WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Summers v. The Chronicle of Higher Education
Case No. D2019-0682
1. The Parties
The Complainant is John Summers, United States of America (“United States” or “US”), self-represented.
The Respondent is The Chronicle of Higher Education, United States, internally-represented.
2. The Domain Name and Registrar
The disputed domain name <linguafranca.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2019. On March 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2019, 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. On April 1, 2019, the Center received an informal email communication from the Respondent. The Center sent an email communication to the Complainant on April 4, 2019 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 4, 2019.
The Center verified that the Complaint together with the amendment to 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 April 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2019. The Response was filed with the Center on April 26, 2019.
The Center appointed William R. Towns as the sole panelist in this matter on May 9, 2019. 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.
On May 14, 2019, the Complainant sent an email communication to the Center informing that it would like to submit a rebuttal statement to the Respondent’s response. On May 15, 2019, the Panel issued a Panel Order stating that if the Complainant had additional substantiated information relevant to the case, it should submit to the Panel by May 20, 2019. On May 15, 2019, the Complainant informed that it would not submit additional statements.
4. Factual Background
The Lingua Franca Magazine, in publication between1990 and 2001, provided information about professional developments and opportunities in the field of higher education. The owner of the magazine applied to register the LINGUA FRANCA mark with the United States Patent and Trademark Office (“USPTO”) on January 29, 1990, and the mark was registered on September 24, 1991 (US Reg. No. 1658669). The management of the Lingua Franca magazine also registered the disputed domain name <linguafranca.com> on February 11, 1996.
Lingua Franca subsequently encountered financial difficulties, and in 2001 filed for protection under Chapter 7 of the United States Bankruptcy Code. The Chronicle of Higher Education, the Respondent herein, had been a competitor of Lingua Franca. On or about November 1, 2002, the Respondent entered into an agreement, approved by a United States Bankruptcy Court, under which all rights, title and interest in the LINGUA FRANCA mark and the disputed domain name <linguafranca.com> were assigned by the entity Lingua Franca Acquisition LLC to the Respondent.
The Respondent, subsequent to acquiring the disputed domain name <linguafranca.com>, redirected the disputed domain name to the Respondent’s website at “www.chronicle.com” (“Respondent’s main website”). The Respondent by all appearances has done so ever since, based on archival screen shots submitted by the Respondent. However, the Respondent never used the LINGUA FRANCA mark in commerce after acquiring it, and the USPTO cancelled the Respondent’s LINGUA FRANCA trademark registration on January 22, 2016, following the Respondent’s failure to submit an acceptable statement of use.
The Complainant is a publisher of books and magazines. The Complainant applied to the USPTO to register LINGUA FRANCA for use as a mark on July 24, 2016, approximately six months after the cancellation of the LINGUA FRANCA mark previously held by the Respondent. The USPTO registered the Complainant’s LINGUA FRANCA mark on March 26, 2019 (US Reg. No. 5710159), for use with books and magazines. Insofar as the record in this case reflects, the Respondent did not challenge or otherwise object to the Complainant’s registration of the LINGUA FRANCA mark. The Complainant’s has stated his intent was to revive the Lingua Franca magazine.
At some point the Complainant discovered that the Respondent already had registered the disputed domain name <linguafranca.com>, which redirects to the Respondent’s main website. The Complainant sought to acquire the disputed domain name from the Respondent; however, the Respondent would not agree to part with the disputed domain name. The Complainant then brought this proceeding under the Policy.
5. Parties’ Contentions
A. Complainant
The Complainant explains that he registered the LINGUA FRANCA mark with the USPTO in March 2019 with the intention of restoring the Lingua Franca Magazine. According to the Complainant, he eventually discovered that the Respondent was using the disputed domain name <linguafranca.com> to redirect Internet visitors to the Respondent’s Chronicle of Higher Education website.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s LINGUA FRANCA mark, representing that the Respondent competes directly with the revived Lingua Franca magazine. The Complainant asserts that the Respondent’s redirection of the disputed domain name results in consumer confusion and dilutes the ability of consumers to clearly and distinctly recognize the source of the LINGUA FRANCA mark in the marketplace.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent, whose Chronicle of Higher Education publication was founded in1966 and has been published continuously since then, has never been commonly known by the disputed domain name. The Complainant further asserts that the Respondent, notwithstanding the November 1, 2002 assignment of the LINGUA FRANCA mark and the disputed domain name <linguafranca.com>, has never developed any distinct rights connected to the disputed domain name. The Complainant explains that the Respondent never attempted any use in commerce of the assigned LINGUA FRANCA mark, which resulted in the cancellation of the mark by the USPTO.
