P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com
The Regents of the University of New Mexico
COMPLAINANT
vs.
American Information Services
RESPONDENT
DECISION
FILE NO.: FA0002000094306
The above-entitled matter came on for an administrative
hearing on April 26, 2000 before the undersigned arbitrator on
the Complaint
of The Regents of the University of New Mexico, represented by Paul
Adams, Peacock Myers &
Adams, P.C., 201 Third St., Suite 1340, Albuquerque,
NM 87102 ("Complainant"), against American Information Services,
represented
by Victor Marshall and Roberta M. Price of Victor R. Marshall &
Associates, P.C., 4800 Juan
Tabo, NE, Suite C, Albuquerque, NM 87111,
("Respondent"). Upon the written submitted record, including the Complaint
and the Response to the Complaint, and Additional Responses submitted
by each party, the following DECISION
is rendered:
PROCEDURAL FINDINGS
Domain Name: www.lobobasketball.com
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: American Information Services,
977 Seminole Trail, Box 299,
Charlottesville, VA 22901
Date of Domain Name Registration: February 16, 1999
Domain Name: www.lobofootball.com
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: American Information Services,
977 Seminole Trail, Box 299,
Charlottesville, VA 22901
Date of Domain Name Registration: February 16, 1999
Date Complaint Filed: March 14, 2000
Date of Commencement of the Administrative Proceeding
in Accordance with Rule 2(a) and Rule 4(c): March 15, 2000.
Due Date for Response: April 7, 2000. Response was timely
filed.
After reviewing the Complaint, and determining it to be
in administrative compliance, the National Arbitration Forum ("Forum")
forwarded the Complaint to the Respondent on March 15, 2000 in compliance
with Rule 2(a), and the administrative
proceeding was commenced pursuant
to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified
Network Solutions, Inc. that the administrative proceeding had commenced.
The Complaint was then docketed and forwarded
to the undersigned arbitrator
for decision.
FINDINGS OF FACT
-
On March 17, 2000, Network Solutions, Inc. confirmed
that Respondent registered both the domain names at issue,
www.lobobasketball.com
and www.lobofootball.com, under the name American Information
Services. Network Solutions acknowledged
the commencement of this
administrative proceeding and that the Network Solutions Service
Agreement
Version 4.0 binds the Respondent. Accordingly, Respondent
agreed to resolve any dispute regarding its domain name
registration
pursuant to ICANN’s Rules for Uniform Domain Name Dispute
Resolution Policy and
the Uniform Domain Name Dispute Resolution
Policy.
-
The Complainant has invoked the jurisdiction of
the Forum. Respondent contests the jurisdiction of the Forum on
the grounds that this is not a "cybersquatting" case but has defended
on the merits and has not
denied the contractual obligations of
the Network Solutions Service Agreement Version 4.0 or explained
why the Rules would be inapplicable to the narrow inquiry before
the Forum and this arbitrator.
-
Complainant is a major state university with an
active sports program and has long been associated with the name
of its mascot "lobo or lobos" (Spanish for wolf).
-
Complainant registered "LOBOS" as a service mark
of the University of New Mexico with the U.S. Patent and Trademark
on August 3 of 1999, confirming many years of common law trade/service
mark use.
-
Respondent, whose principal is James Bray ("Bray")
is a sports enthusiast, a former student of the University of
New Mexico and an online sports writer focusing on the athletic
programs of Complainant. To this
end, and with the claimed permission
and encouragement of some individuals associated with the Lobos
sports program, Bray established and maintained websites for each
of the domain names at issue. On those pages
he provided considerable
information concerning the various Complainant teams and their
coaches.
-
In the middle of 1999, any friendly acquiescence
to the maintenance of the websites began to disappear, as Bray’s
editorial comments became very critical and personal, focusing
on the coaching staff of Complainant.
-
Both Complainant and Respondent have submitted
lengthy and well-written briefs and many exhibits to support issues
and theories which are more appropriately dealt with in contemporaneous
litigation pending between
the parties. First and Eleventh Amendment
Constitutional issues are not within the scope of this arbitration.
-
There are sufficient and uncontroverted facts
contained in the extensive submissions of the parties to support
this Decision from the standpoint of purposes of the Rules which
are binding on the parties, notwithstanding
other legal or equitable
rights which may be vindicated in another forum.
CONCLUSIONS
The undersigned certifies that he has acted independently
and has no known conflict of interest to serve as the Arbitrator
in
this proceeding. Having been duly selected, and being impartial, the
undersigned makes the following findings
and conclusions:
-
To the extent of the relief granted in this Decision,
the Forum and this arbitrator have jurisdiction over the parties
and the subject matter of this dispute.
-
Complainant has valuable and legally protectable
rights in the mark, "LOBOS," dating back nearly two decades. The
domain names at issue are confusingly similar to the Complainant’s
registered service mark, and
the associated websites have created
a likelihood of confusion as to their source, sponsorship, affiliation
or endorsement. (Paragraph 4 of the Uniform Domain Name Dispute
Resolution Policy).
-
Even if there be some evidence of tacit consent
or waiver on the part of Complainant with respect to the establishment
of the
www.lobobasketball.com
and
www.lobofootball.com
sites by the Respondent, I find such to be legally insufficient
to convey or license the intellectual
property rights in question
or to vitiate the policies embodied in the Rules. Thus, I find that
Respondent
has no rights or legitimate interests in respect of the
domain names.
-
Respondent’s web page at http://www.lobofootball.com/maverick/info.html,
describes itself as "commercial enterprise
formed to support UNM
Lobo Football fans." Complainant has its own websites, public relations
and athletic
department spokespersons and is essentially a competitor
of Respondent with regard to sports information and commentary.
Respondent has used its domain names and related websites to disrupt
the business of Complainant. Whether
or not Respondent established
and maintained the sites for personal commercial gain, I find that
these
sites have been maintained in bad faith to disrupt the legitimate
commercial activity of the Complainant.
DECISION
Based upon the above findings and conclusions, and pursuant
to Rule 4(i) of the ICANN’s Rules for Uniform Domain Name
Dispute
Resolution Policy and the National Arbitration Forum’s Supplemental
Rules to ICANN’s Uniform
Domain Resolution Policy, it is decided
as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAMES "www.lobobasketball.com"
and "www.lobofootball.com,"
REGISTERED BY RESPONDENT, BE CANCELLED.
Signed this 26th day of April 2000 by Judge James A. Carmody
(Retired), arbitrator.
Honorable James A. Carmody
