Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant The Board of Regents of The University of Nebraska submitted a complaint to the WIPO Arbitration and Mediation Center for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

Respondent, Mr. Bill Saedlo, failed to respond to the complaint and a "Notification of Respondent’s Default," dated April 6, 2000, was forwarded by WIPO to Respondent.

Complainant is the governing body of the University of Nebraska system. Since at least 1869, Complainant has continuously used the "University of Nebraska" trademark and service mark in connection with numerous goods and services, including, but not limited to, educational services and materials, athletic events, educational research, and clothing.

It appears that, on or about December 10, 1999, Respondent Saedlo registered the domain name "universityofnebraska.com". Respondent has conducted no business under this domain name.

On February 16, 2000, Complainant, through its attorneys, notified Respondent of Complainant’s claim to the domain name in issue and offered to reimburse Respondent for his documented, reasonable out-of-pocket expenses "related directly to the domain name up to $200." Approximately two weeks later, not having heard from Respondent, Complainant’s counsel again communicated in writing with Respondent, inquiring as to Respondent’s intentions.

On or about March 6, Respondent contacted Complainant’s counsel and offered to sell the domain name to Complainant for $5,000. This offer was rejected by Complainant. On March 13, Respondent’s counsel wrote to Complainant’s counsel indicating that Respondent would transfer the domain name to Complainant for $15,000 and a release of any and all claims arising out of Respondent’s use of the "universityofnebraska.com" domain name and "your client’s ownership of the trademark and servicemark rights in the University of Nebraska mark."

Based upon my review of all the evidence, it is clear that Complainant has proven each of the elements set forth in Paragraph 4(a) of the Policy. The domain name is legally identical to Complainant’s mark, Respondent has not established any rights or legitimate interest in respect of the domain name under any of the circumstances set forth in Paragraph 4(c) of the Policy, and the facts support a determination that the domain name was registered and is being used in bad faith.

With respect to the issue of registration and use in bad faith, it is now well established that the act of registering a trademark as a domain name and then offering to sell the name to the rightful trademark owner constitutes commercial use. See Robert Ellenbogen v. Mike Pearson, Case No. D00-0001; Intermatic Inc. v. Toeppen, 947 F. Supp. 1127 (ND Ill. 1996); Panavision International v. Toeppen, [1998] USCA9 991; 141 F.3d 1316 (9^th Cir. 1998). Further, as the WIPO Panel found in Ellenbogen and as set forth in Paragraph 4(b)(i) of the Policy, the act of registering and then offering to sell a domain name supports a determination of "bad faith".

In view of the above, it is ordered that the domain name "universityofnebraska.com" be transferred from Respondent to Complainant.

Jeffrey M. Samuels
Panelist

Dated: April 20, 2000