WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Collin County Community College District d/b/a Collin College v. Off Campus Books, Howard Hutton
Case No. D2011-0583
1. The Parties
Complainant is Collin County Community College District d/b/a Collin College of Texas, United States of America represented by the law firm Strasburger & Price, LLP of United States of America.
Respondent is Off Campus Books, Howard Hutton of Texas, United States of America, represented by the law firm Blume, Faulkner, Skeen & Northam, PLLC, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <collincollegebooks.com> is registered with FastDomain, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2011. On April 1, 2011, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On April 4, 2011, FastDomain, 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” 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 April 6, 2011. In accordance with the Rules, paragraph 5(a), the extended due date for Response was May 13, 2011. The Response was filed with the Center on May 13, 2011.
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 19, 2011. The Panel finds that it was properly constituted. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant submitted a supplemental filing to the Center on May 18, 2011. Following its customary practice the Center in acknowledging receipt of the supplemental filing advised Complainant that the supplemental filing would be referred to the Panel on appointment, and that under the Rules the Panel in effect had sole discretion to determine its admissibility.
4. Factual Background
Complainant is a community college district providing educational services for undergraduate college students at seven campuses in Collin and Rockwall Counties, immediately north of Dallas, Texas, United States of America. It was founded in 1985 as an entity of the State of Texas. Since 2007 Complainant has identified itself as Collin College; its principal website is “www.collin.edu”. In March 2011 it filed applications in the United States Patent & Trademark Office (USPTO) for three service marks for the name Collin College. No action has been taken on these applications.
Respondent does business under the names of Off Campus Books and Cougar Books. On Respondent’s principal website at “www.offcampusbooks.com” the home page states “Off Campus Books (servicing UT [University of Texas] Dallas) Cougar Books (servicing Collin College)” (telephone numbers omitted). This home page neither claims nor disclaims affiliation with Complainant. There is a physical store for each designation, located near a campus of the appropriate school. A significant part of Respondent’s Cougar Books business is the sale of course books prescribed by Complainant’s instructors. Respondent also sells clothing such as t-shirts and sweatshirts bearing the name Collin College.
Respondent registered the disputed domain name in May 13, 2009. Internet users entering the disputed domain name in their browsers are automatically redirected to Respondent’s principal website.
In August 2009 Complainant, through counsel, sent Respondent a letter, objecting to Respondent’s registration of the disputed domain name and demanding that Respondent cease and desist from using it. In early September 2009 Respondent’s counsel replied, denying any impropriety and inviting Complainant to specify particulars of its charges. Respondent’s counsel concluded: “Should you choose not to provide the specific basis for your allegations, I will consider this matter closed.”
On May 3, 2011, Respondent lodged a letter of protest with the USPTO contesting Complainant’s pending service mark applications.
5. Parties’ Contentions
1. The disputed domain name incorporates Collin College, Complainant’s name, in its entirety. Complainant holds rights in that name by reason of its pending USPTO applications, and also has demonstrated common law rights by its use of that name for several years.
2. Complainant has never authorized Respondent to use its name. Respondent intentionally selected the disputed domain name to take advantage of Complainant’s mark, in order misleadingly to imply affiliation with or endorsement of Complainant. Therefore Respondent lacks rights or legitimate interests in the disputed domain name.
3. These same reasons constitute registration and use in bad faith as exemplified in paragraph 4(b)(iv) of the Policy. By creating initial interest confusion among Internet users Respondent has caused actual confusion among Complainant’s students and has diverted prospective customers from Complainant’s own bookstore to Respondent’s.
Prior to addressing the merits Respondent raises two issues about the Panel’s deciding this proceeding at this time.
1. First, noting that Complainant is a Texas state entity, Respondent asserts that the Fifth Amendment to the Constitution of the United States1 and its counterpart in the Texas Constitution prohibit a “taking” of Respondent’s property without just compensation or due process of law. Because compensation is required, this Panel lacks jurisdiction to decide this proceeding.
2. Second, without waiving its jurisdictional argument Complainant requests that this Panel “dismiss” or “stay” this proceeding until Respondent’s pending USPTO applications are resolved, as “[a]bsent final action by the USPTO, no issues ripe for adjudication by this Panel exist.”
Respondent disputes Complainant on each of the substantive Policy elements:
3. Complainant lacks valid trademark rights in Collin College, as that designation is unregistered in the USPTO or the office of the Texas Secretary of State. Complainant’s evidence of common law rights is inadequate. Because one word of the claimed mark is a geographic identifier and the other a generic word (and one that Complainant has disclaimed in its application), Complainant lacks rights in a mark sufficient to invoke the Policy.
4. Respondent has rights and a legitimate interest in the disputed domain name. For years – since before Complainant changed its name from Collin County Community College to Collin College - Respondent has sold course books for Complainant’s classes and clothing and other goods that carry Complainant’s name. Complainant is and has always been well aware of this. Respondent has used the disputed domain name to sell these goods on the Internet for two years without objection from Complainant. Respondent’s using the disputed domain name would be “fair use” of Complainant’s mark, should that mark ever be registered.
