WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
University of Connecticut v. Fumii Tutikane
Case No. D2016-0862
1. The Parties
The Complainant is University of Connecticut of Storrs, Connecticut, United States of America ("United States"), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Fumii Tutikane of Shunanshi, Yamaguchi, Japan.
2. The Domain Name and Registrar
The disputed domain name <uconnwbb.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 April 28, 2016. On April 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2016, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 31, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on June 7, 2016. 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, the University of Connecticut – abbreviated as UConn – is a public university in Connecticut in the United States. The abbreviation UConn has been used since at least 1939. The Complainant is the registrant of a United States Federal Trademark Registrations for UCONN, Reg. Nos. 3005534 and 3448597 issued on October 11, 2005 and June 17, 2008 as well as respectively; in the European Union, Reg. No. 90605 issued on July 9, 1998; and in China, Reg. No. 6569163 issued on May 14, 2011.
The disputed domain name <uconnwbb.com> was originally registered in 2011 and, with the consent of the Complainant was used by the then registrant to provide information concerning the UConn women's basketball team. In 2014 that arrangement came to an end and the domain name was transferred to a WhoIs privacy service.
In 2015 the disputed domain name was registered in the name of the Respondent.
The Respondent is an individual based in Japan.
The dispute domain name currently resolves to pages written in Japanese that include advertisements for prostitution services article about extra-marital affairs and other sexual matters.
5. Parties' Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain name <uconnwbb.com> is made entirely up of the registered trademark UCONN and the letters "wbb" (an abbreviation for "women's basketball") to which the generic Top-Level Domain ("gTLD") ".com" has been added. It is therefore confusingly similar to the Complainant's registered trademark UCONN.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for UCONN or marks incorporating UCONN.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant's rights in the UCONN trademark and registered the disputed domain name to attract business to its website. The Complainant relies on two UDRP decisions that have found that the use of a domain name for pornographic website or for websites offering adult services or material amounts to registration and use in bad faith. These decisions are: L'Oréal v. Robert Caceres, Dollarviews, WIPO Case No. D2015-1200 and Novartis Ag v. Susan Christensen, WIPO Case No. D2015-0476.
The Respondent did not respond to the proceedings.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <uconnwbb.com> is made up of the abbreviation UCONN, the letters "wbb" and the gTLD ".com". The disputed domain name is confusingly similar to the Complainant's registered trademark UCONN. The first part of the paragraph 4(a) of the Policy is therefore satisfied.
The Panel notes that the Complainant does not have a registered trademark for UCONN in Japan.
The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. Such factors may, however, bear on a panel's determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP. (See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
B. Rights or Legitimate Interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP".
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The second part of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The key issue in this case is whether the disputed domain name was registered and in bad faith and is being used in bad faith.
The Complainant relies on paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location".
The Complainant argues in particular that the registration of a domain name incorporating a well-known mark and use of that domain name for a pornographic website or for websites offering adult services or material amounts to registration and use in bad faith.
This latter argument is particularly important in this case. The content of the website does not appear to make or suggest any direct link to the Complainant. Nevertheless, no explanation has been offered by the Respondent as to why the disputed domain name <uconnwbb.com> was acquired, nor is any apparent from the website under the disputed domain name. Based on the available record, the Panel concludes that the Respondent is in someway trying to trade off the Complainant's goodwill.
The advertising of prostitution services and article on extra-marital affairs will certainly tarnish the reputation and goodwill of the Complainant. A trademark owner such as the Complainant, an institution of higher learning, should be able to control the services with which its trademark is associated.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 <uconnwbb.com> be transferred to the Complainant.
Date: June 29, 2016