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Generic Top Level Domain Name (gTLD) Decisions |
The Board of
Trustees of the Leland Stanford Junior University v. Computer Product
Information a/k/a Richard Leeds
Claim
Number: FA0302000146571
Complainant is
The Board of Trustees of the Leland Stanford Junior University, Stanford,
CA (“Complainant”) represented by Laura C. Gustafson, of
Pillsbury Winthrop, LLP. Respondent is Computer Product
Introductions a/k/a Richard Leeds, Mercer Island, WA (“Respondent”).
The
domain names at issue are <stanford-books.com>,
<stanford-shop.com>, <stanfordustore.com>,
<stanfordevents.com>, <stanford-sports.com>,
<stanford-talk.com>, <stanfordforum.com>,<stanford-mail.com>
and
<stanford-alumni.net>, registered with Bulkregister.Com,
Inc.
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict
in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 20, 2003; the
Forum received a hard copy of the
Complaint on February 24, 2003.
On
February 24, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that
the domain names <stanford-books.com>,
<stanford-shop.com>, <stanfordustore.com>,
<stanfordevents.com>, <stanford-sports.com>,
<stanford-talk.com>, <stanfordforum.com>,<stanford-mail.com>
and <stanford-alumni.net> are registered with Bulkregister.Com,
Inc. and that Respondent is the current registrant of the names. Bulkregister.Com, Inc. has verified that
Respondent is bound by the Bulkregister.Com, Inc. 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
February 25, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of March 17, 2003 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@stanford-books.com,
postmaster@stanford-shop.com, postmaster@stanfordustore.com,
postmaster@stanfordevents.com,
postmaster@stanford-sports.com,
postmaster@stanford-talk.com, postmaster@stanfordforum.com,
postmaster@stanford-mail.com, postmaster@stanford-alumni.net
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 24, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the
Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its
responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to
employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules,
the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response
from Respondent.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <stanford-books.com>,
<stanford-shop.com>, <stanfordustore.com>, <stanfordevents.com>,
<stanford-sports.com>, <stanford-talk.com>,
<stanfordforum.com>, <stanford-mail.com> and
<stanford-alumni.net> domain names are confusingly similar to
Complainant’s STANFORD mark.
2. Respondent does not have any rights or
legitimate interests in the <stanford-books.com>,
<stanford-shop.com>, <stanfordustore.com>, <stanfordevents.com>,
<stanford-sports.com>, <stanford-talk.com>,
<stanfordforum.com>, <stanford-mail.com> and
<stanford-alumni.net> domain names.
3. Respondent registered and used the <stanford-books.com>,
<stanford-shop.com>, <stanfordustore.com>, <stanfordevents.com>,
<stanford-sports.com>, <stanford-talk.com>,
<stanfordforum.com>, <stanford-mail.com> and
<stanford-alumni.net> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
used the STANFORD mark for over 100 years as the name of its prestigious and
world-renowned educational institution.
Complainant holds a registration for the STANFORD mark with the United
States Patent and Trademark Office (Reg. Nos. 1,221,613; 2,194,918;
and
2,610,164). Complainant’s alumni
association was started in 1892 and currently has more than 75,000
members. Complainant’s bookstore, THE
STANFORD BOOKSTORE, has been under license with Complainant for over 100 years
and is now online at <stanfordbookstore.com>.
Complainant has
spent considerable sums of money promoting its STANFORD mark. These efforts by Complainant have
established significant goodwill in the mark.
The STANFORD mark is indicative of high quality educational services,
research services in numerous fields, and athletics.
Respondent,
Computer Product Introductions, registered the disputed domain names between
fall of 1999 and spring 2001.
Respondent has linked the disputed domain names to a commercial website
affiliated with <klat.com>.
Respondent has altered the website from the official <klat.com>
website to imply that the commercial website at the domain names
is affiliated
with Complainant. The <stanford-books.com>,
<stanfordustore.com>, <stanford-shop.com>, <stanford-forum.com>,
and <stanfordevents.com> domain names feature the sale of new and
used textbooks and “campus essentials,” products available from Complainant’s
<stanfordbookstore.com>
website.
Respondent’s <standford-sports.com> domain name features a
header reading “Stanford University sports.
Scores and schedules.”
Respondent’s
<stanford-mail.com>
advertises “Stanford Mail”; however, Respondent offers “POP email.”
Paragraph 15(a)
of 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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2) 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.
Complainant has
established that it has rights in the STANFORD mark through its widespread use
of the mark over the past 100 years
in relation to its educational institution,
and through its registration with the U.S. Patent and Trademark Office.
