DECISION

American University v Eitan Naveh and iou2, LLC

Claim Number: FA0409000323759

PARTIES

Complainant is American University, (“Complainant”) represented by Sherri N. Blount, of Morrison & Foerster, 2000 Pennsylvania Ave., NW, Ste 5500, Washigton, DC 20006.  Respondent is Eitan Naveh and iou2, LLC, (“Respondent”), 84/a Ashkenazi St. Tel-Aviv, 69869, Israel.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <americanu.us>, registered with Go Daddy Software, Inc.

PANEL

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

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 3, 2004; the Forum received a hard copy of the Complaint on September 7, 2004.

On September 7, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <americanu.us> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On September 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 29, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

A timely Response was received and determined to be complete on September 28, 2004.

Complainant timely filed an Additional Submission under date of October 4, 2004, and Respondent timely filed an Additional Submission under date of October 12, 2004.

On October 7, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, founded in 1893, is a well-known accredited university located in the District of Columbia of the United States.  It is commonly known as, and has used, the trademark AMERICAN UNIVERSITY in providing to the public educational services and related goods.  Complainant owns trademark registrations for this mark issued by the European Community, New Zealand, Spain, and the United Kingdom.  It also has pending before the United States Patent and Trademark Office an application for registration of the same mark.  Complainant’s mark has become a famous and distinctive mark within the fields of educational goods and services, and Complainant has advertised its mark extensively throughout the United States and abroad. The full mark, as registered with the European Community trademark office, is AU AMERICAN UNIVERSITY.

Complainant has no connection or affiliation with Respondent, nor has Complainant authorized, licensed or otherwise given to Respondent consent, either express or implied, for the use of the mark AMERICAN UNIVERSITY.

Prior to registering the disputed domain name, <americanu.us>, Respondent was not connected to, affiliated with or known by the name AMERICANU.

Although Respondent registered the disputed domain name more than two years ago, in April of 2002, it has never developed a website in connection with that domain name.

Respondent’s passive holding of the disputed domain name does not constitute a bona fide offering of goods or services, nor does it represent a noncommercial or fair use of the domain name as contemplated by the usTLD Policy.

Respondent had constructive, if not actual, knowledge of Complainant’s rights in and to the AMERICAN UNIVERSITY mark when it registered the disputed domain name, which is evidence that it has registered and used that domain name in bad faith.

Respondent lacks a nexus to the United States prescribed by the usTLD Nexus Requirements, as demonstrated by the fact that all of its contact information in the WHOIS database is for an address in Israel.  Registration and use of the disputed domain name while lacking such a nexus constitutes further evidence of bad faith.

GoDaddy.com, the site of Respondent’s domain name registrar, maintains a page for the benefit of Respondent, which contains this message:  “americanu.us coming soon!”

B. Respondent

Respondent iou2, LLC, is the registrant of the disputed domain name, and Respondent Eitan Naveh is the registrant’s authorized representative.

The business of Respondent iou2, LLC, is, among other things, as a manufacturer of systems for e-commerce.

Complainant has no trademark registration for the AMERICANU or AMERICAN U marks, nor does it have an application pending for such registration.  Likewise, Complainant has no common law rights in the mark AMERICANU.

The letter “U” is not necessarily to be interpreted as an abbreviation of the word “university.” It can also stand for many other words, including “you,” which is the sense in which Respondent uses it in the disputed domain name.

Respondent iou2, LLC, was established as a corporation, and was since converted to a limited liability company, under the laws of the State of Delaware.  It therefore has the nexus to the United States required by the usTLD Policy.

A website is not the only legitimate use for a domain name.  It is permissible for Respondent to use its <americanu.us> domain name in an e-mail address, which it does.

Respondent registered the disputed domain name without any thought to a connection between it and Complainant or the word university.  This registration was entirely defensive of Respondent’s right to preserve its interests in the connection between an abbreviation of the word “you”, as in “iou2,” and common modifiers of that term.

Respondent has not placed a website at the address of the disputed domain name.  It is therefore clear that Respondent has made no effort to attract or divert web traffic to this address.  Likewise, Respondent has made no effort to market the disputed domain name either to Complainant or to any of its competitors.  All of these facts are evidence of Respondent’s good faith in the registration and use of that domain name. 

