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Generic Top Level Domain Name (gTLD) Decisions |
Grand Valley State University v. Robert
Beekman
Claim Number: FA0404000263528
PARTIES
Complainant is Grand Valley State University (“Complainant”),
represented by Mary C. Bonnema,
171 Monroe Ave., NW, Suite 600, Grand Rapids, MI 49503. Respondent is Robert
Beekman, (“Respondent”), P.O. Box 155, Allendale, MI 49401.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <gvsuhousing.com>, registered with Melbourne
It, Ltd. d/b/a Internet
Names Worldwide.
PANEL
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.
Barry Schreiber as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on April 28, 2004; the Forum received
a hard copy
of the Complaint on April 29, 2004.
On April 28, 2004, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the Forum that the domain name <gvsuhousing.com> is
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified
that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names
Worldwide 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 3, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting
a deadline
of May 24, 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@gvsuhousing.com by e-mail.
A timely Response was received and determined to be complete on May 24,
2004.
A timely Additional Submission was received from Complainant and
determined to be complete on May 28, 2004.
On June 3, 2004 pursuant to Complainant’s
request to have the dispute decided by a single-member
Panel, the Forum appointed Barry Schreiber
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant states that since at least
1987, Complainant has exclusively and continuously used the trademark GVSU in
association with its university,
its products, its services and its
housing. Moreover, Complainant has
exclusively and continuously used the trademark GVSU in association with all of
the goods and services listed
in its trademark registration. As a result of the quality of the goods and
services associated with Complainant’s mark and the considerable effort
expended in promoting
them under the GVSU trademark, Complainant’s products and
services have met with highly favorable acceptance, and the mark has become
a
symbol of Complainant, its products, its services, and its goodwill.
From 1996 to 1998, Respondent worked as a
contractor for Complainant, doing repairs and maintenance work for Complainant
in some of
Complainant’s apartment housing.
Thus, Respondent had previous business dealings with Complainant and had
direct knowledge, as a result of those dealings, about Complainant’s
student
housing. Respondent currently lives
near the University. Respondent is no
longer affiliated, in any way, with Complainant. However, Respondent is fully familiar
with and aware of Complainant’s exclusive right to use the mark GVSU,
particularly with respect
to housing.
Not long after working on Complainant’s housing projects, Respondent
formed a company called Beekman Management Company for the purpose
of renting
properties to others, namely to Complainant’s students and prospective
students.
On February 20, 2000,
Respondent with full knowledge of Complainant’s rights in the trademark GVSU
registered the domain name at issue:
www.gvsuhousing.com. Respondent also uses Complainant’s GVSU
trademark on his website for the express purpose of renting properties to
Complainant’s students
(Emphasis supplied).
Complainant contends that Respondent’s use of
Complainant’s registered GVSU trademark in the domain name, coupled with the
generic
name of the service (housing) in the domain name, leads and redirects
users to purchase services from Respondent.
Purchasers of Respondent’s services will be confused as to the source of
services offered by Respondent under the subject domain name. Moreover,
users of the Internet are led to believe that the domain name “gvsuhousing” may
be owned by, related or sponsored by Complainant,
since Complainant is the only
authorized user of the federally registered trademark GVSU for housing and
other goods and services.
(Emphasis supplied)
B. Respondent states that
Complainant’s allegations are without merit for the following reasons:
[a.] Complainant
waxes poetic about Respondent’s work history and Complainant’s alleged good name. What Complainant fails to include in its
Complaint is proof that the domain name at issue is identical or confusingly
similar to the
trademark that Complainant registered only after becoming aware
of Respondent’s domain name.
The domain name <gvsuhousing.com> is not identical or
confusingly similar to a trademark or service mark in which Complainant has
rights. Complainant bases its
allegation on its U.S. Trademark Registration No. 2,800,256 for the trademark
GVSU. (A copy of which the Respondent attached
as Annex A.) Complainant was granted the trademark,
however, on December 30, 2003.
Respondent began using the domain name on February 20, 2000, almost
three years prior to Complainant’s registration of the domain
name. Respondent sites ABT Elecs., Inc. v. MotherBoards.com, FA 221239 (Nat.
Arb. Forum Feb. 20, 2004), (a copy of
which Respondent attached as Annex B). Respondent’s registration of the disputed
domain name predated Complainant’s filing date for its registered
trademark. Respondent sited a National
Arbitration Forum panel decision which summarily denied the contention that
Policy ¶ 4(a) (i) requires
a Complainant to merely establish rights in a mark,
without regard to the commencement date of those rights. Additionally, in analyzing whether
Complainant had common law rights to the ABT mark, the Panel found that the
USPTO certificate that
listed Complainant’s first use of the ABT mark as being
in 1936 was insufficient, without additional substantiating evidence, to
establish rights in the mark.
Respondent argues in the instant case that Complainant has proved no
right in the trademark other than its registration postdating
Respondent’s use
of the domain name. Complainant has
provided no additional proof of its rights in the mark prior to Respondent’s
use of the domain name. Consistent with
ABT Elecs., Respondent further
argues that Complainant fails to prove that the domain name is identical or
confusingly similar to Complainant’s
trademark.
