WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Massachusetts Institute of Technology v. Vitty, Inc.
Case No. DBIZ2002-00241
1. The Parties
The Complainant in this administrative proceeding is Massachusetts Institute of Technology, Cambridge, Massachusetts, United States of America.
The Respondent in this administrative proceeding is Vitty, Inc., Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name is <mit.biz>. The Registrar of the domain name is 007 Names, Inc. of Bridgewater, NJ, United States of America.
The Registry operator has confirmed the ticket number.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP"), the Rules for Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for <.biz> ("the WIPO Supplemental STOP Rules").
The Administrative Panel consisting of one member was appointed on July 12, 2002, by World Intellectual Property Organization ("WIPO").
The Complainant filed its STOP Complaint with the WIPO Arbitration and Mediation Center ("the Center") on May 17, 2002, by email and on May 22, 2002, in hard copy. An Amended Complaint was filed with the Center on June 3, 2002, by email and on June 6, 2002, by hardcopy. On June 9, 2002, having verified that the STOP Complaint satisfied the formal requirements of the STOP and the STOP Rules, the Center formally commenced this proceeding. On July 2, 2002, Notification of Respondent Default was issued.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the STOP and STOP Rules.
4. Factual Background
The following information is derived from the Complaint.
The Complainant is one of the most prestigious and well-known universities in the world.
It has used the mark MIT in connection with its educational goods and services as early as 1861 and has continuously used the mark nationally and internationally since the mid-19th century.
The Complainant actively and continuously has promoted its educational goods and services under the mark MIT since 1861. It has advertised, promoted, and sold goods under the mark MIT for approximately 150 years. The MIT mark is extremely well known and is closely and uniquely associated with the Complainant and the educational goods and services it offers. The Complainant has acquired for its MIT mark an extremely valuable reputation and considerable goodwill.
The Complainant owns the following relevant United Statesí trademark and service mark registrations:
- MIT, Registration No. 1562643, for educational services (International Class 41)
- MIT, Registration No. 1500620, for clothing (International Class 25)
- MIT, Registration No. 1502972, for rings (International Class 14)
- M.I.T., Registration No. 1502243, for glassware (International Class 21)
- M.I.T., Registration No. 1499544, for pens, pencils, notebooks and decals (International Class 16)
- MIT, Registration No. 1687596, for computer programs (International Class 9)
- MIT, Registration No. 2057267, for an educational game (International Class 28).
The Complainant has not licensed or otherwise permitted the Respondent to use the mark MIT or authorized the Respondent to apply to register the subject domain name.
The Respondent is not known as MIT.
The Respondent does not have any trademark or service marks related to the subject domain name and has not been known commonly by the subject domain name.
There is no evidence of the Respondentís use of, or demonstrable preparations to use, the subject domain name or a name corresponding to the subject domain name in connection with a bona fide offering of goods or services.
The Respondent filed no material in this proceeding.
5. Partiesí Contentions
The Complainant relies on its long-standing use and its registrations of MIT and states that the subject domain name is identical. It contends that the Respondent does not have a legitimate interest in the subject domain name because it was not authorized to use the Complainantís mark, is not known commonly by MIT and has done nothing to make use of the subject domain name.
The Complainant says that: "the [subject domain name] was registered primarily for the purpose of selling, renting, or otherwise transferring the [subject domain name] registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of theÖRespondentís out-of-pocket costs directly related to the [subject domain name]." In addition, quoting from Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277, the Complainant asserts: "íwhere a domain name is so obviously connected with the complainant and its services, its very use by someone with no connection with the complainant suggests bad faithí".
The Respondent made no submission.
6. Discussion and Findings
Paragraph 4(a) of the STOP requires the Complainant to prove that:
(i) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered or is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís 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 the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The Complainant relies on a number of previous domain name dispute decisions. While these are neither controlling nor binding on this Administrative Panel, often reference to them is of assistance.
The resolution of this dispute takes place in the context of a consideration of the requirements of Paragraph 4(a) of the STOP.
It is clear that the Complainant has rights to MIT. It has used the word for a very long time and has registered it as a mark. The subject domain name differs from the mark only by the addition of .biz, which is not relevant.
The Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(i).
B. Respondentís Legitimate Interest
A respondent is not obliged to participate in a STOP proceeding and its failure to do so does not give rise to admissions of facts asserted by a complainant, but the respondent is vulnerable to inferences that flow naturally from the information provided by the complainant. In addition, assertions that are not obviously unreasonable may be taken as true.
The Complainant relies on the usual indicia of a lack of legitimate interest: no authorization; not known by the name; no commercial use or preparation for use. It does not state the basis on which it makes these assertions, which weakens its case, but the Respondent has done nothing to supplant the inferences that flow from the assertions.
Complainants who do not provide information to support their assertions Ė for example, searches of the internet and of appropriate registries Ė run a serious risk of having their complaints dismissed.
In the circumstances of this case, which include the notoriety of the Complainantís mark and its very long use, the Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(ii).
C. Bad Faith
The Complainant alleges that the Respondent registered the subject domain name to sell it to the Complainant or a competitor of the Complainant, but provides no information whatsoever to support the allegation. The record in this case does not include the usual demand to cease using the subject domain name and a request for it to be transferred to the Complainant.
The Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277, decision is instructive on the facts of this case. MIT is synonymous with the Complainant. It is an extremely well-known institution. The Respondent has been apprised of the Complainantís position and has chosen not to respond. It is vulnerable to the inference that arises from the facts in this case.
The Complainant should not have alleged an intention to sell with no information to support it. The Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277, principle should be used sparingly, but in the circumstances of this case, which include the notoriety of the Complainantís mark and its very long use, the Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(iii).
Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: July 26, 2002