DECISION

Advanced Research & Technology Institute, Inc. v. Eric LeVin

Claim Number: FA0408000318079

PARTIES

Complainant is Advanced Research & Technology Institute, Inc. (“Complainant”), represented by Daniel L. Boots, 2700 Market Tower, 10 West Market St., Indianapolis, IN 46204.  Respondent is Eric LeVin (“Respondent”), General Delivery, TCI, Providenciales, Turks and Caicos Islands.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <indianauniversity.net> and <indianauniversity.org>, registered with Gandi.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Sir Ian Barker, Sandra Jo Franklin and Bruce E. Meyerson, presiding, as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 25, 2004; the Forum received a hard copy of the Complaint on August 27, 2004.

On August 26, 2004, Gandi confirmed by e-mail to the Forum that the domain names <indianauniversity.net> and <indianauniversity.org> are registered with Gandi and that the Respondent is the current registrant of the name.  Gandi has verified that Respondent is bound by the Gandi 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 September 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 21, 2004 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@indianauniversity.net and postmaster@indianauniversity.org by e-mail.  Respondent’s deadline to submit a Response was extended to October 22, 2004.

A timely Response was received and determined to be complete on October 22, 2004.

A timely Additional Submission was received from Respondent and determined to be complete on October 27, 2003.  Respondent submitted an untimely Second Additional Submission.  The Panel has chosen not to consider that submission.

On November 5, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Sir Ian Barker, Sandra Jo Franklin and Bruce E. Meyerson, as Panelists.

On November 5, 2004, Respondent submitted a challenge to two members of the Panel, Bruce E. Meyerson and Sandra Jo Franklin.  Respondent contended that Mr. Meyerson would be inherently biased because he is a Jew, a U.S. person, and because he receives a portion of his income from the Forum.  Ms. Franklin is also objected to because she is a U.S. person, that she receives a portion of her income from the Forum and that she is a graduate of the University of Michigan and would therefore have “a natural bias . . . to defend a fellow Big Ten university.”  Respondent also objected to Ms. Franklin as he objects to “placing a female in a position of authority” over him because it is “offensive” to his “sincere Christian beliefs.”  The challenge was considered by the Forum in accordance with its Supplemental Rule 10, and on November 11, 2004 the Forum’s Internet Legal Counsel concluded as follows: “After careful review of the facts, with attention paid to the circumstances and specific reasons for disqualification raised in the challenges, the Forum has determined that the challenges have not raised any specific allegation of impartiality or of conflict of interest that would warrant disqualification.”

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Advanced Research Technology Institute, Inc., maintains several United States registrations for the following marks: 

Indiana University^® - Registration No. 1,699,530, issued July 7, 1992, covering “educational services; namely, conducting public lectures, courses, workshops, seminars, symposia, and conferences at the university undergraduate and graduate levels; and entertainment services; namely, organizing and providing sports events and cultural events, such as dance, theater, music and film, in Class 41.

Indiana University^® - Registration No. 1,706,690, issued August 11, 1992, covering “decals, notebooks, binders, paper pads, paper pad holders, pens, pencils, folders, calendars, planning and appointment books, postcards, writing paper, envelopes, playing cards, wrapping paper, and academic and entertainment publications; namely, programs, brochures, catalogs, pamphlets, and yearbooks, in Class 16.

Indiana University^® - Registration No. 1,699,198, issued July 7, 1992, covering “clothing; namely, sweatshirts, sweatpants, shorts, jackets, sweaters, tank tops, jerseys, T-shirts, caps, scarves, sport shirts, hats, neckties, jogging suits and rain ponchos, in Class 25.

Indiana University^® - Registration No. 1,710,086, issued August 25, 1992, covering “mugs, shot glasses, drinking glasses, glass and ceramic steins, plastic coasters, cups, plates, bowls, bottle openers, portable coolers, cork screws, ice buckets and pails, beverage insulator sleeves, and wastebaskets, in Class 21.

Complainant states that it owns these and other state registrations, and that Indiana University, a multi-campus university with its primary campus located in Bloomington, Indiana, uses these marks under Complainant’s authority. 

Complainant contends that the disputed domain names are identical to its mark and the legal name of Indiana University.  Complainant contends that Respondent is not commonly known by either of the domain names in question nor are the domain names being used in connection with a bona fide offering of goods or services. 

Complainant further contends that Respondent registered the sites in bad faith.

B. Respondent

Respondent describes himself as an “unemployed individual living in the tiny Turks and Caicos Islands . . . . [He] has been unemployed for over 12 years.  Respondent confesses himself to be a sole, lone Christian individual making his Christian walk through a life of trial and tribulation including several passes through the valley of the shadow of death.” 

Although it appears from the Response that Respondent’s daughter had some type of dispute with or bad experience at Indiana University, Respondent has chosen to address whatever happened to his daughter by launching into a vitriolic crusade in the Response, of which the following excerpts are typical:

“Respondent Protests any non-white person being on the Panel . . . . This is a White Peoples dispute . . . .”

