WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Board of Supervisors of Louisiana State University and Agricultural and Mechanical College v. PrivacyProtect.org / Dmitry Branitsky
Case No. D2011-1681
1. The Parties
The Complainant is the Board of Supervisors of Louisiana State University and Agricultural and Mechanical College of Atlanta, Georgia, United States of America (“United States of America”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is PrivacyProtect.org of Queensland, Australia / Dmitry Branitsky of Kherson, Kherson Oblast, Ukraine (hereinafter “the Respondent”).
2. The Domain Name and Registrar
The disputed domain name <lsupress.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2011. On October 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2011, the Registrar 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 October 5, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 6, 2011.
The Center verified that the Complaint together with the amended 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 October 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2011.
The Center appointed Torsten Bettinger as the sole panelist in this matter on November 11, 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
Founded in 1860, the Complainant has been the state of Louisiana’s flagship university. Complainant has been known as “LOUISIANA STATE UNIVERSITY” since 1870, and has used the acronym “LSU” since at least 1902. In 2010, the Complainant had over 23,000 undergraduate and 5,000 graduate students enrolled, and maintained an endowment of over USD 385 million.
Since at least as early as 1982, the Complainant has used the trademark LSU in connection with its business and educational activities, and secured a United States federal trademark registration for the mark in 1985. During the years 2005-2010, the Complainant realized nearly USD 23 million in royalties from the sales revenue of products and services licensed with the LSU mark. The Complainant maintains a strong Internet presence, and has registered over 200 domain names containing its LSU mark.
Additionally, the Complainant has maintained an academic press service, known as the LSU Press, since 1935. LSU Press is a nonprofit book publisher dedicated to the publication of scholarly, general interest, and regional books, and has been the recipient of numerous awards throughout the years. The Complainant maintains a website for the LSU Press at “www.lsupress.org”.
The disputed domain name was registered on November 25, 2010, and according to evidence submitted with the Complaint, previously redirected to a website at “www.xtransfer.net”. Visitors to this site were apparently further auto-redirected to a series of websites displaying adult content and dating services. At the date of this decision, however, the domain name no longer resolved to any website.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that it holds both registered trademark rights in the mark LSU, and unregistered rights in the term “LSU Press” on the basis of longstanding commercial use. The Complainant states that the addition of the dictionary word “press” to its well-known LSU trademark does nothing to dispel the risk of confusing similarity, and further that the disputed domain name is identical to its unregistered LSU PRESS mark.
The Complainant further contends that it has not authorized the Respondent to use the LSU or LSU PRESS marks in any manner, that the Respondent has no connection with the Complainant, and that the Respondent is not using the disputed domain name in connection with any bona fide commercial, noncommercial or fair use. The Respondent has, according the Complainant, utilized the domain name to link to unrelated adult content.
Finally, the Complainant alleges that the domain name was both registered and used in bad faith. The Complainant states that the Respondent’s registration of the domain name, which contains the Complainant’s well-known trademarks, is in and of itself evidence of opportunistic bad faith. Furthermore, the Complainant contends that the Respondent has registered the domain name to intentionally attract visitors to its site for commercial gain by diverting traffic intended for the Complainant’s official websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; and BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480.
Additionally, it is well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Complainant has clearly demonstrated its rights in the LSU trademark by virtue of its United States registration, dating from 1985. With regard to the “LSU Press” term, the Panel finds that the Complainant has satisfactorily demonstrated its unregistered trademark rights for the purposes of the Policy by providing evidence of use of the term in commerce for over 75 years. The Complainant submitted with its Complaint copies of press releases, samples of website blogs managed by the press, historical overviews, and reviews of several of noteworthy publications the press has produced over the years, which the Panel finds sufficient to demonstrate the Complainant’s rights to the LSU PRESS mark.
The disputed domain name <lsupress.com> contains the entirety of the Complainant’s LSU PRESS mark, as well as its LSU mark combined with the dictionary term “press”, followed by the gTLD suffix “.com”. Accordingly, the Respondent’s domain name is identical to the Complainant’s LSU PRESS mark, and confusingly similar to its LSU trademark.
Therefore, the Panel finds that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this case, the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has previously used the domain name to link to adult content and dating websites via redirection. The text of the disputed domain name is in no way suggestive of adult content, containing only the Complainant’s well-known marks, and therefore is not being used in a generic or dictionary sense. Such use cannot be considered a bone fide offering of goods or services under the Policy. See Elite Licensing Company SA, Elite Model Management v. Vladimir Smirnov, n/a, WIPO Case No. D2011-1208.
Likewise, the Respondent’s activities cannot be said to constitute a legitimate noncommercial or fair use of the disputed domain name. The Respondent does not appear to be known by the domain name or a name corresponding to the domain name. According to the WhoIs records for the disputed domain name, the Respondent appears to be a natural individual by the name of “Dmitry Branitsky”, who has utilized the privacy registration service PrivacyProtect.org.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Complainant alleges that the disputed domain name has been registered and used in bad faith. The disputed domain name was registered on November 25, 2010, 24 years after the Complainant registered its LSU mark, and 75 years after the Complainant began using its LSU PRESS mark in connection with its academic publishing activities. Accordingly, the Panel finds it inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its marks.
Moreover, the Complainant’s primary website location for the LSU Press is located at “www.lsupress.org”. It is clear, therefore, that the Respondent selected the disputed domain name to capitalize on Internet traffic intended for the Complainant’s site for commercial gain. Such actions are clear evidence of bad faith use and registration under paragraph 4(b)(iv) of the Policy. See LEGO Juris A/S v. Communikas LLC, WIPO Case No. D2010-2115.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met.
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 <lsupress.com> be transferred to the Complainant.
Dated: November 21, 2011