995, which is 14 years before the Complaint was filed. Such an extreme delay calls for some explanation. Although Respondent's attorneys squarely raised the issue in correspondence and in the Response and relied on it as a defense, and although Complainant filed a Supplementary Reply to the Response and had an opportunity to explain its delay, it did not do so and did not put forward any facts to explain either the delay or the consequences that Respondent sought to draw from it.
In particular, Panelist Brown notes that there was no explanation given as to why, after Complainant sent its first letter of demand to Respondent and was rebuffed, it then waited a further five years before renewing its siege, and then a further year before actually filing the proceeding. These extended delays could not help but have lulled Respondent into the sense that either Complainant had decided it had no claim, had abandoned or waived it, or had no confidence in it. Respondent could not help but have been encouraged by the delay to continue running its e-mail service and subsequently its website.
Accordingly, although there may be no evidence of actual financial prejudice suffered by Respondent and although the whole matrix may not be properly characterized as laches, in Panelist Brown's view, the delay and lack of explanation for it strengthen Respondent's case for a right or legitimate interest in the Domain Name and negate Complainant's case that the Domain Name has been used in bad faith. That is so because the unchallenged evidence is that Complainant by inactivity encouraged Respondent to continue to use the Domain Name in the way in which Complainant knew it was being used.
Complainant clearly has rights in the mark RAZORBACKS.
The Domain Name is identical to the mark, as the second-level domain is the word “razorbacks.” In this regard, Respondent has submitted that the Domain Name is not identical to Complainant's trademarks because the goods and services with which the trademarks are used bear no relation to Respondent's services. However, it is well established that for the purposes of considering this element of the Policy, it is necessary to make a strict comparison between the terms of the trademark and those of the disputed domain name, without considering extraneous facts and circumstances (See, e.g., Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749 (November 18, 2004) (“in the context of the Policy, it is appropriate to assess whether the Domain Names are confusingly similar to the Complainant's mark on the basis of a comparison between the names and mark, without considering whether the Domain Names are or could be used in a way which avoids or might avoid confusion”).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the each of the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001).
Respondent's case is in essence that it has a right or legitimate interest in the Domain Name because for many years it has been using it for a “vanity” e-mail service, so that people may acquire an e-mail address in the form of “email@example.com.”
The Panel notes at the outset that there are plenty of prior decisions under the Policy recognizing that vanity e-mail services may constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i). See, e.g., Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001 (March 1, 2006) (involving <post.com>; respondent made use of domain name for personalized e-mail service prior to any notice of dispute from complainant); Markel Corporation v. Tucows.com Co, WIPO Case No. D2007-1750 (June 5, 2008) (involving <markel.com>; “a website providing a ‘vanity email service' is a legitimate use of a domain name” where it does not display links to competitors of complainant's business); Rusconi Editore S.p.A. v. Net Identity.com Inc. Formerly known as Mailbank.com Inc., WIPO Case No. D2001-0886 (October 5, 2001) (involving <gioia.com>; use of domain name as vanity e-mail service that does not conflict with complainant's publishing business is bona fide use under Policy).
In sum, for a number of years and in a number of decisions prior panels have recognized that vanity e-mail services may be a bona fide offering of goods and services under Policy paragraph 4(c)(i). The Panel here is not holding that a vanity e-mail service must always give rise to a right or legitimate interest under the Policy, irrespective of the circumstances and, clearly, circumstances will differ from case to case. Against the foregoing backdrop of precedent, however, it becomes more difficult for Complainant here to carry its burden to demonstrate that Respondent's registration and use of <razorbacks.com> is not legitimate under the Policy.
In view of the multiple alternative uses of the term “razorbacks” and the evidence presented, the Panel cannot conclude from this record that Complainant has carried its burden here. The Panel observes that the core of Respondent's business, as described at the <FanMail.com> site, involves the offering of sports-related domain name extensions to customers to use as the base of their e-mail address. Whether some of the other domain names listed at that site for use by “vanity” customers might yield a different outcome under the Policy is not for this Panel to decide. Similarly, whether <razorbacks.com> itself may properly be the subject of court litigation, where evidence can be fully developed and Respondent's assertions tested and cross-examined, is another matter.
