WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Phi Kappa Sigma Fraternity, Inc. v. Phi Kappa Sigma Foundation Fund, Inc. / Daniel Heiss, Phi Kappa Sigma Foundation

Case No. D2021-4164

1. The Parties

The Complainant is Phi Kappa Sigma Fraternity, Inc., United States of America (“United States”), represented by Westman, Champlin & Koehler, P.A., United States.

The Respondent is Phi Kappa Sigma Foundation Fund, Inc. / Daniel Heiss, Phi Kappa Sigma Foundation, United States, represented by Ice Miller LLP, United States.

2. The Domain Name and Registrar

The disputed domain name <pksedfund.com> (the “Domain Name”) 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 December 10, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 16, 2021, 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 December 17, 2021.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 15, 2022. The Response was filed with the Center on January 14, 2022.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 2, 2022. 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.

The Respondent submitted an unsolicited supplemental filing on February 8, 2022, attaching a copy of a recently filed complaint in United States litigation involving the Respondent. The Complainant objected to this filing on February 9, 2022. The Panel issued Procedural Order Number 1 on February 16, 2022, accepting the Respondent’s filing and giving the Complainant leave to submit a brief reply. The Complainant did so on February 23, 2022.

4. Factual Background

The Complainant is a nonprofit corporation established in 1936 under the laws of the Commonwealth of Pennsylvania, United States, and headquartered in Carmel, Indiana. The Complainant describes itself as an “international social fraternity of university men under the brand PHI KAPPA SIGMA® (Greek transliteration: ΦΚΣ) and related marks. Complainant’s fraternity was founded by Dr. Samuel Brown Wylie Mitchell at the University of Pennsylvania in 1850 and has operated continuously in the United States since then, including the current operation of fraternity chapters at numerous universities across various U.S. states and in Canada”.

The Complainant holds United States Trademark Registration Numbers 2529662 (registered January 15, 2002) and 3351803 (registered December 11, 2007) for PHI KAPPA SIGMA as a standard character mark. The Complainant also claims common law rights in the marks PKS and its Greek transliteration ΦΚΣ, both used for labelling social activities and merchandise associated with the Complainant, as shown on the Complainant’s website at “www.pks.org” and linked social media sites on Instagram, Facebook, Twitter, and LinkedIn. The Complainant states that it has held this domain name since 1995, and the Panel notes that screenshots available from the Internet Archive’s Wayback Machine show that this domain name has been used for the Complainant’s website since at least December 1996. Screenshots show that both the English and Greek versions of the Complainant’s initials “PKS” have been used in advertising the Complainant’s events and merchandise since at least 1996.

The Complainant conducts fundraising activities online through its website, using the subdomains <fundraising.pks.org> and <give.pks.org>. The latter is operated by the Mitchell Heritage Society, a Wisconsin non-profit corporation that is affiliated with the Complainant.

The Domain Name was created on June 10, 2021, and is registered to the Respondent Daniel Heiss, listing his organization as the Respondent Phi Kappa Sigma Foundation, with a postal address in Oakland, California, United States and an email address using the domain name <pks.org>. The Response was submitted in the name of Phi Kappa Sigma Foundation Fund, Inc., headquartered in Carmel, Indiana, United States but with a postal address in Chestertown, Maryland, United States. The Response states that Mr. Heiss registered the Domain Name on behalf of Phi Kappa Sigma Educational Fund, Inc., “formerly known as ‘Phi Kappa Sigma Foundation’”. According to the online database of the Delaware (United States) Division of Corporations, Phi Kappa Sigma Foundation Fund, Inc. is a tax-exempt Delaware corporation formed on April 12, 2021, and Phi Kappa Sigma Educational Fund is a tax-exempt Delaware corporation formed on September 4, 1953.

