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University of Alaska v. Domains For Life and Mike Kane [2004] GENDND 1378 (6 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

University of Alaska v. Domains For Life and Mike Kane

Case No. D2000-0564

1. The Parties

The Complainant is the University of Alaska (“Complainant”), of Fairbanks, Alaska, United States of America, represented by Jamo Parrish of Fairbanks, Alaska, United States of America.

The Respondents are Domains For Life (“Respondent”) of New York, New York, United States of America; and Mike Kane (“Respondent”) of New York, New York, United States of America.

2. The Domain Names and Registrar

The disputed domain names <universityofalaskaanchorage.com>, <universityofalaska.com> and <universityofalaskafairbanks.com> are registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2004. On July 29, 2004, the Center transmitted by email to Intercosmos Media Group, a request for registrar verification in connection with the Domain Names. On the same day, Intercosmos Media Group transmitted by email to the Center its verification response, which confirmed that the Respondent, Domains For Life was listed as the registrant for all three Domain Names and provided the contact details for the administrative and technical contact. Shortly thereafter, one of the Domain Names, <universityofalaska.com>, was transferred to Respondent, Mike Kane whose contact details were identical to those of Domains For Life, with the same administrative and technical contacts. On August 12, 2004, the Center notified Complainant that the Complaint was administratively deficient, and the Complainant filed an amendment to add Mike Kane as a Respondent. After receiving the amendment, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on August 16, 2004. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 16, 2004.

The Center appointed Carol Anne Been as the sole panelist in this matter on September 22, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

The Transmission of the Case File to the Panel was dated September 22, 2004. English is the language of the proceeding.

4. Factual Background

a. The following facts are asserted by Complainant in the Complaint and are not disputed.

Complainant

Complainant is a constitutional corporation and a part of the State of Alaska. The University was established in 1917, and currently serves as the only four-year public university in the State of Alaska. The University of Alaska Anchorage and the University of Alaska Fairbanks are two of the three major academic units of the University of Alaska.

Complainant owns several trademarks which include the names “University of Alaska,” “University of Alaska Anchorage,” and “University of Alaska Fairbanks,” including several federal and state registrations for such marks. The University of Alaska Fairbanks owns a federal trademark registration for the phrase UNIVERSITY OF ALASKA FAIRBANKS, United States Reg. No. 2,262,559, and two pending federal trademark applications for marks that include that phrase. The University of Alaska and University of Alaska Anchorage own several trademark registrations in the State of Alaska that include the phrase “University of Alaska” or “University of Alaska Anchorage.”

Respondent

Respondents are the registered owners of the three Domain Names, all three of which include the phrase “University of Alaska.” This phrase is a key component of the Complainant’s names and trademarks. Initially all three Domain Names were owned by Respondent, Domains For Life. After the Complainant served its Complaint, the registration for the Domain Name <universityofalaska.com> was transferred to Mike Kane. Mike Kane has the same address as the previous registrant, Domains For Life.

In the past, the Domain Names have redirected users to other Webster such as “www.abortionismurder.com,” where graphic images of dismembered fetuses were displayed, and to “www.rxmeds.com,” where users could order prescription medications. Currently, the domain names direct users to “www.selwynduke.com,” which displays a variety of essays on issues such as Christianity, religion and politics.

b. Respondents have asserted no facts since Respondents did not submit a Response in this proceeding.

5. Parties’ Contentions

A. Complainant

i. Domain Names identical or confusingly similar

Complainant contends that all three Domain Names are almost identical to the Complainant’s marks. Complainant owns rights in the Marks UNIVERSITY OF ALASKA, UNIVERSITY OF ALASKA ANCHORAGE and UNIVERSITY OF ALASKA FAIRBANKS. Complainant alleges that one must only eliminate the spaces between the words in its marks and add “.com” to create the Domain Names.

ii. Respondents’ Rights or Legitimate Interests in the Domain Names

Complainant alleges that Respondents have no rights or legitimate interests in the Domain Names. Complainant contends that Respondents have no connection with the University of Alaska and are not licensees of the University or its marks. Complainant states that Respondents have not acquired any trademark rights in any of its names or marks, or in the three Domain Names.

iii. Domain Names registered or used in Bad Faith

Complainant alleges the Respondents registered and are using the Domain Names in bad faith.