5. Respondent’s use of the disputed domain name for several years is legitimate, so neither registration nor use was in bad faith. “Respondent cannot intentionally interfere with a mark that does not and may never exist.”
6. Respondent’s counsel never received an answer to its September 2009 letter, with its unmistakable ending admonition. Complainant’s inaction for the following twenty-one months, during which Respondent used the disputed domain name without complaint, provides grounds for a finding of laches that bars any relief in this proceeding.
6. Discussion and Findings
The first order of business is to address Respondent’s argument that this Panel lacks jurisdiction, for without jurisdiction this Panel lacks the power to decide anything. That matter is easily resolved. When it registered the disputed domain name Respondent agreed to the following:
“7. DOMAIN NAME DISPUTE POLICY. If you reserved or registered a domain name through us, or transferred a domain name to us from another registrar, you agree to be bound by the Dispute Policy which is incorporated herein and made a part of this Agreement by reference.
8. DOMAIN NAME DISPUTES. You agree that, if the registration or reservation of your domain name is challenged by a third party, you will be subject to the provisions specified in the Dispute Policy in effect at the time of the dispute.”
Arbitration or similar agreements are perfectly legal in Texas,2 even in contracts of adhesion,3 and submission to such a proceeding raises no issue of confiscation or denial of due process of law.4 This longstanding principle applies equally to governmental entities, unless of course there exists a statutory restriction to the contrary. Respondent has identified no such limitation and the Panel (a Texas lawyer) is aware of none. In any event it was Respondent that agreed to submit to a Policy administrative proceeding in respect to the domain name it registered, and this agreement expressly confers jurisdiction on the Panel to decide this proceeding. This administrative proceeding is all the “process” that Respondent is “due” on this matter and, should the Panel determine that Respondent registered and used the disputed domain name in violation of the Policy to which Respondent agreed to be bound, “just” or “adequate” compensation for transfer to Complainant is nil.
B. Procedural Matters
Complainant’s Supplemental Filing
Leave to file Complainant’s Supplemental Filing is denied. Parts II-IV of that document is merely re-argument of matters raised in the Complaint, addressing factual circumstances laid out in the Response that Complainant should have anticipated. Part I, addressing jurisdiction, is unnecessary to the Panel’s resolution of this case.
Suspension or Termination of this Proceeding
Respondent’s request to dismiss or stay this proceeding until Complainant’s pending applications are decided by the USPTO is denied. This Panel believes that paragraph 18 of the Rules, which authorizes a panel in its discretion to “suspend or terminate” a UDRP proceeding when there are simultaneously pending “legal proceedings” involving the domain name at issue, extends to pending administrative actions as well as litigation. Here however Complainant’s contested service mark applications affect the disputed domain name only marginally. As explained more fully in section C below, a registered mark is not necessary to constitute a mark “in which complainant has rights” for purposes of paragraph 4(a)(i) of the Policy. A suspension or termination will accomplish nothing and needlessly delay resolution of the subject of this administrative proceeding – Respondent’s entitlement (or not) to the disputed domain name.
C. Identical or Confusingly Similar
Similarity is obvious, as the disputed domain name incorporates as its dominant feature Complainant’s shorthand name Collin College, a term in which Complainant claims trademark rights. The question in this proceeding is whether Complainant holds rights in that name sufficient to invoke the Policy.
This inquiry does not turn on the merits of Complainant’s pending trademark applications to which Respondent has objected. Those are matters for the USPTO. Paragraph 4(a)(i) of the Policy extends well beyond nationally registered marks to include, in appropriate circumstances, state-registered marks and common law trademarks, and, in somewhat narrower circumstances, any term used to identify goods, services, or a business. Such a term need not be registered and may sometimes even be incapable of registration. Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, WIPO Case No. D2007-0416 (<casinoarizna.com>; “Indeed it matters not if the mark, . . . . never matures to registered status”); Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro d/b/a Weber’s Mackinac Island Florist, WIPO Case No. D2001-0653 (<mackinacislandflorist.com>; state-registered). Collin College, a name that Complainant uses regularly and publicly to identify itself and the educational services it provides, plainly falls within this category. Especially is that so when Respondent, which is based in an adjacent county and whose goods and services include those carrying Complainant’s brand, was well aware of Complainant and Complainant’s use of the term as its identifier. As in Paul McMann v. J McEachern, WIPO Case No. D2007-1597,
“[R]espondent, who had done business with Complainant, was well aware of Complainant’s use of his name as a commercial identifier when she registered the disputed domain names; that was one reason [respondent] selected these names for her websites. That fact alone is enough to satisfy the first element of paragraph 4(a)(i) . . .”
Complainant has carried its burden of proof under this Policy head.
D. Rights or Legitimate Interests
Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name by demonstrating that it has never authorized Respondent to use its name, and that Respondent has not been commonly known by the disputed domain name.
