WIPO Domain Name Decision: D2006-0474

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grand Valley State University v. SIA Bouns

Case No. D2006-0474

1. The Parties

The Complainant is Grand Valley State University, Allendale, Michigan, United States of America (the “Complainant”), represented by McGarry Bair PC, United States of America.

The Respondent is SIA Bouns, Riga, Latvia (the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <gvsu.com> (the “Domain Name”) is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2006. On April 19, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 2, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2006. The Response was filed with the Center on May 15, 2006.

The Center appointed Tony Willoughby as the sole panelist in this matter on May 24, 2006. 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, Grand Valley State University, is a university chartered by the state of Michigan, USA. The Complainant operates its principal webstite at “www.gvsu.edu”.

The Complainant claims that it has used the acronym “GVSU” in association with its various products and services since 1987. This claim is not challenged by the Respondent and is consistent with the claim to first use cited in relation to the Complainant’s trade mark registration referred to below.

On April 27, 1999, Salvia Corporation of Riga, Latvia registered the Domain Name.

On December 30, 2003, the United States Patent and Trade Mark Office granted to the Complainant US Registration number 2,800,256 GVSU in international classes 14, 16, 18, 20, 21, 24, 25, 28, 35, 41 and 43 for a wide variety of goods and services. As referred to above first use was claimed from 1987.

On November 18, 2005, the Respondent agreed to purchase the Domain Name from Salvia Corporation. The agreement is annexed to the Response. The agreed purchase price was blanked out.

On December 13, 2005, the website connected to the Domain Name featured numerous references to the Complainant and links to other educational sites and search engines. The homepage gave every appearance of being a site associated with the Complainant.

The Complainant’s Counsel claims to have sent a letter to Salvia Corporation on December 21, 2005, seeking transfer of the Domain Name. The letter is not exhibited, but the decision does not depend upon it having been sent.

On December 26, 2005, the Respondent filed with the United States Patent and Trade Mark Office a trade mark application for the mark GVSU in Class 38 for various telecommunications and related services.

On December 29, 2005 a Decision was issued in Banca Intesa S.p.A. v. SIA Bouns, WIPO Case No. D2005-1135 (involving the Respondent in these proceedings) in respect of the domain name <bancaintesait.com>. The Panel in that case directed that that domain name be transferred to the complainant on the basis that it had been registered and was being used in bad faith.

On January 6, 2006, the Domain Name registration was transferred by Salvia Corporation to the Respondent.

The Complainant’s Counsel claims to have sent a letter to the Respondent on February 1, 2006, seeking transfer of the Domain Name. The letter is not exhibited, but the Respondent does not deny that it was sent; nor does the Respondent deny the Complainant’s assertion that the Respondent failed to reply to it.

Since the latter part of December 2005, the Domain Name has not been connected to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to GVSU, the trade mark in which it has rights.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant refers to paragraph 4(c) of the Policy and contends that none of the examples therein set out as to what shall constitute rights or legitimate interests in respect of the Domain Name is applicable in this case.

The Complainant further contends that the Domain Name was registered and is being used in bad faith. The Complainant points to the unlicensed abusive use of the Domain Name by Salvia Corporation, a use which clearly targeted the Complainant and claims that the Respondent knew of the abusive use of the Domain Name by Salvia Corporation and is either the same entity operating under a modified name or is at the very least very closely associated with Salvia Corporation.

The Complainant also points to the fact that the Respondent has already been on the wrong end of a WIPO Complaint namely Banca Intesa S.p.A. v. SIA Bouns, WIPO Case No. D2005-1135.

B. Respondent

The Respondent does not dispute that the Complainant has rights in respect of GVSU. It does however contend that it will be deceptive for the Complainant to use the Domain Name <gvsu.com> as this would indicated to Internet users that the Complainant is a commercial entity rather than a university.

The Respondent claims that it does have rights or legitimate interests in respect of the Domain Name. The Respondent points to its US trade mark application filed in December 2005. The Respondent contends that it is not for the Panel to assess the validity of the trade mark application in advance of the examination/opposition process administered by the United States Patent and Trade Mark Office.

The Respondent asserts that when it acquired the Domain Name from Salvia Corporation on January 6, 2006, it was ignorant of any dispute between the Complainant and Salvia Corporation. It asserts that Salvia Corporation did not notify the Respondent of the Complainant’s claims at the time of the Domain Name transfer.

The Respondent accepts that its predecessor’s registration and the use of the Domain Name was in all likelihood in breach of the Policy (“The evidence points to a likelihood of bad faith registration and an apparent case of trade mark infringement by Salvia Corporation”). However, the Respondent denies that it has any association with Salvia Corporation and denies all the Complainant’s allegations as to bad faith acquisition and use of the Domain Name on the part of the Respondent.

The Respondent claims to be a different legal entity from Salvia Corporation and produces a registration certificate to show that it is an independent limited liability company based in Latvia.