As described in the Response, “[t]he Respondent has been raising money for educational scholarships and other educational activities for Phi Kappa Sigma students under the PHI KAPPA SIGMA EDUCATIONAL FUND name for nearly 70 years”. Screenshots of the Complainant’s website over the years show that it regularly included a page devoted to the Respondent’s fundraising activities. The Respondent purchased and still owns the building located in Carmel, Indiana that the Complainant leases for use as its headquarters. The Respondent formerly used that building as its own headquarters address and paid the Complainant to provide administrative support services to the Respondent there.

In March 2021 these amicable relations between the parties ended. The Complaint attaches an email dated March 10, 2021, from Mr. Dave Smith, the Grand Alpha (international president) of the Complainant to Robert Burnett, an officer of the Respondent, regarding the “Foundation Annual Meeting”. The email relays that the executive committee of the Complainant voted to suspend all support of Foundation operations effective March 31, 2021, including email support, website, domain registration, advertising, and access to staff resources.

The Respondent reports that its Delaware entity, then known as “Phi Kappa Sigma Foundation”, was “administratively dissolved by the Delaware Secretary of State on March 1, 2021, due to the Respondent’s inadvertent failure to file an annual report”. The Complainant filed articles establishing its own legal entity in Delaware called “Phi Kappa Sigma Foundation” on April 12, 2021. As a result, when the Respondent re-established its legal entity in Delaware in May 2020, it did so under its original name, “Phi Kappa Sigma Educational Fund, Inc.”, as its name appeared from 1953 until 2001 when the Respondent merged with a California entity. The Respondent subsequently registered the Domain Name on June 10, 2021, corresponding to an abbreviated version of its revived corporate name, “Phi Kappa Sigma Educational Fund”. Since then, the Respondent has operated its own website (the “Respondent’s website”) associated with the Domain Name, soliciting donations for scholarship funds for undergraduates who are members of the Complainant fraternity and for other programs to benefit fraternity chapters.

The Respondent’s website is headed “Phi Kappa Sigma Educational Fund”, with the tagline, “Phi Kap Undergrads Need Your Scholarship Support Now More Than Ever”. A photograph on the home page shows fraternity members in front of a Phi Kappa Sigma fraternity house with ΦΚΣ signage and flags. The home page encourages visitors to “GIVE TODAY FOR PHI KAPS TOMORROW! Your tax deductible, charitable contribution directly supports scholarships for undergraduate members of Phi Kappa Sigma!”.

Text at the bottom of the home page explains that the Phi Kappa Sigma Educational Fund is a non-profit charitable organization and provides its United States tax identification number. This disclaimer follows:

“Phi Kappa Sigma Educational Fund raises money for and provides scholarships to members of Phi Kappa Sigma Fraternity and is a separate organization from and not controlled by the Grand Chapter of Phi Kappa Sigma/Phi Kappa Sigma Fraternity, Inc.”

The Respondent’s website includes a chat feature and a page through which donations can be made to the Respondent “to help provide scholarships to our deserving undergrads”.

Counsel for the Complainant sent the Respondent a cease-and-desist letter dated November 24, 2021, demanding that the Respondent cease displaying the Complainant’s marks and transfer the Domain Name to the Complainant. The parties did not reach an agreement concerning the Respondent’s use of the marks or the Domain Name.

The Respondent continues to use the Domain Name for the Respondent’s website as described above, with a disclaimer of affiliation, and the Respondent uses the Domain Name for emails. The record includes a November 24, 2021, email from the Respondent to fraternity alumni that refers to the granting of USD 100,000 in scholarships in 2021, work toward restoring historic fraternity chapter buildings, and the Foundation’s current, unresolved “disagreement with the Fraternity”.