The Complainant contends that the intellectual property rights conveyed to the Respondent in November 1, 2002 assignment were bundled in such a manner that the cancellation of the LINGUA FRANCA mark results in the Respondent’s loss of the entirety of the assigned intellectual property rights, including the disputed domain name. The Complainant asserts that the redirection of the disputed domain name by the Respondent does not confer upon the Respondent rights or legitimate interests in the disputed domain name. The Complainant further submits that the Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services, or otherwise attempted to make any noncommercial or other fair use of the disputed domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent has engaged in a pattern of bad faith and deception respecting the disputed domain name. The Complainant maintains that the Respondent registered the disputed domain name solely to dissuade others who might attempt to compete with the Respondent using the “Lingua Franca” name. The Complainant, reiterating that the Respondent never used the LINGUA FRANCA mark and allowed its registration to lapse, contrasts this with the Respondent’s management of the ARTS & LETTERS DAILY mark and <aldaily.com> domain name, also assigned to the Respondent. The Complainant maintains that the Respondent timely submitted a declaration of use in 2008 in order to maintain the registration of the ARTS & LETTERS DAILY mark.
The Complainant alleges that the Respondent renewed the registration of the disputed domain again on January 3, 2019, to prevent the Complainant from registering a domain name reflecting the Complainant’s LINGUA FRANCA mark. The Complainant further asserts that the Respondent has used a privacy service in a bad faith attempt to confuse and mislead consumers, and to prevent consumers seeking to learn why the disputed domain name automatically redirects to the Respondent’s website from ascertaining the relationship between the Complainant and Respondent. The Complainant submits that the Respondent registered and is using the disputed domain name to attract for commercial gain Internet consumers to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
The Complainant maintains that his pre-complaint dealings with the Respondent underscore the latter’s bad faith. The Complainant refers to the Respondent’s rejection of the Complainant’s offer of USD 100 for the disputed domain name. The Complainant asserts there is a strong public interest in a revival of Lingua Franca that has never ceased, and submits that the Respondent’s leadership understands the urgent need for independent journalism and the cultural and commercial value of the Lingua Franca’s brand, alluding to the Respondent’s 2017 re-publication of one of Lingua Franca’s best-known articles without disclosing the Respondent’s conflict of interest in doing so.
B. Respondent
The Respondent submits that the Complainant has failed to meet his burden of proof concerning the second and third elements of the Policy. The Respondent relates that at the time of the November 1, 2002 assignment it had planned to use the LINGUA FRANCA mark with a magazine providing information about professional developments and opportunities in the field of higher education, but ultimately decided not to renew the US trademark registration for the mark. As a result of this decision, the mark was cancelled on January 22, 2016. The Respondent asserts that it registered the disputed domain name long before the Complainant first alleged rights in the recently registered LINGUA FRANCA mark. The Respondent states that its exercise of business judgment in allowing the LINGUA FRANCA registration to lapse does not alter the fact that when the Respondent first registered the disputed domain name it also acquired a valid US trademark registration for the LINGUA FRANCA mark. According to the Respondent, neither its decision to relinquish the LINGUA FRANCA trademark registration nor the Complainant’s registration of the LINGUA FRANCA mark in 2019 has any bearing on the Respondent’s legitimate rights and interests in the disputed domain name, which the Complainant has owned and continuously used since November 1, 2002.
The Respondent denies that the disputed domain name has been registered and used in bad faith. The Respondent maintains that for a registration to be considered in bad faith under the Policy (1) the respondent must have been aware of the complainant or the complainant’s trademark rights when registering the disputed domain name, and (2) the registration must in some manner have targeted the complainant or its mark. The Respondent submits that when it acquired the disputed domain name by assignment on November 1, 2002, it could not conceivably have known of trademark rights the Respondent would acquire the LINGUA FRANCA mark some 17 years later. The Respondent also observes that the Complainant did not create the entity that presently holds the LINGUA FRANCA mark until May 30, 2017.
