WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Board of Supervisors of Louisiana State University and Agricultural and Mechanical College v. Registration Private, Domains by Proxy, LLC / Chad Hartvigson
Case No. D2013-1693
1. The Parties
Complainant is Board of Supervisors of Louisiana State University and Agricultural and Mechanical College of Baton Rouge, Louisiana, United States of America (the “United States” or “US”), represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States / Chad Hartvigson of Seattle, Washington, United States, represented by Stokes Lawrence, P.S., United States.
2. The Domain Name and Registrar
The disputed domain name <lsuteamshop.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2013. On September 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, information that was already included in the Complaint in addition to the privacy shield.
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 October 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2013. The Response was filed with the Center October 23, 2013.
On October 29, 2013, Complainant filed a Supplemental Filing. On October 30, 2013, Respondent filed a Supplemental Filing. On November 2, 2013, Complainant filed a further Supplemental Filing.
The Center appointed Michael A. Albert, Lawrence K. Nodine and Jeffrey D. Steinhardt as panelists in this matter on November 28, 2013. 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.
4. Factual Background
Complainant is a public university in Louisiana, US, operating under the name Louisiana State University since 1870. In Fall 2012 student body exceeded 29,000 undergraduate and graduate students, and its endowment exceeded USD 437 million.
Complainant is the owner of the following trademark registration:
LSU, a character mark, US registration No. 1331940, filed September 29, 1982 and registered on April 23, 1985.
Respondent is Chad Hartvigson, who registered the disputed domain name <lsuteamshop.com> on March 2, 2011.
5. Parties’ Contentions
A. Complainant
In its Complaint and Supplemental Filing, Complainant alleges:
(i) The disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.
(a) Complainant asserts rights in a US trademark registration directed to the LSU mark (US Reg. No. 1331940), used in connection with the sale of goods and services comprising educational services, namely, providing undergraduate and graduate level education, as well as commercial activities, namely, selling merchandise bearing the LSU mark.
(b) Complainant alleges that it has continuously and exclusively used the LSU mark to advertise its institution since at least 1982. It asserts placement of the LSU mark on numerous items of apparel. Many such items include sportswear associated with the collegiate teams. It asserts success in widespread commercial use of the mark, generating more than USD 500 million between 2008 and 2012 from sales of merchandise, “most of which” displayed the LSU mark.
(c) Complainant demonstrates ownership of numerous domain names incorporating “lsu”; these include <lsu.edu>, <lsu.com>, <lsumerchandise.com>, and <lsusportshop.com>.
(d) Complainant alleges advertising its mark through various media. It provides several game day programs, media guides, and team yearbooks to support this position.
(e) Complainant provides a host of unsolicited references by third parties identifying Complainant as simply, “LSU.” These references were published before Respondent registered the disputed domain name.
(f) Complainant states that a UDRP panel recognized Complainant’s rights in the LSU mark as recently as 2011.
(g) Complainant alleges the disputed domain name incorporates the entirety of Complainant’s mark, making the disputed domain name confusingly similar to the mark. Complainant contends the addition of the generic or descriptive words “team” and “shop” does not reduce the confusing similarity.
(ii) Respondent has no rights or legitimate interests in the disputed domain name.
(a) Complainant asserts Respondent never possessed any license, permission, or other right from Complainant to incorporate the LSU mark in a domain name.
(b) Complainant alleges Respondent had actual notice of this dispute on April 9, 2013, the date on which Complainant’s attorney contacted Respondent. Complainant alleges Respondent replied to this notice on May 7, 2013, and this response evidenced notice. In support of this contention, Complainant submits an email thread between itself and Respondent. Complainant argues that Respondent also had constructive notice upon first registering the disputed domain name through Complainant’s preexisting federal trademark. Complainant contends “extensive use and widespread recognition” of the LSU mark predated the issuance of the trademark, and bolsters its contention of constructive notice.1
(c) Complainant alleges Respondent is intimately familiar with collegiate trademarks, having previously acted as a licensee for other colleges. It submits as evidence a declaration of the Associate General Counsel for the Collegiate Licensing Company, LLC (“CLC”) J. D. Aronowitz stating “Respondent has been licensed previously by CLC to produce and sell apparel for certain collegiate institutions, but not Complainant.”
