Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Daniel W. Sieminski The Pennsylvania State University, University Park, PA, USA ("Complainant") represented by Wayne L. Mowery, Jr., of McQuaide Blasko. The Respondent is Joel Gehman d/b/a WeArePennState.com, Norristown, PA, USA ("Respondent").

The domain names at issue are nittanylions.org, pennstatebookstore.com, pennstatestore.com, and wearepennstate.com, registered with Network Solutions, Inc.

The undersigned Daniel B. Banks, Jr., certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 14, 2001; the Forum received a hard copy of the Complaint on March 16, 2001.

On March 16, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names nittanylions.org, pennstatebookstore.com, pennstatestore.com, and wearepennstate.com are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 4.0 and 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 9, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@nittanylions.org, postmaster@pennstatebookstore.com, postmaster@pennstatestore.com, and postmaster@wearepennstate.com by e-mail.

A timely response was received and determined to be complete on March 20, 2001.

On March 26, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Daniel B. Banks, Jr. as Panelist.

The Complainant requests that the domain names be cancelled.

B. Respondent:

It is the finding of the undersigned as follows:

1 - The disputed domain names are identical to or confusingly similar to trademarks in which the Complainant has rights.

2 - The Respondent has no right or legitimate interests in respect of the domain names.

3 - The domain names were registered and are being used in bad faith.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The Respondent has not disputed that the disputed domain names are identical or confusingly similar to the Complainant's registered marks and it is the finding of the undersigned that they are, in fact, identical or confusingly similar. See University of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that the domain names <universityofalberta.com> and <albertau.com> are confusingly similar to Complainant’s marks).

It appears that Respondent is using the domain names wearepennstate.com and nittanylions.org in connection with a Penn State Football website. It further appears that Respondent is not using pennstatebookstore.com and pennstatestore.com at all. Thus, Complainant contends that Respondent has no rights or legitimate interests in the domain names because Respondent has made no bona fide use of the domain names. Policy ¶ 4(c)(i). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his websites); Leland Stanford Junior Univ. v. Zedlar, FA 94970 (Nat. Arb. Forum July 11, 2000) (finding no rights or legitimate interests where Respondent had not used the domain name since registration, over two and a half years earlier).

Complainant further contends that Respondent is not commonly known by the domain names at issue. Policy ¶ 4(c)(ii). See Univ. of Wyoming v. Horton, D2000-0366 (WIPO June 16, 2000) (finding that Respondent has no rights or legitimate interests in the domain names, <uwcomboys.com>, <wyomingcowboys.com>, <uwyo.com>, <uwyoming.com>, and <wyocowboys.com>) where Respondent is not commonly known by the domain names nor made any use of the domain names).

It is the finding of the undersigned that the Respondent has no right or legitimate interest in the disputed domain names. The fact that his wife attended Penn State is not a sufficient showing of a right or legitimate interest in domain names incorporating registered trademarks.

Complainant contends that Respondent registered the four domain names to misleadingly divert Internet users by causing confusion with Complainant’s trademarks. The web sites nittanylions.org and wearepennstate.com appear to be web sites of Penn State University but contain no disclaimers. Additionally, nittanylions.org contains a link to Hypermart and BuyArt.com, both being commercial sites. Attracting Internet users, for commercial gain, to Respondent’s 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 Respondent’s web site or services is evidence of bad faith registration and use. Policy ¶ 4(b)(iv). See Imperial College of Science, Technology and Medicine v. Webweaver Media Construction, D2000-1146 (WIPO Nov. 13, 2000) (transferring the domain name <imperialmba.com> where Respondent, an alumni association formerly associated with the Complainant, misleadingly used the domain name to promote ticket sales for college events, despite Respondent’s contentions that the domain name was being used for a non-commercial purpose).

Since Respondent has made no use of the domain names pennstatebookstore.com and pennstatestore.com, there is an issue of passive holding. Passive holding of a domain name not connected to Respondent may be evidence of bad faith registration and use. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).

Further, even though Respondent has made no use of the domain names pennstatebookstore.com and pennstatestore.com, given the commercial nature of the word "store," it can be inferred that Respondent intends to use these two domain names for a commercial purpose in connection with Complainant’s mark. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because "It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy").

The undersigned finds that the Respondent has registered and used the disputed domain names in bad faith as defined by UDRP Section 4(a)(iii).