In January 2022, after the Complainant filed the Complaint in this UDRP proceeding, the Respondent filed a civil complaint in state court in Indiana against several individuals, the Delaware “Phi Kappa Sigma Foundation” recently formed by the Complainant as mentioned above, and three other “Phi Kappa Sigma” entities, one of which does business under the name “Mitchell Heritage Society”. As recounted above, the Complainant shifted its fundraising from the Respondent to Mitchell Heritage Society in March 2021, which signaled the rift between the parties. The Respondent’s civil complaint charges the defendants with “criminal and fraudulent actions” depriving the Respondent of its property and interfering with its fundraising operations.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its registered PHI KAPPA SIGMA trademarks and its common law PKS and ΦΚΣ marks. The Complainant observes as well that ΦΚΣ is the transliteration of both the initials “PKS” and the registered PHI KAPPA SIGMA trademark, and that UDRP panels recognize confusing similarity in domain names based on translations and transliterations of trademarks, given their similarity in sound and sense. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.14.

The Complainant contends that it has not given the Respondent permission to use the Complainant’s marks in the Domain Name or on the Respondent’s website or in emails using the Domain Name. As the Complainant explains:

“In the past, a Phi Kappa Sigma Educational Fund, Inc. Delaware corporation formed September 4, 1953 but voided/dissolved as of March 2021 was officially affiliated with Complainant and had certain authorizations, sponsorships, and approvals from Complainant to solicit donations and provide support to Phi Kappa Sigma and its undergraduate members and alumni, including the provision of scholarships and use of a <phikappasigma.foundation> domain name. However, all authorizations from Complainant to the Educational Fund were revoked effective March 31, 2021, and that revocation was communicated in writing to the Board of Trustees of Phi Kappa Sigma Educational Fund, Inc. on March 10, 2021. …Complainant instead gave official authorizations for charitable solicitation and educational funding activities to the Mitchell Heritage Society … Accordingly, Registrant had no authorization to suggest sponsorship, endorsement, or affiliation with Complainant and had no license or any other authorization to utilize the Complainant’s marks identified above at the time the domain name <pksedfund.com> was registered on June 10, 2021.”

The Complainant argues that the Respondent’s registration and use of the Domain Name after March 2021, was without the Complainant’s authorization and reflects bad faith in a deliberate effort to falsely imply an ongoing association with the Complainant:

“Here, Respondent’s registration is likely to create confusion as to a (nonexistent) affiliation with Complainant, sponsorship by Complainant, and/or endorsement of Respondent’s services and/or activities by Complainant. Respondent has made and is still making prominent use of Complainant’s marks and insignia on its website in that regard. For instance, Respondent’s home page at ‘https://pksedfund.com’ has displayed a prominent ‘pop-up’ featuring Complainant’s Coat of Arms, the PHI KAPPA SIGMA® mark, and the ΦΚΣ mark. … That home page and Respondent’s ‘About Us’ page at ‘https://pksedfund.com/about-us’ further include numerous prominent photos bearing the marks ΦΚΣ and PHI KAPPA SIGMA®.”

The Complainant observes that “[e]ven though both parties are non-profit organizations, fundraising opportunities are still important to Complainant’s operation and provision of its services”. The Respondent’s registration and use of the Domain Name, and its use of the Complainant’s marks on the Respondent’s website, have the effect of diverting donations from the Complainant to the Respondent. The Respondent’s use of the Domain Name for email communications with donors and potential donors amplifies this injurious effect. The Complainant argues that the Respondent’s attempts at disclaimers, following the Complainant’s objections, are unclear and not prominent on the website or in email communications.

The Complainant urges the Panel to find that the Respondent’s conduct reflects “a clear intent to deceive individuals and trade off the Complainant’s goodwill”, misdirecting Internet users by creating a likelihood of confusion with the Complainant. The Complainant contends as well that the Domain Name in dispute was registered “primarily for the purpose of disrupting the business of a competitor”, since the Complainant has authorized a third party, the Mitchell Heritage Society, to conduct its fundraising and develop scholarships on its behalf. This third party provides direct funding support to the Complainant, which the Respondent does not. Thus, the Respondent makes unauthorized use of the Complainant’s marks to confuse donors and supporters and divert funds from the Complainant for programs controlled by the Respondent. The Complainant adds that the Respondent furnished “false registrant information” in the Domain Name registration, calling itself “Phi Kappa Sigma Foundation” rather than using its proper name, “Phi Kappa Sigma Educational Fund”; the Complainant urges the Panel to consider this as further evidence of bad faith.