(d) Complainant alleges Respondent did not use the disputed domain name in connection with a bona fide offering of goods and services until after the dispute arose. Complainant alleges this constituted a two year period of time in which Respondent kept the disputed domain name as a “parked page.” As evidence, Complainant points to the CLC Counsel’s declaration that “the <lsuteamshop.com> domain name was a parked page until I contacted Respondent on April 9, 2013. . . Subsequent to my initial contact, the <lsuteamshop.com> domain name began to point to a website captioned ‘Laurelhurst Sports Unlimited’.”
(e) Complainant argues Respondent’s true interests are shown by his offer, when first contacted, to transfer the disputed domain name to Complainant in exchange for a licensing agreement.
(f) Complainant alleges Respondent is not known as, nor has conducted business as, LSU or LSU Team Shop.
(g) Complainant alleges Respondent’s current use of the site is to advertise and sell merchandise emblazoned with the name, “Laurelhurst Sports Unlimited.” Complainant argues no entity bearing this name exists, making it a “post hoc justification for the website.” As support, Complainant submits a Google search results page for the query, “Laurelhurst Sports Unlimited,” which returned a single link connecting to Respondent’s site. Complainant also alleges development of the site into “Laurelhurst Sports Unlimited” occurred only after the dispute began.
(h) Complainant argues Respondent’s use of the mark is not for legitimate noncommercial or fair use purposes because Respondent currently uses the site to sell merchandise. Complainant further argues said merchandise is emblazoned with the name of a fictional entity in which Respondent has no legitimate interest.
(iii) The disputed domain name was registered and is being used in bad faith.
(a) Complainant alleges Respondent’s registration of <lsuteamshop.com> in 2011 was in bad faith because Respondent kept the disputed domain name as a parked page for two years, and its first use was to suggest a licensing arrangement with Complainant.
(b) Complainant argues Respondent registered roughly 90 domain names consisting of the marks of 79 universities and colleges, followed by “teamshop.com,” a formula allegedly exhibited in the disputed domain name. Complainant argues many of these registered names have no generic geographic representations in their prefixes, suggesting they are meant to be collegiate marks.
(c) Complainant alleges Respondent is using Complainant’s well-known mark to attract Internet consumers to its site, for commercial gain.
(d) Complainant argues Respondent could not help but be aware of Complainant’s mark, due to Respondent’s history of legitimate license agreements with collegiate institutions, and because of Complainant’s wide renown.
(e) Complainant alleges Respondent’s contracts for legitimate licenses include a provision forbidding Respondent’s unauthorized use of collegiate trademarks, and his breach of this contractual obligation through the disputed domain name demonstrates bad faith.
iv) Complainant denies Respondent’s allegations of Reverse Domain Name Hijacking.
(a) Complainant contends it brought the present action for legitimate reasons. Complainant asserts the action is not an attempt to achieve Reverse Domain Name Hijacking or to harass Respondent.
B. Respondent
In his Response and Supplemental Filing, Respondent alleges:
(i) The disputed domain name is not identical or confusingly similar to the mark in which Complainant has rights.
(a) Respondent alleges the use of the disputed domain name to sell Laurelhurst Sports Unlimited merchandise forecloses the possibility of consumers confusing the site as representing Complainant.
(b) Respondent argues the abbreviation, “lsu” is not associated exclusively with Complainant. In support of this argument, Respondent submits an Internet search on the database “Acronym Finder,” which returned 29 results for the abbreviation, “lsu.”
(c) Respondent alleges the disputed domain name itself is not a trademark or brand, and contains two generic terms incapable of infringement, and a three-letter acronym that stands for Laurelhurst Sports Unlimited.