Respondent states that Complainant further argues that Respondent’s use
of the domain name “leads and redirects users to purchase
services from
Respondent” and that users of the Internet may mistake Respondent’s website to
be that of Complainant “since
Complainant is the only authorized user of the federally registered trademark
GVSU for housing and other goods and services.”
Complainant errs in both assumptions, says Respondent. For most of the period during which
Respondent has used the domain name, Complainant had not offered housing to
students at its Grand
Rapids campus, the locale in which 19 of Respondent’s 21
rental properties are located. It is
not possible to redirect the purchasers when Complainant historically did not
offer an identical service from which the user
could be redirected.
Additionally, according to Respondent, Complainant alleges that it is
the only authorized user of the trademark for housing. But the Annex provided by Complainant does
not list housing amongst the multitude of goods and services described. It is hard to imagine that Complainant was
sufficiently thorough to include “coasters made of paper,” “animal carriers,”
and “toy
rubber ducks,” but somehow overlooked housing. In short, Complainant’s trademark does not
even cover the service provided by Respondent.
[b] Respondent
has rights and legitimate interests in the domain name that is the subject of
this Complaint.
(i.) Prior to Respondent’s receipt of
notice of the dispute, Respondent’s use of the domain name has been in
connection with a bona fide
offering of goods or services. Specifically, Respondent has offered
properties for rent to the general public using the domain name <gvsuhousing.com>
since early 2000. Respondent
has not specifically solicited any individual affiliated with Complainant and,
in fact, leases housing to many individuals
who have no affiliation with
Complainant.
(ii.) Respondent has
been commonly known by the domain name, even though Respondent has not acquired
trademark or service mark rights. In
fact, Respondent began using the domain name before Complainant offered housing
services in the City of Grand Rapids.
Thus, Respondent’s common usage of the domain name predated
Complainant’s in Respondent’s major business locale. Additionally, Respondent has made a substantial investment in the
domain name to ensure that individual’s seeking out its company
know to do so
via that domain name. Respondent has
placed the domain name on signage, shirts, mailer materials, letterhead, business
cards and the like at considerable
expense to Respondent.
(iii.) Respondent is
making a fair use of the domain name, without intent for commercial gain to
misleadingly divert consumers or to tarnish
the trademark or service mark at
issue. In fact, until recently,
Complainant had no consumers in the City of Grand Rapids to divert and until
December 30, 2003, no trademark
to tarnish.
In reality, Complainant is a “Johnny come lately” both as to goods
provided and the trademark at issue.
[c.] The
domain name should not be considered as having been registered and being used
in bad faith.
Complainant alleges that Respondent has registered the domain name
primarily for the purpose of disrupting Respondent’s business and
that by using
the domain name, Respondent has intentionally attempted to attract, for
commercial gain, Internet users to Respondent’s
website by creating a
likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement
of Respondent’s website or location or
of a product or service on Respondent’s website or location.
These allegations are almost remarkable insofar as Complainant was not
even in the business of housing in the City of Grand Rapids
when Respondent
began engaging in the housing rental business and acquired its domain name. Thus, Complainant had no business to
disrupt. Further, it was impossible for
Respondent to believe that it was creating a “likelihood of confusion” with
Complainant’s product,
because Complainant did not have an offering in the
marketplace.
While Complainant argues that Respondent exhibited bad faith by using
the domain name despite Respondent’s knowledge of Complainant’s
trademark
rights in the domain name at issue, Respondent could not have had knowledge of
the alleged trademark rights because Complainant
did not even receive those
rights until several years after Respondent’s use of the domain name.
C. Additional
Submissions by Complainant
In response to Respondent’s Response, Complainant summarized and
stated, “In sum, it is important to look at the facts. The University, publicly known as GVSU,
provided “GVSU” student housing since 1987.
Therefore, it has common law trademark rights in the mark that date back
over 15 years. The University also owns
a U.S. Trademark Registration for the mark.
Respondent worked for GVSU as a contractor, conducting maintenance on
GVSU’s apartment housing from 1996-1998, a fact he does not
deny. Respondent, thus, knew about GVSU’s
reputation and housing services. Yet,
and as he admits in paragraph [3] [a] of his Response, he started using the
‘GVSU’ mark in his domain name in February 2000,
registering a domain name that
wholly incorporates the GVSU mark.
Respondent does not deny that he knew about GVSU’s mark and related
housing at the time he registered his domain name. Respondent does not even explain why he decided to use the
acronym ‘GVSU’ in his domain name. And,
when the University formally informed Respondent about GVSU’s trademark rights,
Respondent initially ignored the University and
then, when the time for renewal
of the domain name was ripe; Respondent simply re-registered the domain name
with an utter disregard
for the University’s legally protectable trademark
rights.”
FINDINGS
The Panelist finds that Complainant has
proved each of the required three elements of Paragraph 4(a) of the Policy,
subsections (1),
(2) and (3), to wit: (1) Respondent’s domain name is identical
or confusingly similar to the University’s GVSU trademark; (2) Respondent
has
no legitimate interests with respect to the domain name; and (3) Respondent
registered and re-registered the domain name in bad
faith and hence the relief sought by
Complainant should be granted.