In its reply to the Respondent’s supplemental filing, the Complainant documents how the Respondent “is an organization that was created with, and subject to, Complainant’s authorization in 1953.” The Complainant argues that the “Respondent’s prior use of names and other indications that create a likelihood of confusion with Complainant’s trademarks, or that suggest sponsorship, affiliation, or endorsement by Complainant, were always entirely dependent upon Complainant’s authorization”, citing the Complainant’s 1953 meeting minutes reflecting a Board resolution authorizing the creation of the Respondent corporation and the March 10, 2021, email to the Respondent suspending the Complainant’s support of the Respondent’s operations. The Complainant refers to the March 10, 2021, email as a “recission of authorizations” to the Respondent and a “quality control” effort to protect its trademark rights.

B. Respondent

The Respondent does not challenge the Complainant’s marks but observes that “the Respondent has been raising money for educational scholarships and other educational activities for Phi Kappa Sigma students under the name Phi Kappa Sigma Educational Fund for nearly 70 years”, with the “full knowledge, encouragement, and occasional assistance (and without any license, authorizations, restrictions, or quality control measures from Complainant).”

The Respondent contends that while the Complainant withdrew administrative support for the Respondent in March 2021, the Complainant did not object to the Respondent’s use of the name “Phi Kappa Sigma Educational Fund” or the Respondent’s use of a corresponding domain name until November 24, 2021, when the Complainant sent a cease-and-desist letter. Thus, the Respondent argues that it had and has a legitimate interest in registering and using the Domain Name corresponding to its corporate name and relevant to its independent nonprofit activities in support of members of the Complainant’s Fraternity.

Denying bad faith, the Respondent highlights its efforts to avoid confusion with the Complainant and to emphasize its continuing role in fundraising for scholarships and Fraternity support activities. The Respondent points to its complaint in the pending civil litigation to support its long use and public association with a name corresponding to the Domain Name and to argue that it acted in good faith to continue its nonprofit functions despite efforts to undermine those initiatives.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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 and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Panel finds that while the record lacks sales data under the claimed PKS and ΦΚΣ marks, there is substantial evidence of advertising and use of those marks in commerce from at least 1996. Accordingly, the Panel accepts that those unregistered marks have acquired distinctiveness sufficient to support a UDRP claim, alongside the registered PHI KAPPA SIGMA trademarks. The Domain Name incorporates the common law PKS mark, which is a transliteration of the common law ΦΚΣ mark as well as the initials commonly used as an acronym for the registered PHI KAPPA SIGMA trademark. Thus, the Complainant’s marks are recognizable in the Domain Name.¹ The addition of the letters “ed” (a common abbreviation for “education”) and the dictionary word “fund” do not prevent a finding of confusing similarity. See id., section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.

The Panel finds, therefore, that the Domain Name is confusingly similar to the Complainant’s registered and common law marks for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the 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 or service mark at issue.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

The Complainant has established trademark rights, a lack of current permissive use, and apparent competition between the Respondent and the Complainant’s preferred fundraiser in soliciting donations for Fraternity scholarships and Chapter purposes. Thus, the Complainant has made a prima facie case, and the burden of production shifts to the Respondent.

The Respondent asserts a legitimate interest in using a Domain Name that represents an abbreviated form of its own corporate name, Phi Kappa Sigma Educational Fund, Inc. This was the Respondent’s formal name from 1953 to 2001, and it is the name under which the Respondent was reincorporated in May 2020 after it was dissolved for failure to make timely filings. This was its name a year later, when the Respondent registered the Domain Name on June 10, 2021. And it is the Respondent’s name at the time of this UDRP proceeding, which is generally viewed as the relevant time for assessing rights or legitimate interests under the Policy, paragraph 4(c) (see WIPO Overview 3.0, section 2.11).