“Respondent Protests any person over 73 years old being on the Panel . . . . It is well known that people’s brains deplete, wear out, and start to malfunction with advancing age.”

“Respondent Protests any Jew, any Jew Noahide, and any U.S. Person being on the Panel  . . . because of the Kol Nidre oath, the historic improper behavior of Jews against Christians and the Jew Babylonian Talmud cyber-synagogue status of the instant Administrative Proceeding.”

“The Jews have an oath known as the Kol Nidre Oath.  This oath allows a Jew to lie under oath with impunity.  The Jew can even lie under oath that he has not made a Kol Nidre Oath that allows him to lie under oath!  Because of the well known existence and practice of the Jew Kol Nidre Oath, it is impossible for any person . . . to rely on any oath, statement, or representation of a Jew.  This partially explains why so many statements made by Jews are bald faced lies.”

Contrary to the 10-page limit set forth by the Forum’s Supplemental Rule 5(a), Respondent has submitted a 102-page diatribe mostly filled with scurrilous rhetoric, much like the hateful venom set forth above.  Although it is unlikely, perhaps somewhere in the over 100 pages (and mounds of exhibits) there is a point to be made, but it is not the burden of the Panel to search through Respondent’s venomous attacks on others to find substance somewhere within the many pages of offensive, boorish, racist and anti-Semitic statements.[1]

Specifically, the Response fails to comply with Rule 5(b)(i), Rules for Uniform Domain Name Dispute Resolution Policy (“Rule”) which provides that the response “shall (i) [r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent . . . to retain registration and use of the disputed domain name.”  The Rule also requires that the response comply with page limits in the applicable rules of the dispute resolution service provider.  Forum Supplemental Rule 5 provides that the response shall not exceed ten pages.

Because of the gross failure by Respondent to comply with these rules, the Response shall not be considered.  See Yahoo! Inc. v. Dank, FA 203169 (Nat. Arb. Forum Dec. 6, 2003) (response not considered because it was not in compliance with Rule 5 or Forum Supplemental Rule 5); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (response not considered because it did not contain the appropriate certification); see also Whirlpool Props. Inc. v. Gyurkovits, DBIZ2002-00007 (WIPO June 26, 2002)(response not considered because it did not contain any certification by respondent); see also Rolls-Royce PLC v. Hallofpain, D2000-1709 (WIPO Feb. 19, 2001)(response denied because it did not contain the certification required by Rule 5(b)(viii)).

FINDINGS

Complainant maintains United States registrations for the following marks:  Indiana University^® - Registration No. 1,699,530, issued July 7, 1992; Indiana University^® - Registration No. 1,706,690, issued August 11, 1992;  Indiana University^® - Registration No. 1,699,198, issued July 7, 1992;  Indiana University^® - Registration No. 1,710,086, issued August 25, 1992. 

Respondent’s web sites contain the same type of inflammatory rhetoric as set forth in the Response.

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 record indicates that Complainant has established rights in the INDIANA UNIVERSITY mark through registration with the U.S. Patent and Trademark Office as set forth above.  Accordingly, although the mark is a combination of a generic and geographic name, Complainant can nevertheless satisfy the requirements of Policy ¶ 4(a)(i).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”). 

Furthermore, the Panel agrees with Complainant that the domain names in dispute are identical to Complainant’s mark because the domain names fully incorporate the mark and merely add the generic top-level domains “.org” and “.net.”  The addition of the generic top-level domains is insufficient to distinguish the domain names from Complainant’s mark.  See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to complainant’s MYSTIC LAKE trademark and service mark); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to complainant’s mark).

Finally, the Panel is in agreement with Complainant that the disclaimer on Respondent’s  websites to which the domain names resolve is insufficient to prevent Internet user confusion.  See Alta Vista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the addition of a disclaimer, when the domain name consists of complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by complainant).

Rights or Legitimate Interests

The Panel agrees with Complainant that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly known by the domain names.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) respondent is not a licensee of complainant; (2) complainant’s prior rights in the domain name precede respondent’s registration; (3) respondent is not commonly known by the domain name in question).

Moreover, the Panel finds that Respondent is using the domain names for political purposes or to tarnish Complainant’s mark by using the domain names to resolve to a website critical of Complainant.  Use of a domain name that is identical to another’s mark to resolve to a website critical of the mark holder, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See CryptoLogic, Inc. v. Internet Billions Domains Inc., FA318925 (Nat. Arb. Forum Nov. 5, 2004); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of (the Complainant) . . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”).

Registration and Use in Bad Faith

The Panel finds that Complainant has demonstrated that the domain names have been registered by Respondent in bad faith.   The Panel finds that that the registration of the domain names is in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent had actual or constructive knowledge of Complainant’s mark when the domain names were registered.  Registration of a domain name identical to another’s mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).

DECISION

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

Accordingly, it is Ordered that the <indianauniversity.net> and <indianauniversity.org> domain names be TRANSFERRED from Respondent to Complainant.

Bruce E. Meyerson, Panel Chair

Sir Ian Barker, Sandra Jo Franklin, Panelists
Dated: November 19, 2004

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