Respondent first relies on the fact that it has sold books for Complainant’s courses and other goods with Complainant’s name on them, for several years and with Complainant’s full knowledge, as proof of a legitimate interest.5 While apparently Respondent did not purchase the books or clothing from Complainant, Respondent’s evidence (invoices for the books that designate the books as prescribed for Complainant’s courses) does lend some support to its assertion that it is at least impliedly authorized to sell the books to Complainant’s students.
The fact that Respondent is an authorized seller of books prescribed by Complainant’s professors or clothing or other goods featuring Complainant’s name does not ipso facto entitle Respondent to use Complainant’s mark in its principal web address any more than it would in the name of its brick-and-mortar business.6 Treating Respondent as an authorized reseller, the Panel looks to the Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, factors (now embodied in the Consensus View in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.3) to determine if Respondent has a legitimate interest. Those factors (citations omitted) are:
“To be “bona fide”, the offering must meet several requirements. Those include, at the minimum, the following:
- Respondent must actually be offering the goods or services at issue.
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.”
There is no indication in this proceeding that Respondent sells only Complainant-branded goods or is the exclusive source of books for Complainant’s courses, and the relationship between the parties is not disclosed, so there is no basis for the Panel’s inferring a right so to use Complainant’s name under the Oki Data test. Consent from Complainant to use Complainant’s name in this manner is required.
Express consent to do so was never given and as noted may not be implied only from the fact that Respondent legitimately sold Complainant-branded goods. Far from consenting, Complainant objected to Respondent’s registration of the disputed domain name and consequent use of it for its store in August 2009, soon after that registration took place.
It is a closer question whether Complainant’s twenty-one months of silence after Respondent’s flat denial of the charges in the cease-and-desist letter provide a defense. Laches is not available in a Policy proceeding,7 but two Policy paragraphs furnish an alternate on analogous grounds. Continuous, unobjected-to use for a legitimate business might bring Respondent to one or both of the safe harbors of paragraphs 4(c)(i) and 4(c)(ii).8
Respondent claims to have developed considerable “good will and brand equity” during the period between September 2009, when Respondent replied to the cease-and-desist letter, and April 2011, when the Complaint was filed. Respondent furnishes no evidence, however, to support this assertion, and without such evidence, in particular that the “considerable expense” was made primarily to promote “Collin College” or the domain name or online business, rather than merely the Cougar Books business generally, there is no basis for finding that Respondent had been commonly known by that designation (Policy, paragraph 4(c)(i), emphasis added). According to the record Respondent was commonly known as Cougar Books.9
Complainant has established this Policy element.
E. Registered and Used in Bad Faith.
Lacking a right or legitimate interest in the disputed domain name, Respondent registered and has used the disputed domain name in bad faith for Policy purposes, as by so doing Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [its] web site or location or of a product or service on [its] web site or location.” Policy, paragraph 4(b)(iv). Respondent was well aware of Complainant and Complainant’s use of Collin College to identify itself when Respondent registered the disputed domain name in 2009, and the only plausible inference for selecting Complainant’s name was to imply affiliation with or endorsement by Complainant. See C. Bechstein Pianofortefabrik AG v. Melvin Besbrode, Besbrode Pianos Leeds, WIPO Case No. D2008-1528. Respondent’s claim of an implied disclaimer has little evidence to support it and is beside the point. Without a right or legitimate interest in Complainant’s mark Respondent had no basis for appropriating it in the first place.
Complainant has established Respondent’s bad faith under paragraph 4(a)(iii).
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 <collincollegebooks.com> be transferred to Complainant.
Richard G. Lyon
Dated: June 2, 2011
1 The Fifth Amendment reads in pertinent part: “No person shall be . . . . deprived of life, liberty, or property, without due process of law; nor shall private property be taken for public use, without just compensation.” The Texas counterpart, Article I section 17, requires “adequate compensation.”
2 See, e.g., Nafta Traders, Inc. v. Quinn, __ S.W.3d __ (Texas; slip opinion May 13, 2011).
3 In fact the Supreme Court of the United States recently reaffirmed this basic principle in a case involving an adhesion contract. AT&T Mobility LLC v. Concepcion, __ US __ (No. 09–893; April 27, 2011).
4 Given that the Policy (paragraphs 4(k) and 5) expressly reserves any rights available at law, including the right to seek redress in the courts, Respondent is free to litigate this issue if it desires. But it remains bound by its contractual agreement to submit to a Policy proceeding regarding the disputed domain name
5 It should be emphasized at the outset that nothing in this decision addresses the legitimacy of Respondent’s business, i.e., the propriety of its selling the books and other goods it now sells. That is a matter beyond the scope of this UDRP proceeding. Paragraph 4(a)(ii) deals with legitimate interests in the disputed domain name.
6 For example, the department store Harrod’s could not call itself Burberry’s or use the Burberry’s trademark in a domain name merely because it sells many items of Burberry’s goods.
8 Paragraph 4(c) of the Policy provides in pertinent part:“. . . . Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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.”
9 Respondent makes a passing reference to “fair use,” no doubt referring to paragraph 4(c)(iii) of the Policy. As Respondent’s use has been entirely commercial, that safe harbor is unavailable.