In view of the foregoing, the Respondent asserts that neither the Complainant nor the Complainant’s asserted trademark rights could have been targeted by the Respondent, since the Complainant’s trademark rights were nonexistent at the time the Respondent acquired the disputed domain name and remained so for many years afterwards. The Respondent explains that since as early as April 4, 2003, the disputed domain name continuously has been redirected to the Respondent’s main website. The Respondent thus submits the Complainant could not have been targeted by the Respondent’s acquisition of the disputed domain name in November 2002, such that the Respondent’s acquisition and use of the disputed domain name is not in bad faith.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardwis, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademark or service mark. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <linguafranca.com> is identical to the Complainant’s LINGUA FRANCA mark, in which the Complainant has established rights. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this case, the Complainant’s LINGUA FRANCA mark is clearly recognizable in the disputed domain name.2 Additionally, generic Top-Level Domains (“gTLDs”) generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.3 In this instance, when the gTLD “.com” is disregarded, the disputed domain name is identical to the Complainant’s mark.
While the Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. Accordingly, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the paragraph 4(a)(i) of the Policy. 4 However, when a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant likely be able to prove a respondent’s bad faith.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Complainant has demonstrated rights in its LINGUA FRANCA mark, and the Panel has found that that the disputed domain name is identical to the Complainant’s LINGUA FRANCA mark. However, the record also makes clear that the Respondent acquired and registered the disputed domain name some 17 years before the Complainant’s recent registration of the LINGUA FRANCA mark. The Complainant applied to the USPTO to register LINGUA FRANCA approximately six months after the cancellation of the LINGUA FRANCA mark previously held by the Respondent.
The Respondent has brought forward evidence on which it relies in asserting rights or legitimate interests in the disputed domain name. There is no dispute that a United States Bankruptcy Court on November 1, 2002, approved the agreement pursuant to which the Respondent was assigned all rights, title and interest in the LINGUA FRANCA mark and the disputed domain name <linguafranca.com>. A short time later the Respondent redirected the disputed domain name to its own website. By all appearances the Respondent continuously has done so over a 17 year span. There is no indication of any demonstrable change in the Respondent’s use of the disputed domain name since the Complainant’s registration of the LINGUA FRANCA mark, or following the Respondent’s renewal of the disputed domain name on January 3, 2019, at which time the Complainant’s registration of the LINGUA FRANCA mark was pending. In short, the Panel has found no persuasive evidence of the Respondent’s targeting of the Complainant or the Complainant’s mark, now or at any time. See Squirrels LLC v. Giorgio Uzonian, WIPO Case No. D2014-1434; Avenue 81, Inc. v. Karl Payne, WIPO Case No. D2014-1825.
As noted earlier, the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy. In view of the Panel’s determination under paragraph 4(a)(iii) of the Policy, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests with respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel concludes that the Complainant has failed to carry its burden of demonstrating bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent acquired the disputed domain name some 17 years before the Complainant’s registration of the LINGUA FRANCA mark. As discussed earlier, the registration of a domain name before a complainant has acquired trademark rights does not preclude a complainant’s standing to file a UDRP case. However, only in exceptional circumstances will a complainant likely be able to establish a respondent’s bad faith. Such exceptional circumstances simply are not present in this case.6
The Complainant argues that bad faith should be found based on the Respondent’s renewal of the disputed domain name on January 3, 2019, at which time the registration of the Complainant’s mark was pending. However, UDRP panels consistently have held that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of bad faith.7 To the extent the Complainant’s argument adopts the “renewal as registration” approach articulated in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688 (“Sporto”), the Complainant’s reliance is misplaced. There has been no demonstrable change of the Respondent’s use of the disputed domain name, and as noted earlier, the Panel has found no persuasive evidence of the Respondent’s targeting of the Complainant or the Complainant’s mark, now or at any time.
Accordingly, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Date: May 26, 2019
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7 .