Complainant must have known of the existence of the disputed domain name soon after its registration in April of 2002.  Complainant’s failure to commence this proceeding for more than two years thereafter is an indication that Complainant did not genuinely believe that Respondent was operating in bad faith in registering or using it.

C. Additional Submissions

In its Additional Submission, Complainant asserts, among other things, that Respondent admits that the disputed domain name is confusingly similar to Complainant’s mark, that Respondent has not shown that it has rights to or legitimate interests in the disputed domain name, and that Respondent offers no support for its contention that it has not registered and used the disputed domain name in bad faith.

In its Additional Submission, Respondent asserts, among other things, that Complainant has the burden of proof to establish that it has rights to the disputed domain name, that Complainant has itself defensively registered at least one domain name under the usTLD Policy, and that Complainant has lied in its submissions in this proceeding.     

FINDINGS

On the basis of the record presented herein, the panel finds that:

1. Complainant has rights in the AMERICAN UNIVERSITY mark, and the disputed <americanu.us> domain name, is confusingly similar to that mark;

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

3. Respondent has registered the disputed domain name in bad faith.

The material facts in support of these conclusions are discussed below.

DISCUSSION

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.”

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;

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

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

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

To satisfy Policy ¶ 4(a)(i), Complainant must prove that Respondent has a domain name that is either identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Complainant has demonstrated that it has both common law and statutory rights in the AMERICAN UNIVERSITY mark.  Respondent does not dispute this.

Because the requirements of Policy ¶ 4(a)(i) are met if Complainant demonstrates that the disputed <americanu.us> domain name, is confusingly similar to its AMERICAN UNIVERSITY mark, Respondent’s argument to the effect that Complainant does not have or claim common law or statutory rights in the AMERICANU or AMERICAN U marks is unavailing.  The question before the panel is simply whether there is a confusing similarity between the AMERICAN UNIVERSITY mark and the <americanu.us> domain name.

For purposes of this issue, the country code suffix “.us” is irrelevant.  See for example, by analogy, National Collegiate Athletic Association v. Rodd Garner and IntheZone.ws,  D2000-0940 (WIPO Nov. 7, 2000), decided in the context of the “.com” suffix:

The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain names to [the reference mark] "NCAA" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services.

As to the remainder of the disputed domain name, Respondent’s argument that the “u” in “americanu” stands for “you,” and not “university,” is unpersuasive.  It is far more likely that members of the public would believe that the letter “u,” appearing without explanation immediately following a word that is the central part of the name of a familiar institution of higher learning, will take it to be an abbreviation of “university” rather than a short form of “you.”  This conclusion is consistent with the registration of Complainant’s mark in the European Community in the form: AU AMERICAN UNIVERSITY.

This being so, Respondent’s position cannot survive the rationale of America West Airlines, Inc. v. Ilyoup Paik a/k/a David Sanders, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (A domain name that partially abbreviates a mark does not distinguish it from the trademark.”); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001).

Accordingly, Complainant has demonstrated rights in the AMERICAN UNIVERSITY mark, and the <americanu.us> disputed domain name, which is merely an abbreviation of that mark, is confusingly similar.

Rights or Legitimate Interests

To satisfy Policy ¶ 4(a)(ii), Complainant must demonstrate that Respondent  has no rights or interests in respect of the disputed domain name.  In this regard, Policy ¶ 4(c) permits the panel to take into account, among other things, the following discrete considerations:

i. whether Respondent is the owner or beneficiary of a trademark or service mark that is identical to the subject domain name;

ii. whether, before any notice to it of the present dispute, Respondent has used or made demonstrable preparations to use the subject domain name in connection with a bona fide offering of goods or services;

iii. whether Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights in that name;  and

iv. whether Respondent is making a legitimate noncommercial or fair use of the subject domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the mark.

As to the first of these considerations (whether Respondent is the owner or beneficiary of a trademark or service mark that is identical to the subject domain name), there is no evidence to suggest that Respondent is so blessed. Therefore, Policy ¶ 4(c)(ii) does not apply.