In this connection, Complainant cites Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003 (September 25, 2006), in which case the panel transferred <pepperdineuniversitywaves.com> to the complainant university. The Pepperdine case did not, strictly speaking, involve a vanity e-mail service. It did, however, involve an allegation by the respondent that it intended to use the domain name in connection with a social networking service for students and alumni. The panel in the Pepperdine case found that the use of a university's name and mascot was not a bona fide use of the domain name. Respondent in the present case rightly notes that the Domain Name at issue is <razorbacks.com>, not <arkansasrazorbacks.com>. Again, the Panel need not decide how it would have decided a case involving the latter domain name.
Panelist Brown agrees with the foregoing statement but adds the following. First, in the interests of consistency, the presumption in such a case should be that the operation of a vanity e-mail service should give rise to a right or legitimate interest in a domain name if conducted along appropriate lines. That position was, in effect, reached in the Markel case, referred to above. Indeed, in that case, the trademark, reflected in the domain name, was not a generic word like “razorbacks”, yet the unanimous panel was still able to say that using it for an e-mail service was legitimate, provided that it did not carry links to the Complainant's competitors. This principle should now be accepted as giving rise to a right or legitimate interest and as being analogous to the same principle that applies to genuine fan sites, subject always to the facts of the case.
It is clear from the record in the present case that Respondent's e-mail service never competed with Complainant or any of its activities conducted under the name “Razorbacks”. Also in the support of Respondent, it has never, on the evidence, claimed to be the “Razorbacks” or Complainant, or that the e-mail service is being conducted by or under the auspices of Complainant. Indeed, its website carries a disclaimer disavowing the reader from drawing any such conclusion, albeit not the boldest disclaimer that could be devised, but one that is bold enough for those who wish to find out the true status of the e-mail service.
Second, the inordinate delays on the part of Complainant in bringing the Complaint must have seen to the objective observer to add successive years of legitimacy to the use Respondent was making of the Domain Name and legitimacy acquiesced in by Complainant. In such circumstances it is unsafe for the panel to decide as a matter of positive fact that a respondent has no rights or legitimate interests in a domain name.
In view of the Panel's decision on the issue of “Rights or Legitimate Interests,” it is not strictly necessary to address the issue of bad faith. However, the Panel will proceed to discuss this element in the particular circumstances of this case, for there are aspects of the evidence and submissions that more conveniently and appropriately fall for discussion under this heading than elsewhere.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
At the outset, the Panel states that it bases its decision on the facts revealed by the evidence in this proceeding and whether the evidence brings the case within any of the provisions of paragraph 4(b) of the Policy or within the generally accepted meaning of bad faith. “Bad faith” under the Policy has a unique meaning that is not necessarily equivalent to the vernacular or its meaning under any laws, including by way of example, the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (“bad faith intent to profit” from a domain name). Accordingly, of course, the Panel's interpretation of bad faith here is limited to its definition under the Policy.
The essence of Complainant's case on bad faith is that it may be inferred from the fame of the RAZORBACKS mark that Respondent chose the Domain Name to attract Internet users to its website to trade on the goodwill of Complainant's athletic programs, and that it had actual or constructive knowledge of the marks. Crucial to the resolution of that issue is whether Respondent had in mind or targeted Complainant's RAZORBACKS trademark when it registered the Domain Name.
Having given careful consideration to the evidence, the Panel concludes that there is insufficient evidence to conclude that Respondent had Complainant's mark in mind when it registered the Domain Name on August 7, 1995. That is so for the following reasons.
First, the Panel rejects Complainant's contention that Respondent had constructive notice of Complainant's registered RAZORBACKS mark and hence has violated section 4(b) of the Policy. In this Panel's view, constructive notice – a legal incident of federal trademark registration in the United States for purposes of trademark infringement law – has no relevance to the presence or absence of “bad faith” under the Policy. Rather, a finding of actual notice of a complainant's rights in a mark is required.
Second, Complainant asserts that media coverage shows that Respondent must have had Complainant's mark in mind when registering the Domain Name on August 7, 1995. In the two-month period preceding that date, news coverage including the term “razorbacks” referred overwhelmingly to the University of Arkansas' sports teams. Depending on the search parameters, the media uses of “razorbacks” referred to Complainant's university between 72% and 89% of the time. A major problem with this argument is that it assumes that a word's relevance to the public is accurately reflected in news coverage. For some people, a razorback is nothing more than a type of hog. Media coverage of such a creature is unlikely to be as robust as media coverage of a major NCAA sports program. But that lack of media coverage does not diminish the fact that, for some, a razorback is just a hog (or some other place or thing unrelated to Complainant's sports teams).