(d) Respondent claims the acronym “lsu” is associated with Laurelhurst Sports Unlimited in the minds of local inhabitants of the Laurelhurst neighborhood of Seattle, Washington, US. Respondent contends this makes the “lsu” in the disputed domain name a geographically descriptive term.
(e) Respondent claims Complainant has not associated the LSU mark with “custom-made clothing” in the minds of average Internet consumers.
(ii) Respondent has rights or legitimate interests respecting the disputed domain name.
(a) Respondent contends Laurelhurst is a Seattle neighborhood in which Respondent lives, and that he seeks to cater to this neighborhood’s sports teams through the merchandise offered by the disputed domain name.
(b) Respondent alleges, in a submitted declaration, that he sponsors Little League baseball teams “in the Laurelhurst and the greater North Seattle area,” which constitute the North East Seattle Little League, and “who play their baseball games in the Laurelhurst Playfield.” Respondent also claims to support the Laurelhurst Beach Club, and to donate to the Laurelhurst Community Center, which maintains Laurelhurst tennis courts, running trails, and baseball and soccer fields.
(c) Respondent argues he held the disputed domain name without incident for two years after registering it on March 2, 2011; although use during that time was passive, Respondent contends such passivity does not automatically prove illegitimate use.
(d) Respondent alleges current use of the site to sell clothes with the words “Laurelhurst Sports Unlimited” to Laurelhurst residents that want “to show support for their friends’ and families’ youth sports teams.” Respondent claims the proceeds from the site will be donated to the Laurelhurst neighborhood.
(e) Respondent alleges plans to advertise the disputed domain name in a local Laurelhurst magazine in January 2014. Respondent also alleges plans to enlarge the online store and expand marketing in Spring 2014.
(iii) Respondent registered and is using the disputed domain name in good faith.
(a) Respondent contends he had no plans to sell the disputed domain name to Complainant at the time of registering, or subsequently, as evidenced by the fact Complainant was the one to initiate contact.
(b) Respondent claims Complainant’s allegations and evidence of Respondent’s offer to license the disputed domain name are inadmissible. Respondent adds that an offer to transact is not automatically indicative of bad faith. Further, Respondent suggests his willingness to consider a license stemmed from Complainant’s “aggressively initiated” demands for transfer, coupled with Respondent’s status as a reasonable businessman.
(c) Respondent alleges he has never sold, or offered to sell, any of his registered domain names. Respondent also alleges he has never “leveraged a domain name to obtain a college license.”
(d) Respondent argues he registered numerous “teamshop” domain names to target local K-12 schools, not universities. As support, Respondent submits exhibits showing many of its domain names selling merchandise displaying the names of K-12 schools and teams that happen to be similar to the names or teams of collegiate institutions.
(e) Respondent alleges a history of registering more than 800 domain names. Respondent argues this evidences a broader business pattern, of which <lsuteamshop.com> is a part. As such, registration was not merely a targeted attempt to use Complainant’s mark.
(f) Respondent claims the disputed domain name was registered in good faith, with the intent that “lsu” stand for Laurelhurst Sports Unlimited. Respondent repeats his prior allegation of membership in, and support for the Laurelhurst neighborhood.
(g) Respondent argues Complainant’s additional allegations of bad faith reflect unsubstantiated inferences regarding Respondent’s motives and knowledge of Complainant’s mark.
(h) Respondent argues that the overlap with Complainant’s mark reflects nothing more than coincidence and Respondent’s “good fortune” in registering the disputed domain name before Complainant.
(iv) Respondent asks the Panel to find Reverse Domain Name Hijacking.
(a) Respondent states Complainant should have known it could not prevail in this action, due to the information Respondent provided regarding Respondent’s legitimate ownership and use of the disputed domain name. Respondent alleges Complainant’s true intention in bringing the action was to harass Respondent and achieve Reverse Domain Name Hijacking.