With regard to the second of these factors (whether, before any notice to it of the present dispute, Respondent has used or made demonstrable preparations to use the subject domain name in connection with a bona fide offering of goods or services), Respondent alleges that it does not have and has never had designs with regard to the use of the disputed domain name for a commercial website, asserting instead both that it has registered the domain name “defensively” and that it uses the name solely to support an e-mail address.  However, because Respondent iou2, LLC, is formed as a business enterprise, a commercial purpose for this e-mail address may be safely inferred.  And, because Respondent has submitted no proof of the nature and extent of that business purpose and related activities, the panel cannot conclude that such purpose and activities involve a bona fide offering of goods or services within the meaning of the Policy.  Thus, Policy ¶ 4(c)(ii) is of no avail to Respondent. 

As to the third factor (whether Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights in that name), there is neither any evidence nor even a suggestion that this is so.  Policy ¶ 4(c)(iii) is, therefore, likewise inapplicable.

The fourth factor (whether Respondent is making a legitimate noncommercial or fair use of the subject domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the mark) merits more discussion. 

This factor has two separate elements, legitimate noncommercial use and fair use.  The question of fair use may be dispensed with quickly enough.  That topic, borrowed from the law of copyrights, deals with such activities as criticism, commentary, news reporting, teaching, scholarship and research, none of which, insofar as the parties’ submissions reveal, is implicated here.

As to legitimate noncommercial use, Respondent asserts, and Complainant does not deny, that Respondent has not created a website, commercial or otherwise, to which the subject domain name resolves.  However, as noted above, Respondent further asserts that it uses the name to support an e-mail address.  And, although Respondent has made two extensive submissions in this proceeding, it has not suggested, let alone proven, that its use of the disputed domain name to support an e-mail address is not done in furtherance of the commercial ends of iou2, LLC.  Respondent has, therefore, failed to satisfy the requirements Policy ¶ 4(c)(iv).

Respondent has offered no other creditable support for the proposition that it is making a legitimate noncommercial use of the subject domain name.

For these reasons, and because it is undisputed that Complainant has not authorized, licensed or otherwise given consent to Respondent for the use of the AMERICAN UNIVERSITY mark, the panel is forced to conclude that Respondent has no rights or legitimate interests in respect of the confusingly similar <americanu.us> domain name.

Registration or Use in Bad Faith

In order to prevail in this proceeding, Complainant must prove, not only that the disputed domain name is confusingly similar to its mark and that Respondent has no rights or interests in that domain name, but also that Respondent has registered or used the domain name in bad faith.

It is important to note in this connection that the usTLD Policy differs materially from the older UDRP Policy, among other ways, in that the standard of proof of bad faith in the former policy is stated in the disjunctive (“or”) while the standard of proof of bad faith in the latter is stated in the conjunctive (“and”). Thus, under the UDRP standard, a complainant must prove both that a respondent has registered a domain name in bad faith and that it uses it in bad faith.  A complainant under the usTLD Policy, however, need only prove either that the disputed domain name has been registered in bad faith or that it is used in bad faith.  This difference significantly reduces the proof requirement for complainants in usTLD proceedings.

There is a further difference between the two policies which merits mention here.  Although bad faith may be proved in a variety of ways, one method specifically noted in both the UDRP Policy and the usTLD Policy is for complainant to demonstrate that Respondent has registered the subject domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name.  Significantly, while the UDRP Policy requires Complainant to show that a respondent has “engaged in a pattern of such conduct,” the usTLD Policy ¶ 4(b)(ii) has no such requirement.  Thus, although more instances of such abuse than one are necessary to make the case for bad faith registration under this branch of the UDRP Policy, a single instance of registration to prevent use by a complaining trademark or service mark holder would suffice to establish bad faith under the usTLD Policy.

The effect of these two distinct differences is to signal that the drafters of the usTLD Policy intended to reduce materially Complainant’s burden of proof in support of a finding of bad faith in usTLD cases, as compared with its UDRP counterpart.  The panel approaches the issue of bad faith with this substantial policy difference in mind.