The Domain Name clearly corresponds to a recognizable abbreviation for the Respondent’s name, under which the Respondent continues to operate as a nonprofit institution. The Respondent is a registered corporation, also registered as a tax-exempt charity, which has been in operation for nearly 70 years. The record shows that the Respondent continues to function, possibly at a diminished level, even since the Complainant revoked its support March 2021. The Respondent operates a website associated with the Domain Name, sends letters to Fraternity alumni, solicits donations, and administers scholarships and fundraising programs for Fraternity chapters. Therefore, for purposes of the Policy, paragraph 4(c)(ii), the Panel finds that the Respondent is “commonly known by” a name recognizably corresponding to the Domain Name.

The Complainant suggests that the Respondent was a purely a creature of the Complainant, established by resolution of the Complainant in 1953 and functioning only according to the Complainant’s “authorizations”, which were “revoked” in March 2021. But this ignores the realities of corporate law and the evidence submitted in this proceeding and in the public record. The Respondent is a legal entity, operating under its own name and charter. The March 10, 2021, email from the Complainant to the Respondent withdrawing administrative support actually says nothing about revoking “authorizations” and does not mention trademark permissions, domain names, or the Respondent’s continuing operations under its own name. The Complainant did not send a cease-and-desist letter until November 2021, which the Respondent contested.

The parties may pursue these disputes in fora better equipped to resolve them. For present purposes, it suffices to observe that the Respondent is using a Domain Name that does indeed correspond to a recognizable version of a name by which it is known and under which it has legitimately been operating as a nonprofit, both recently and in the past.

The Domain Name also incorporates the Complainant’s common law PKS mark and a recognizable acronym for the Complainant’s registered PHI KAPPA SIGMA mark, as discussed above in connection with the first element of the Complaint. The Respondent’s corporate name and Domain Name are meant to refer to the Complainant, as the Respondent’s nonprofit purpose is precisely to raise funds for scholarships given to students who are members of the Complainant Fraternity and programs to support chapter houses of the Complainant Fraternity. Prospective donors are largely alumni of the Complainant Fraternity. The Panel finds that Policy paragraph 4(c)(iii) applies in these circumstances. The Respondent makes referential fair use of the Complainant’s trademarked PKS acronym in the Domain Name, “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

A review of the Respondent’s website and communications to potential donors does not indicate commercial use or an intent to tarnish the Complainant’s marks. The website and communications accurately identify the Respondent, a registered charity, and its independent, nonprofit fundraising activities. They also refer to an unresolved controversy with the Complainant. They necessarily refer to the Complainant but do not “overuse” the Complainant’s registered word or design marks to give a false impression of sponsorship or affiliation (see WIPO Overview 3.0, sections 2.5, 2.8, and cases discussing nominative “fair use”).

The Panel concludes under both paragraphs 4(c)(ii) and (iii) that the Respondent has legitimate interests in the Domain Name and the Complainant has failed to establish the second element of the Complaint.

C. Registered and Used in Bad Faith

Given the Panel’s conclusions under the second element of the Complaint, it is unnecessary to reach a conclusion under the third.

7. Decision

For the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist
Date: March 10, 2022

¹ Other panels have similarly found trademarks recognizable in domain names partially incorporating the trademark or incorporating an abbreviation of the trademark used as an acronym. See, e.g., Boursorama SA v. BRS, CAC Case No. 103657; Kaporal Groupe v. Redacted for Privacy, Withheld for Privacy Purposes Privacy Service Provided by Withheld for Privacy ehf / Neville Berger, WIPO Case No. D2021-3109; Swinburne University of Technology v. Swinner a/k/a Benjamin Robert Goodfellow, WIPO Case No. DAU2004-0003; Hiawatha National Bank v. Martha Coe, WIPO Case No. D2018-1946.