Complainant contends that in November of 2003, its general counsel sent a cease and desists letter to the then-owner of all three Domain Names, Anti-Globalization Domains. The registered letter was returned when Anti-Globalization did not accept it, but the letter sent by regular mail was not returned. Anti-Globalization Domains made no attempt to contact the University and later transferred the three Domain Names to Domains For Life. Then, after this Complaint was filed, Domains For Life transferred one Domain Name to Mike Kane, a registrant with the same address and same telephone number as Domains For Life.

Complainant argues that the Domain Names were registered merely to prevent it, the rightful owner of the marks, from reflecting its marks in corresponding domain names. Complainant further contends that by using the Domain Names, Respondents intentionally attempt to attract, for commercial gain, potential users of the University’s resources to other on-line locations, namely “www.abortionismurder.com,” where they are shown graphic images of dismembered fetuses; “www.rxmeds.com,” where they can order prescription drugs; and “www.selwynduke.com,” where they can read various political and religious essays, by creating a likelihood of confusion with the University’s marks.

Complainant contends that Respondents’ use of the Domain Names to redirect web users to the aforementioned websites implies the University’s endorsement of the ideas and positions depicted on such websites and uses the University’s goodwill to sponsor these sites without permission. Complainant argues that, as a public university, it is restricted by the First Amendment to the United States Constitution from promoting any religious or political views. Complainant states that by directing web users to these sites, Respondents are connecting the University to positions without its consent. Thus, Complainant argues that Respondents are engaging in cybersquatting.

B. Respondent

Respondents have not filed a Response and thus have not contested the allegations of the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires Complainant to prove that:

(i) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondents have no rights or legitimate interests in respect of the domain names; and

(iii) the domain names have been registered and are being used in bad faith.

A. The Domain Names are identical to trademarks in which Complainant has rights

The Domain Names are confusingly similar to the names and trademarks of Complainant. Complainant owns rights in UNIVERSITY OF ALASKA, UNIVERSITY OF ALASKA ANCHORAGE, and UNIVERSITY OF ALASKA FAIRBANKS, including federal and state trademark registrations in these names and marks. The Domain Names are virtually identical to these marks, with only the elimination of the spaces between words and the addition of “.com.” The differences are simply minor changes that are typical when using marks to create domain names.

Therefore, the Panel holds that the Domain Names registered by Respondents are identical or confusingly similar to Complainant’s trademarks.

B. Respondents have no rights or legitimate interests in respect of the Domain Names

Respondents have not set forth any evidence of circumstances of the type described in Paragraph 4(c) of the Policy to demonstrate rights to and legitimate interests in the Domain Names. Respondents also have not provided any other circumstances or evidence indicating a right or legitimate interest in the Domain Names. Complainant’s assertion that Respondents have no rights or legitimate interests in the Domain Names is unopposed.

Therefore, the Panel holds that Respondents have no rights or legitimate interests in the Domain Names.

C. The Domain Names have been registered and are being used in bad faith

Paragraph 4(b) of the Policy lays out a non-exhaustive list of circumstances that indicate that a respondent is using the disputed domain name(s) in bad faith.

Paragraph 4(b)(iv) of the Policy states that it is evidence of bad faith when the respondent, by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the complainant’s mark. Respondents registered and used the Domain Names to capitalize on Complainant’s rights in its name and marks to misdirect the public and for Respondents’ own commercial gain. By registering the Domain Names, which all include the phrase “University of Alaska,” Respondents sought to capture Internet users looking for University information or resources and to redirect them to sites of Respondents’ choosing. Commercial gain was directly involved in the redirection of Internet users to “www.rxmeds.com,” where users could buy prescription drugs. While commercial gain may not have been involved in the redirection of users to “www.abortionismurder.com” or “www.selwynduke.com,” those sites enable the Respondents to gain from associating the University with highly controversial political and religious views. This association and confusion could be harmful to the University, which may not take positions on such issues.

Further, under Section 4(b)(ii) of the Policy, registration of three domain names corresponding to the same trademark can be a pattern of conduct showing registration and use of the Domain Names in bad faith.

Thus, the Panel finds that Respondents registered and used the Domain Names in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 5 of the Rules, the Panel orders that the three Domain Names registered by Respondents, Domains For Life and Mike Kane, be transferred to Complainant, University of Alaska.

(i) The Domain Names are identical to trademarks in which Complainant has rights; and

(ii) Respondents have no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith by Respondents.

Carol Anne Been
Sole Panelist

Dated: October 6, 2004