6. Discussion and Findings
A. Preliminary Matters
The Panel first rules on one procedural issue. In this action, both parties submitted Supplemental Filings, which the Panel accepts. Generally, UDRP panels will only accept supplemental filings that evidence “exceptional circumstances as to why the subject matter of the further filing was not included” in prior filings. Wal-Mart Stores, Inc. v. Larus H. List, WIPO Case No. D2008-0193. The supplements must also “clarif[y] an issue fundamental to a dispute.” NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984. The Panel finds that accepting both parties’ initial Supplemental Filings is consistent with the Rules and general practice under the UDRP.
Complainant also submitted a Further Supplemental Filing. The Panel finds, however, that Complainant’s Further Supplemental Filing does not meet the necessary standard for acceptance. The Further Supplemental Filing looks at twelve of Respondent’s sites, and suggests two of these may have previously claimed association with universities. Apparently, none continues to so do, and none is the disputed domain name. Although allegedly responding to new facts and arguments contained in Respondent’s Supplemental Filing, the new material is largely cumulative of previous arguments and Complainant’s previously-submitted Exhibit R. Complainant’s failure to demonstrate exceptional circumstances solidifies the Panel’s conclusion to reject Complainant’s Further Supplemental Filing. In any event, the Panel’s ruling in this action would not be different had it accepted the Further Supplemental Filing.
B. Standard of Analysis
Paragraph 15(a) of the Rules instructs this Panel to “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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
It is well established that registering a mark with a trademark authority is one way to demonstrate rights in said mark under Policy paragraph 4(a)(i). See Metropolitan Life Insurance Company v. Robert Bonds, NAF Claim No. 0873143. Here, Complainant is owner of the LSU trademark registration, US registration No. 1331940, a character mark, filed September 29, 1982 and registered on April 23, 1985. Such registration preceded Respondent’s registration of the disputed domain name, which occurred on March 2, 2011. Complainant continues to use the mark, and has widespread association with the mark by virtue of its large student body and substantial revenue from merchandise (including clothes) displaying the mark. Complainant also owns rights in a host of additional character marks and domain names incorporating the “LSU” abbreviation, as well as several design marks.
Respondent argues Complainant’s interest in the mark is weak, citing other educational institutions and names which the same initials could represent. The Panel does not find this argument persuasive. A prior UDRP panel has previously ruled on the issue, finding Complainant had rights in the three-letter mark by virtue of its federal trademark. See Board of Supervisors of Louisiana State University and Agricultural and Mechanical College v. PrivacyProtect.org / Dmitry Branitsky, WIPO Case No. D2011-1681. Respondent offers no evidence of any “LSU” trademarks registered to entities other than Complainant. Respondent’s evidence that an Internet search turned up a myriad of names that can be abbreviated to “lsu” does not demonstrate any widespread public association of the abbreviation with any of these other names. The Panel finds that Complainant has longstanding rights in the mark.
Respondent offers no evidence that anyone, including Laurelhurst residents, associates “lsu” or <lsuteamshop.com> with any entity besides Complainant. Although Respondent contends he plans to advertise his site locally after the New Year, such plans do not evidence a diminished likelihood of confusing similarity at the time the dispute arose, or at the current time.
The disputed domain name, <lsuteamshop.com>, incorporates three elements—(1) Complainant’s LSU mark, (2) the words “team” and “shop,” and (3) the generic Top-Level Domain (“gTLD”) “.com.” The addition of “team” and “shop” prevent the disputed domain name from being identical to the mark.
However, the disputed domain name is confusingly similar to Complainant’s mark. Respondent claims that the “l” in “lsu” is a geographically descriptive identifier for Laurelhurst. While Laurelhurst is a geographic area, the disputed domain name includes only the abbreviation, “lsu,” which is the entirety of Complainant’s mark and not geographically descriptive, making its use impermissible. It is irrelevant how different Respondent’s merchandise may be from Complainant’s; the relevant inquiry is only into the similarity between a mark and a domain name. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.