Complainant also asserts that Respondent registered the Domain Name during the height of the University of Arkansas' fame in the NCAA men's basketball world, as exemplified by the school's championship in 1994 and appearance in the final game in 1995. President Clinton attended the 1994 game. This point, however, may be flipped in Respondent's favor. The Panel notes that the NCAA basketball tournaments generally occur in March. As such, the 1994 game (attended by the President) would have predated the Domain Name registration by 16 months, and the 1995 game would have predated the registration by four months. One might well have expected Respondent to register the Domain Name much sooner than it did if the limelight in which the University of Arkansas apparently basked was a motivating factor for Respondent.
In further pursuit of the assertion that Respondent had Complainant's mark in mind when registering the Domain Name, Complainant notes that Respondent has registered a number of other domain names including the nicknames of other well-known NCAA sports teams (<aggies.com>, <longhorns.com>, and others). Complainant fails, however, to place in the record the actual dates on which such other domain names were registered, and does not attempt to show whether, when, and how such other domain names were used (legitimately or otherwise). As such, the mere existence today of these other domain name registrations in Respondent's portfolio is of little use to the Panel in ascertaining Respondent's motive for registering <razorbacks.com> back in 1995.
Further, there is no suggestion in the record that Respondent has been found to have been in bad faith in other proceedings brought under the Policy.
In sum, Complainant's assertion that Respondent had Complainant's mark in mind (much less that Respondent had improper motives) when registering the Domain Name cannot be accepted by the Panel, based merely on the record presented and the inferences urged by Complainant. This case illustrates well the widely recognized principle that the Policy is designed to deal with clear cases of cybersquatting. See Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace, WIPO Case No. D2009-0485 (June 1, 2009) (“UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts”); ICANN, Second Staff Report on Implementation Documents for Uniform Dispute Resolution Policy, Section 4.1(c) (October 24, 1999), at http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm (“The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of ‘abusive registrations.”).
In the present case, the Panel finds that the record simply does not yield clear evidence of cybersquatting, circumstances that bring the case within the provisions of paragraph 4(b) of the Policy, or other facts showing that Respondent registered and used the Domain Name in bad faith. Whether Complainant would have more success in a court of law, where evidence may be fully developed and examined through the use of discovery, interrogatories and other forensic processes and where standards other than those of the Policy may be applied, is not for this Panel to say.
Finally, Complainant has asked the Panel to draw the inference of bad faith against Respondent from correspondence that passed between the parties and their attorneys. In brief, Complainant contends that the correspondence shows that Respondent offered to sell or lease the domain name to Complainant and that this brings the case within the provisions of paragraph 4(b)(i) of the Policy. Respondent contends that this conclusion cannot be drawn from the correspondence.
Here again, it must be remembered that proceedings under the UDRP are truncated and do not provide for a detailed examination of the history of dealings between parties and what this shows about their motives. That observation is relevant here because it is apparent from the correspondence that some of the negotiations were oral; the correspondence reveals a reference on March 18, 2003 to “our earlier telephone conversation” and a reference on May 22, 2008 to “our phone conversation.” Moreover, as the communications took place more than 10 years after the Domain Name was registered and as there was a gap of five years between the initial discussions of 2003 and the later discussions, it is doubtful that the correspondence throws any light on the “primary purpose” requirement in paragraph 4(b)(i) of the Policy. The Panel is therefore of the view that the correspondence and other dealings between the parties do not show bad faith registration or use by Respondent.
In addition, the Panel does not find bad faith under any of the four illustrative scenarios described in paragraph 4(b) of the Policy given that, inter alia, the record appears to show that Respondent registered the Disputed Domain Name to offer e-mail services and not “primarily for the purpose” of selling it to Complainant, as required by paragraph 4(b)(i), despite whatever subsequent discussions between the parties may have taken place; Respondent's other domain name registrations alone do not establish a “pattern” of conduct as required by paragraph 4(b)(ii); Respondent does not appear to be a “competitor” of Complainant as required by paragraph 4(b)(iii); and the record does not show that Respondent has used the Disputed Domain Name to attract Internet users to Respondent's “web site or other on-line location,” as required by paragraph 4(b)(iv).
The Panel declines to find Complainant's pursuit of its Complaint to be abusive within the meaning of paragraph 15(e) of the Rules. Complainant clearly has rights in its strong trademark RAZORBACKS, and simply fell short of meeting all three elements for a transfer order under the Policy.
For all the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Douglas M. Isenberg
The Honourable Neil Anthony Brown QC
Dated: November 2, 2009