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.
Complainant
implies that it has common law rights in the GVSU mark by stating that it has
used the mark exclusively and continuously
since 1987 in association with its
university, its products, its services and its housing. See Tuxedos by
Rose v. Nunez, FA 95248 (Nat. Arb.
Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established);
see also Fishtech v. Rossiter, FA
92976 (Nat. Arb. Forum Mar. 10, 2000)
(finding that Complainant has common law rights in the mark FISHTECH which it
has used since 1982).
Also,
Complainant asserts that it holds rights to the GVSU mark because it registered
the mark with the U.S. Patent and Trademark
Office (“USPTO”) on December 30,
2003 (Reg. No. 2,800,256, filed on June 21, 2002). 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.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
Complainant
argues that the <gvsuhousing.com> domain name is confusingly similar to
its GVSU mark because the domain name fully incorporates the mark and merely
adds the generic
term “housing.” 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 Complainant
combined with a generic word or
term); see also Sony Kabushiki
Kaisha v. Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the addition
of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the
overall impression of the dominant part of the name in each case, namely the
trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied.).
The
Panel has found that the addition of the generic top-level domain “.com” is
irrelevant in determining whether the <gvsuhousing.com> domain name is confusingly similar to
Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant); see also
Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the
top level of the domain name such as “.net” or “.com” does not affect the
domain
name for the purpose of determining whether it is identical or
confusingly similar).
The Panel finds that Respondent used the
subject domain name to become commonly known by the name GVSU Housing by
piggybacking on
Complainant’s well known reputation and therefore only in such
manner became commonly known as GVSU Housing.
Therefore, Respondent’s claim of being commonly known by the <gvsuhousing.com> domain name is not well founded.
Respondent has not “clean hands.”
The Panel thus concludes that Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(c) (ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed
domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); 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).
The Panel agrees with Complainant’s argument
that Respondent’s <gvsuhousing.com> domain name
takes advantage of the goodwill associated with Complainant’s mark and
therefore the use of the domain name 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). The Panel finds that Respondent lacks rights
and legitimate interests in the domain name because the domain name resolves to
a commercial
website and takes advantage of the goodwill associated with
Complainant’s mark. See MSNBC Cable, LLC v. Tysys.com, D2000-1204
(WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous
MSNBC mark where Respondent attempted to
profit using Complainant’s mark by
redirecting Internet traffic to its own website); see also Black &
Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s
use of the disputed domain name to redirect Internet users to commercial
websites,
unrelated to Complainant and presumably with the purpose of earning a
commission or pay-per-click referral fee did not evidence rights
or legitimate
interests in the domain name).
The
Panelist concurs with Complainant’s assertion that Respondent had actual
knowledge of Complainant’s mark because Respondent worked
as a contractor for
Complainant, doing repairs and maintenance work in some of Complainant’s
apartment housing prior to registering
the domain name. Thus, Complainant argues that Respondent
registered the domain name in bad faith because Respondent knew of
Complainant’s rights in
the mark. 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 Pfizer,
Inc. v. 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”).
The Panelist agrees.
Also,
Complainant argues that Respondent registered and used the <gvsuhousing.com> domain
name in bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
resolves to a website that displays Complainant’s trademark
and advertises
Respondent’s apartments to Complainant’s students. See H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the
disputed domain name was registered and used in bad faith pursuant to Policy ¶
4(b) (iv) through
Respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet users to its fraudulent
website by using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb.
Forum Nov. 21, 2002) (finding that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website).
Complainant
is engaged in the student housing business.
The Panel clearly and unequivocally finds that Respondent’s domain name
competes with Complainant’s business, and hence concludes
that Respondent
registered and used the <gvsuhousing.com> domain name in bad
faith pursuant to 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 Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding
that Respondent has diverted business from Complainant to a competitor’s
website in violation
of Policy ¶ 4(b) (iii)).
In
its Additional Submission, Complainant argues that Respondent registered the
domain name in bad faith because Respondent renewed
the domain name
registration after receiving notification of Complainant’s rights in the GVSU
mark. See
Houlberg Dev. v. Adnet Int’l, FA
95698 (Nat. Arb. Forum Oct. 27, 2000)
(holding that as Respondent had actual knowledge of Complainant’s asserted
rights in "Retail Engine"
as a trademark before it renewed the domain
name, the domain name was renewed in violation of ICANN Policy ¶ 2(b)” and hence in bad faith). The Panelist finds in this regard that any
legitimate claim Respondent could have had to the use of the subject name,
claiming that
its customers knew it by that name, was lost when Respondent
re-registered the domain name, knowing then or should have known then
that it
was trading on Complainant’s good name and reputation in the community. The Panelist questions Respondent’s motive
in the first place when so choosing the use of a domain name which clearly
capitalized
on the reputation of Grand Valley State University.
DECISION
Complainant, having established all three elements required under the
ICANN Policy, the Panel concludes that Complainant’s sought
relief shall be GRANTED.
Accordingly, it is Ordered that the <gvsuhousing.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Barry Schreiber Panelist
Dated: June 14, 2004
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