The additional elements of the disputed domain name fail to aid Respondent. The words “team” and “shop,” read together, are descriptive but not distinctive, and as such cannot overcome the claim of confusing similarity. See Philip Morris USA Inc. v. Jesse Beck, WIPO Case No. D2013-1087 (finding confusing similarity where the domain name contained the complainant’s MARLBORO trademark, combined with the word “team”); see also Tommy Bahama Group, Inc. v. Private Whois tommybahamaoutlet.com, WIPO Case No. D2012-0197 (finding confusing similarity where the domain name contained the complainant’s TOMMY BAHAMA trademark, combined with the word “outlet”). In Philip Morris USA Inc. v. Jesse Beck, supra, the panel found particularly troubling complainant’s possession of an actual “Team Marlboro.” Here, Complainant has multiple sports teams, sells sports merchandise associated with these teams, and owns domain names linked to this activity, such as <lsumerchandise.com>, and <lsusportshop.com>. While Complainant may not have a “team shop,” such a generic term is troublingly close to Complainant’s “sports shop,” and in any case fails to adequately differentiate the disputed domain name from Complainant’s mark.
The addition of the gTLD “.com” does not lessen the similarity. See, e.g., F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 (finding the domain name <all-about-tamiflu.com> confusingly similar to the trademark TAMIFLU despite the addition of a gTLD and descriptive words). These facts compel a finding of confusing similarity.2
The Panel finds Complainant has proven the requirement of Policy, paragraph 4(a)(i).
C. Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii), and then the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating it has rights or legitimate interests in the disputed domain name. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 0741828. Complainant’s burden here is not high, “[b]ecause it is difficult to produce evidence to support a negative statement.” Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Under Policy paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of the dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is 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 at issue.
It is undisputed that Respondent had not put the disputed domain name to use as an active site at the time of Complainant’s first contact, despite two years passing since registration. Although Respondent claims plans to advertise the site in 2014, there is no evidence Respondent was demonstrably preparing these advertisements, or preparing any active use, at the time the dispute arose. Any use or preparation for use that occurred after commencement of the dispute is irrelevant. See Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938. Respondent thus does not have any rights or legitimate interests under the first category.
Regarding the second category, Complainant submits evidence of a Google search revealing one result for the query, “Laurelhurst Sports Unlimited,” suggesting it is not a well-known entity. Complainant also provides evidence Respondent carried on no business under this name until after the dispute arose, at which point Respondent began displaying the words “Laurelhurst Sports Unlimited” on his website and on items it sold. Such timing makes Respondent’s claim that “lsu” stands for Laurelhurst Sports Unlimited suspect. It is revealing that, when first contacted by Complainant, Respondent suggested a possible licensing deal. This indicates an initial interest in using the initials to represent Louisiana State University.
Respondent points out that Laurelhurst itself exists (and has existed) as a real neighborhood in which Respondent resides. Respondent also points out that Laurelhurst contains several sports venues. Respondent’s evidence supports a legitimate interest only in the name “Laurelhurst.” No additional evidence suggests Respondent was known to anyone, including Laurelhurst residents, as “Laurelhurst Sports Unlimited.” Additionally, the disputed domain name uses “lsu,” not Laurelhurst Sports Unlimited. Respondent fails to prove a business reputation linked either to the initials or to the name he alleges they abbreviate.
Regarding the third category, Complainant argues Respondent’s site existed essentially as a “parked page,” displaying no actual content, until the time Complainant made contact and demanded transfer of the disputed domain name. Complainant demonstrates Respondent replied by suggesting a possible transfer in exchange for licensing use of the site. This suggests commercial use.
It is also undisputed that Respondent now uses the site to sell merchandise. Respondent asserts “[a]ll proceeds from the site will be donated to the Laurelhurst neighborhood in Seattle, Washington.” Such altruistic pledges do not detract from the commercial nature of the site’s activity. No evidence suggests any legitimate noncommercial or fair use of the site.
The Panel finds Complainant has met the requirement of Policy, paragraph 4(a)(ii).
D. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith may be determined by evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
Complainant’s evidence of first contact with Respondent is instructive regarding the first category. For two years, Respondent made no use of the site. When first contacted by Complainant, Respondent stated, “[w]e would consider transferring the rights to this domain name to the [Complainant] as an exchange for obtaining the LSU license.” Respondent does not dispute this contact occurred. Rather, Respondent contends it is inadmissible because “it was a settlement communication.” The basis for this contention is unclear—the proceedings against Respondent did not begin for several months. Moreover, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.6 states: “Evidence of offers to sell the domain name are generally admissible under the UDRP, and is often used to show bad faith. This is so both in relation to offers by a respondent to sell made prior to a complainant's filing of a UDRP complaint, or after such filing.” The Panel accepts the correspondence as admissible.
Respondent’s suggestion of transferring the disputed domain name in exchange for a license also appears to support a finding of bad faith. Policy paragraph 4(b)(i) specifically cites evidence of bad faith flowing from offers of “selling, renting, or otherwise transferring the domain name registration . . . for valuable consideration in excess of [a respondent’s] documented out-of-pocket costs related to the domain name . . . .” While no evidence exists regarding what profits Respondent stood to make, Complainant demonstrates the value of merchandise bearing its mark and reputation as worth around USD 100 million per year. While the exhibits fail to list Respondent’s out-of-pocket costs to purchase the disputed domain name, Complainant’s Exhibit A suggests the prices for similar domain names ran under USD 2,000, or costs likely well below the potential profits from Respondent’s proposed license. Importantly, Complainant demonstrates that Respondent previously acted as a collegiate licensee, and therefore had ample knowledge of the potential profits he could achieve.
Respondent’s contention that he registered and used the disputed domain name to run his Laurelhurst Sports Unlimited site is not persuasive. Such use did not occur until after Respondent suggested the licensing agreement, two years after registration. No evidence shows any entity by the name “Laurelhurst Sports Unlimited” existed prior to the commencement of the dispute. Complainant’s mark is famous enough and used widely enough to suggest Respondent knew or should have known of its existence. See Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517 (finding Caesar’s Palace’s “worldwide reputation and presence on the Internet” sufficed to show the respondent knew or should have known about its mark). Here again, Respondent’s historical relationship with collegiate institutions makes his knowledge of Complainant’s famous mark all the more likely.
Respondent’s contention that he has never sold or gained a license through leveraging a domain name is not determinative of his motivation in registering and using this disputed domain name. The evidence submitted is enough to show registration and use in bad faith, and the analysis need not go further.
The Panel finds Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
E. Reverse Domain Name Hijacking
Respondent has requested a finding of Reverse Domain Name Hijacking (“RDNH”).
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at [RDNH] or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See WIPO Overview 2.0, paragraph 4.17. Respondent bears the burden of demonstrating that Complainant brought the Complaint in bad faith. Id. “WIPO panels have declined to find [RDNH] in circumstances including where: . . . the complainant’s argument under a required element of the UDRP fails, but not by such an obvious margin that the complainant must have appreciated that this would be the case at the time of filing the complaint.” Id.
Nothing suggests Complainant brought the present action in bad faith. Given the record, it is clear Complainant had legitimate trademark interests which are the basis for Complainant’s UDRP claim against Respondent. Complainant succeeded on every element, and the Panel declines to find Complainant initiated the proceeding to harass Respondent or to achieve RDNH.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <lsuteamshop.com> be transferred to Complainant.
Michael A. Albert
Presiding Panelist
Lawrence K. Nodine
Panelist
Jeffrey D. Steinhardt
Panelist
Date: December 12, 2013
1 Complainant alleges references abbreviating Louisiana State University as “LSU” date back to 1902.
2 Respondent’s reliance on Goldberg & Osborne v. The Advisory Board Forum, Inc., WIPO Case No. D2001-0711 is misplaced. The panel in that case expressly declined to rule on the confusing similarity between a mark and domain name, finding instead the complainant failed to establish good faith, ending the inquiry. The panel in Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139, which Respondent similarly cites, actually found confusing similarity between the complainant’s mark and those of respondent’s domain names incorporating the mark.