DECISION

Cornell University v. Steven Wells

Claim Number: FA0305000158423

PARTIES

Complainant is Cornell University, Ithaca, NY (“Complainant”) represented by Heather Mapstone of Nixon Peabody LLP. Respondent is Steven Wells, Ithaca, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cornellrentals.com> registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Linda M. Byrne, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 21, 2003; the Forum received a hard copy of the Complaint on May 23, 2003.

On May 27, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <cornellrentals.com> is 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. 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 May 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 16, 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@cornellrentals.com by e-mail.

A timely Response was received and determined to be complete on June 13, 2003.

Complainant submitted a timely and complete Additional Submission on June 18, 2003.

On June 23, 2003, an Additional Submission from Respondent was received. It was complete and timely.

On June 25, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Linda M. Byrne as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent’s domain name <cornellrentals.com> is confusingly similar to its trademark CORNELL; that Respondent does not have any rights or legitimate interest with respect to the domain name <cornellrentals.com>, and that the domain name was registered and is being used by Respondent in bad faith.

B. Respondent

Respondent contends that CORNELL and <cornellrentals.com> are generic terms and that <cornellrentals.com> is not confusingly similar to Complainant’s mark.  Respondent also contends that it has used the term “Cornell Rentals” in connection with a bona fide offering of services, and that Respondent did not register and use the domain name in bad faith. 

FINDINGS

Complainant has used the mark CORNELL for educational services since 1867.  Complainant owns several U.S. trademark registrations including the word CORNELL and a pending U.S. trademark application for CORNELL UNIVERSITY.  In the course of providing educational services, Cornell also provides rental housing services, including online rental housing services.

Respondent is a business offering assistance to apartment seekers and landlords in locating housing in Ithaca, New York.  Respondent’s website features the prominent heading “IthacaRentals.com.” 

Complainant sent a communication to Respondent on November 29, 2002, stating that the CORNELL name and marks are trademarks of the Complainant.  Complainant sent another communication on December 2, 2002 stating that Respondent’s use of the CORNELL name constitutes infringement.  Respondent replied by stating that its business had no association with Cornell University.  Complainant’s licensing representative and counsel sent subsequent letters to Respondent on January 7, 2003; February 17, 2003; March 6, 2003; and May 2, 2003.

DISCUSSION

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.

Identical and/or Confusingly Similar

           

The domain name fully incorporates Complainant’s CORNELL trademark.  See NIIT Ltd. v. Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name <myniit.com>, which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s VeriSign mark and the domain name <verisignindia.com> where Respondent add the word “India” to Complainant’s mark).

 

The domain name <cornellrentals.com> merely adds the generic term “rentals” to the end of Complainant’s mark.  The addition of a generic term does not sufficiently differentiate the disputed domain name from Complainant’s mark with regard to Policy 4(a)(i).  See AZA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity were the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

Respondent argues that the term “Cornell” is a generic term found in the dictionary, used as a surname, and used by a wide variety of entities.  However, in this context and as used by Complainant, the term CORNELL is an enforceable trademark.  The CORNELL trademark has been used since 1867 and is federally registered, which creates a legal presumption that CORNELL is a valid trademark.

Respondent argues that other third party marks (e.g., <cornelluniversity.org>) are confusingly similar to the Complainant’s trademark, but that <cornellrentals.com> is not confusingly similar.  However, in view of the fact that Complainant provides online rental services, this Panel concludes that the domain name <cornellrentals.com> is confusingly similar to Complainant’s CORNELL mark.

Rights or Legitimate Interests

It is the Panel’s conclusion that Respondent has not presented sufficient evidence that it owns rights or legitimate interests in the domain name <cornellrentals.com> prior to Respondent’s receipt of notification of the dispute between the parties.

The Uniform Dispute Resolution Policy ¶ 4(c) sets out three example circumstances which, if found by the Panel, “shall demonstrate your rights or legitimate interests to the domain name.”  These circumstances are (i) the use of the domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent being commonly known by the domain name; or (iii) the Respondent’s legitimate noncommercial or fair use of the domain name, without intent for commercial gain.

The Panel concludes that the Respondent has not submitted sufficient evidence to demonstrate rights or legitimate interests in the <cornellrentals.com> domain name.  Whereas Respondent’s business certainly provides a legitimate service, Respondent has not demonstrated use of “Cornell Rental” in connection with its services other than the existence of the <cornellrentals.com> domain name.  This term does not appear prominently on Respondent’s website or on its business card.  Respondent argues that <cornellrentals.com> is used prominently on various types of promotional materials, but the Respondent has failed to submit examples of these materials.

Moreover, Respondent evidently operates under the business names “Ithaca Rentals” and “Welzie.com,” rather than “Cornell Rentals.”  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). 

This Panel concludes that the Respondent failed to prove rights or legitimate interests in the <cornellrentals.com> domain name prior to Respondent’s receipt of notice of this dispute.

Registration and Use in Bad Faith

Complainant has proffered evidence that it provides rental housing services for consumers seeking housing in the Ithaca, New York area in competition with Respondent.  Both Complainant and Respondent are located in Ithaca and compete with each other.  It appears that Respondent registered the <cornellrentals.com> domain name for the purpose of disrupting the business of a competitor, which evidences bad faith registration and use under Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area.)

In summary, this Panel finds that <cornellrentals.com> is confusingly similar to Complainant’s CORNELL mark, that Respondent has no rights or legitimate interests in <cornellrentals.com>, and that Respondent has registered and used <cornellrentals.com> in bad faith.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be granted to Complainant.

Accordingly, it is Ordered that the <cornellrentals.com> domain name be transferred from Respondent to Complainant.

Linda M. Byrne, Panelist
Dated: July 9, 2003

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