WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
President and Fellows of Harvard College v. A Happy DreamHost Customer/Cary Humphries
Case No. D2010-2184
1. The Parties
The Complainant is President and Fellows of Harvard College of Cambridge, Massachusetts, United States of America, represented by Steptoe & Johnson LLP, United States of America.
The Respondent is A Happy DreamHost Customer/Cary Humphries of Brea, California, United States of America and Canberra, Australia, respectively.
2. The Domain Name and Registrar
The disputed domain name <harvardessays.org> ("the Domain Name") is registered with New Dream Network, LLC dba DreamHost.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2010. On December 15, 2010, the Center transmitted by email to New Dream Network, LLC dba DreamHost.com a request for registrar verification in connection with the disputed domain name. On December 19, 2010, New Dream Network, LLC dba DreamHost.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 5, 2011, the Complainant declined to Amend the Complaint.
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 the Respondent of the Complaint, and the proceedings commenced on January 6, 2011. Still on the same day, the proceedings were suspended and subsequently reinstituted on April 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2011.
The Center appointed Dawn Osborne as the sole panelist in this matter on May 13, 2011. 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 the President and Fellows of Harvard College, established in 1636 and the oldest institution of higher learning in the United States. It owns trade mark registrations containing HARVARD for educational services and goods, the mark having been used in commerce for services since 1638 and for goods since 1827. The Respondent registered the Domain Name in 2010 and used it for a web site offering writing and educational services not connected with the Complainant.
5. Parties’ Contentions
The Complainant's contentions can be summarized as follows:
The Complainant is the President and Fellows of Harvard College, established in 1636 and the oldest institution of higher learning in the United States. It owns trade mark registrations containing HARVARD for educational services and goods in the US and across the world, the mark having been used in commerce for services since 1638 and for goods since 1827. The mark is world famous and well known. The Complainant also has a pending application for an "H" and shield mark ("the Shield Mark") which it has used in the United States since 2002.
As a result of the Complainant's esteemed history, the advertising, promotion and sale of its goods and services under the HARVARD mark and its extensive trade mark enforcement program, the HARVARD mark has generated substantial goodwill and has come to be associated by the public with products and services only of the highest quality offered by the Complainant. The HARVARD mark is an asset of incalculable value to the Complainant.
The Complainant owns many domain names including the HARVARD mark including <harvard.com>.
370 years after the Complainant first used the HARVARD mark the Respondent registered the Domain Name in August 2010 and used it for writing and educational services.
The HARVARD mark is inherently distinctive. The Domain Name is confusingly similar to the HARVARD mark. The inclusion of the descriptive term "essays" does not sufficiently distinguish the Domain Name from the HARVARD mark.
The Complainant never authorised the Respondent for any use of the Domain Name. The Respondent does not own any trade mark registrations including HARVARD. Using the Domain Name for educational services to divert trade from the Complainant is not a bona fide offering of goods or services pursuant to the Policy. The Respondent has no rights or legitimate interests in the Domain Name.
The Complainant sent a cease and desist letter to the Respondent but did not receive a reply. The Respondent had actual or constructive notice of the Complainant's rights because the mark is world famous and there is no plausible explanation for the registration and use of the Domain Name other than to divert Internet traffic for commercial gain. The Respondent must have known that use of the HARVARD mark would result in the public inevitably associating the Respondent's services with the Complainant. The Respondent is using the Complainant's Shield Mark in the Respondent's logo on the Respondent's web site. This use clearly demonstrates the Respondent's bad faith intent to misappropriate the Complainant's trade mark rights. By registering the Domain Name and using it to redirect Internet users to the Respondent's commercial web site the Respondent registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4 (b)(iv).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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.
A. Identical or confusingly similar
The Domain Name is confusingly similar to the Complainant’s HARVARD trade mark, consisting of the Complainant’s HARVARD trademark and the generic text “essays”. The distinctive part of the Domain Name is the HARVARD name. The addition of the non distinctive word “essays” which is commonly used in relation to education itself does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s HARVARD trademark.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name. In the circumstances of this case, and in view of the Panel’s discussion here below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a Domain Name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted 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, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a Domain Name equivalent to the Complainant’s HARVARD trade mark with only a generic and educationally related term added and then market and offer educational services which are not connected with the Complainant using the Domain Name, the HARVARD mark and the Shield Mark. In the absence of a Response from the Respondent, and considering the material attached to the Domain Name the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith with an intent, followed by actual use of the Domain Name, to attempt to attract business to its site for commercial gain by creating a likelihood of confusion that its website is connected to the Complainant and its trade marks.
Accordingly the Respondent has registered and used the Domain Name in bad faith in accordance with the Policy (Paragraph 4(b)(iv)) as contended by the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <harvardessays.org> be transferred to the Complainant.
Dated: May 23, 2011