An analysis of the question of bad faith in this case begins with an assessment of Complainant’s threshold allegation that Respondent has failed to meet the Nexus Requirements of the usTLD Policy.  This is potentially significant because it has been held that failure to satisfy the Nexus Requirements is evidence of bad faith.  See Swiss Reinsurance Company v. Stephan Purtschert, FA 114666 (Nat. Arb. Forum Sep. 16, 2002).  The basis of Complainant’s argument in this regard is that all contact information for Respondent shown in the WHOIS database is for an address in Israel rather than one in the United States.  While Complainant’s factual premise is correct, its conclusion is not.  This is because a nexus with the United States may be established, not only by a showing of a residence in the United States, but also by, among other things, proof that Respondent is an enterprise organized under the law of any US state. Respondent has met this burden by showing that Respondent-registrant, iou2, LLC, was organized under Delaware law. Respondent’s administrative and technical contact information for an address in Israel does not trump this showing.

More substantively, Complainant argues that Respondent has not used the disputed domain name to resolve to a website, and that this, too, is evidence of bad faith.  It is true that many cases have held that a respondent’s failure to develop a website for a disputed domain name may be taken as evidence of bad faith.  See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).  However, Respondent asserts, and Complainant does not deny, that Respondent has used the subject domain name to support an e-mail address. 

Telstra, a seminal case on “passive holding” as evidence of bad faith, makes clear that, under this rubric, a domain name holder must be shown to have no website “or other on-line presence.”  The expression “other on-line presence” must include a functioning e-mail address.  Thus, on the facts presented, Respondent, which has an e-mail address associated with the subject domain name, cannot be said to be a passive holder of that name.  It follows, then, that, even though Respondent does not have a website associated with the same name, it cannot be accused of passive holding of the name in bad faith.

In addition to the provisions of Policy ¶ 4(b)(ii), noted above, the usTLD Policy recites a non-exclusive list of other possible bases for a finding of bad faith.  These may be summarized as:  an intent to sell, rather than use, the disputed domain name, (¶ 4(b(i));  an intent to disrupt the business of a complainant-competitor (¶ 4(b)(iii)); and commercially-motivated efforts to attract Internet users to a website resolved from the subject domain name by creating a likelihood of confusion with a complainant’s mark (¶ 4(b)(iv)).  There is no evidence before the panel to indicate that any of these factors is immediately at play in this case.

However, it has been held many times that a presumption of bad faith arises where a respondent was aware of a complainant’s mark, whether actually or constructively, before it registered or used a disputed domain name.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002).  On this point, the panel is satisfied that Respondent must have been aware, at least constructively, by virtue of Complainant’s multiple worldwide trademark registrations and its pending United States application, of the existence of Complainant’s mark when it registered the subject domain name.  Accordingly, the panel finds that the name was registered in bad faith. 

In making this finding, the panel is mindful that Respondent has shown that it has, to date, used the subject domain name solely to support an e-mail address and not a competing website.  Arguably, this circumstance might have permitted Respondent to prove that it has not actually used the name impermissibly in the operation of its e-mail address, as by demonstrating that it has made a legitimate “noncommercial or fair use” of that address in keeping with the provisions of Policy ¶ 4(c)(iv).  That provision of the Policy, although it is contained in the discussion of the separate element of rights and legitimate interests, also stands as a further factor to be considered in an assessment of Respondent’s bad faith, if any there be, because, as does any examination of bad faith, it considers both Respondent’s conduct and the presence or absence of ill motive in driving that conduct.  However, Respondent has not made such a showing.  Moreover, as discussed above, it is not necessary for Complainant to prove that the subject domain name was both registered and is being used in bad faith.  Rather, evidence of bad faith registration, standing alone, is all that is required in order for Complainant to prevail on this issue.

For these reasons, the panel is persuaded that, while the evidence of Respondent’s bad faith is modest, when that evidence is considered in light of both the relaxed bad faith proof standards of the usTLD Policy and the suggestion on the GoDaddy.com website that a site for Respondent associated with the subject name is “coming soon,” doubt, if any, as to Respondent’s bad faith registration of the subject domain name must be resolved in favor of Complainant.

DECISION

Having found all three elements required under the usTLD Policy in favor of Complainant, the Panel concludes that the relief requested must be GRANTED.

Accordingly, it is Ordered that the domain name < americanu.us > be TRANSFERRED from Respondent to Complainant.

       

Terry F. Peppard, Panelist
             Dated:  October 21, 2004

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