Respondent’s <stanford-books.com>,
<stanford-shop.com>, <stanford-sports.com>,
<stanford-talk.com>,<stanford-mail.com> and
<stanford-alumni.net> are all confusingly similar to Complainant’s
STANFORD mark because they incorporate Complainant’s entire mark and merely add
a hyphen
and a generic term. The
addition of a hyphen between words does not add any distinct characteristics to
a domain name. See Teleplace, Inc. v. De Oliveira, FA
95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names
<teleplace.com>, <tele-place.com>, and <theteleplace.com>
are
confusingly similar to Complainant’s TELEPLACE trademark). Moreover, the addition of a generic term to
a well-known mark does not create a distinguishable mark, and thus does not
overcome a
claim of confusing similarity.
See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the subject domain name incorporates the VIAGRA mark in
its entirety, and
deviates only by the addition of the word “bomb,” the domain name
is rendered confusingly similar to Complainant’s mark); see also Quixtar Inv., Inc. v. Smithberger and
QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the
domain name <quixtar-sign-up.com> incorporates in its entirety the
Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly
similar).
Respondent’s
<stanfordustore.com> domain name is confusingly similar to
Complainant’s STANFORD mark because it merely adds the letter “u” and the
generic term
“store” to the end of Complainant’s well-known mark. The addition of extra letters and generic
terms does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i)
analysis. See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
Complainant combined with a generic word or term); see also Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a Respondent does not
create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks).
Respondent’s
<stanfordforum.com> and <stanfordevents.com> domain
names are confusingly similar to Complainant’s STANFORD mark because they
include Complainant’s entire STANFORD mark and
merely add a generic term that
could be easily associated with Complainant.
Thus, they do not overcome a Policy ¶ 4(a)(i) confusingly similar
analysis. See PG&E Corp. v. Anderson, D2000-1264
(WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common
descriptive or generic terms ‘corp’, ‘corporation’
and ‘2000’ following ‘PGE’,
create new or different marks in which it has rights or legitimate interests,
nor does it alter the underlying
PG&E mark held by Complainant”); see
also Marriott Int’l v. Café au lait,
FA 93670 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar
to Complainant’s MARRIOTT
mark); see also Perot Sys. Corp.
v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given
the similarity of Complainant’s marks with the domain name, consumers
will
presume the domain name is affiliated with Complainant; Respondent is
attracting Internet users to a website, for commercial
gain, by creating a
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
or endorsement of Respondent’s
website).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations
and inferences in the Complaint as true.
See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant
to be deemed true); see
also Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”).
Moreover,
Respondent has failed to invoke any circumstances that could demonstrate rights
and legitimate interests in the domain name.
When Complainant asserts a prima facie case against Respondent,
the burden of proof shifts to Respondent to show that it has rights or
legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no
rights or legitimate interests with
respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
Respondent has failed to invoke any circumstance
that could demonstrate any
rights or legitimate interests in the domain name).
Respondent is
using the disputed domain names to divert Internet users to Respondent’s own
commercial website. Respondent has
placed headers on each domain name that create an impression that Respondent is
associated with Complainant. This type
of use is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial or
fair use pursuant to Policy ¶
4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet
traffic is not
a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by
using Complainant’s trademarks).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
intentionally using the disputed domain names to create the appearance of an
affiliation between Complainant and Respondent. Respondent is using this Internet user confusion to sell
commercial merchandise. This type of
behavior is evidence of bad faith registration and use pursuant to Policy
4(b)(iv) because Respondent is creating a likelihood
of confusion for its own
commercial gain. See Kmart v. Kahn,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when
the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent
is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also State
Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11,
2000) (finding that the Respondent registered the domain name
<statefarmnews.com> in bad
faith because Respondent intended to use
Complainant’s marks to attract the public to the web site without permission
from Complainant).
Moreover, based
on the fame of Complainant’s STANFORD mark, and Respondent’s use of the domain
names to create an impression that
it is associated with Complainant, it can be
inferred that Respondent had knowledge of Complainant’s rights when it
registered the
disputed domain names.
Registration of an infringing domain name despite actual knowledge of
Complainant’s rights is evidence of bad faith registration pursuant
to Policy ¶
4(a)(iii). See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a
legal presumption of bad faith, when Respondent reasonably should
have been
aware of Complainant’s trademarks, actually or constructively”); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual
or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constituted
bad faith); see also Pfizer, Inc. v. Papol
Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link
between Complainant’s mark and the content advertised on Respondent’s
website
was obvious, Respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
Thus, the Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <stanford-books.com>,
<stanford-shop.com>, <stanfordustore.com>,
<stanfordevents.com>, <stanford-sports.com>,
<stanford-talk.com>, <stanfordforum.com>,
<stanford-mail.com>, and
<stanford-alumni.net> domain names be TRANSFERRED from
Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
March 28, 2003
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