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark 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 in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

The unchallenged evidence of the Complainant’s use of the acronym GVSU since 1987 satisfies the Panel that at an early stage following the foundation of the university the Complainant had developed a reputation and goodwill under and by reference to the letters GVSU to give it unregistered (common law) trade mark rights in respect of GVSU.

It is not in dispute that in 2003, the Complainant obtained registered rights in the United States in respect of the trade mark GVSU (namely US Registration number 2,800,256 in a multiplicity of classes).

The Domain Name comprises the Complainant’s trade mark GVSU and the generic ‘.com’ domain suffix. The Panel finds that the Domain Name is identical to the Complainant’s trade mark GVSU.

As to the Respondent’s argument to the effect that it will be deceptive for the Complainant to use the Domain Name, the ‘.com’ suffix indicating that the Complainant is a commercial entity when in fact it is an educational establishment, the Panel simply observes that in his experience most universities are commercial entities. In relation to the Complainant one only has to look at the goods and services covered by the Complainant’s trade mark registration.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative namely that the Respondent has no rights or legitimate interests in respect of the Domain Name. The consensus view among Panelists is that it is enough for the Complainant to make out a prima facie case under this head and then it is for the Respondent to answer that case.

The Complainant has adduced evidence sufficient to make out a prima facie case as follows:

(i) The Salvia Corporation, the Respondent’s predecessor, registered the Domain Name in bad faith using it to divert Internet users from the Complainant’s website to that of Salvia Corporation. Salvia Corporation was clearly aware of the existence of the Complainant and its use of the acronym GVSU because the website connected to the Domain Name contained numerous and prominent references to the Complainant.

(ii) Salvia Corporation transferred the Domain Name to the Respondent in order to defeat a complaint under the Policy. The Complainant produces evidence to show that both Salvia Corporation and the Respondent have addresses in Riga, Latvia. The Complaint also points to the failure of the Respondent to respond to the Complainant’s letter seeking transfer of the Domain Name and finally the Complainant points to the previous WIPO Decision against the Respondent to show that the Respondent has a track record of making abusive domain name registrations. [NB The Complainant further points to the timing of the trade mark application by the Respondent which was only a few days following the Complainant’s first letter to Salvia Corporation, but the Panel does not rely upon this, the letter not having been exhibited to the Complaint.]

(iii) The Respondent and Salvia Corporation are either one and the same or at the very least are very closely associated and the Respondent’s acquisition and use of the Domain Name has been in bad faith and with a view (a) to avoiding the consequences of a complaint against Salvia Corporation and (b) continuing the abusive use indulged in by Salvia Corporation.

The Respondent answers that prima facie case by denying all knowledge of Salvia Corporation’s use of the Domain Name, a use which the Respondent expressly accepts was in all likelihood an abuse under the Policy.

The Respondent refers to the “GVSU.COM Domain Name Transfer Agreement” entered into between it and Salvia Corporation on November 18, 2005. The Respondent points to clause 3.1.2 of that Agreement which reads:

“The seller has the exclusive ownership of the Domain Name and no rights or equity of any third party is prejudiced due to the usage of the Domain Name. There is no litigation or any other disputes arising from or relating to the Domain Name.”

The Panel is unable to accept the Respondent’s denial. It beggars belief that anyone purchasing a domain name would not make himself aware of the use to which the domain name was being put. In this case for three or four weeks (at the very least) following the signing of the <gvsu.com> Domain Name Transfer Agreement the Domain Name was in use to connect to a website which at first sight appeared to be a website associated with the Complainant. It is inconceivable that the Respondent was not aware of the use to which the Domain Name was being put and were it an innocent transferee of the Domain Name would assuredly have quizzed Salvia Corporation about the use to which the Domain Name was being put. Moreover, nowhere in the Response does the Respondent make any attempt to explain his interest in the acronym GVSU. It simply points to its trade mark application. If the Respondent was an innocent transferee of the Domain Name it would have gone to appropriate lengths to explain why GVSU was of interest to it.

Nor does the Respondent put forward anything to counter the obvious adverse inference to be drawn from the fact that it had previously been held to be in possession of an abusive domain name registration under the Policy (Banca Intesa S.p.A. v. SIA Bouns, WIPO Case No. D2005-1135).

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

For precisely the same reasons the Panel finds that the Complainant’s case is made out. The transfer of the Domain Name from Salvia Corporation from to the Respondent was a sham and designed to defeat a complaint against Salvia Corporation, which assuredly would have succeeded.

Had the Complaint been filed against Salvia Corporation when Salvia Corporation was the registrant of the Domain Name, the Domain Name would have been found to have been a domain name registered and used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Given the Panel’s finding that the transfer of the Domain Name to the Respondent was a sham, this Complaint must succeed on the same basis.

7. Decision

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, <gvsu.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Date: June 6, 2006