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University of Washington Bothell v. Jumpline 2000 [2005] GENDND 1764 (25 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

University of Washington Bothell v. Jumpline 2000

Case No. D2005-0908

1. The Parties

The Complainant is University of Washington Bothell, Bothell, Washington, United States of America, represented by Clark C. Shores, United States of America.

The Respondent is Jumpline 2000, Grove City, Ohio, United States of America, represented by Michele Tofflemire, Issaquah, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <uwbalum.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2005. On August 25, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. Also on August 25, 2005, Tucows transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient in naming the correct Respondent, the Complainant filed an amendment to the Complaint on September 2, 2005. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on September 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 29, 2005. The Response was filed with the Center on September 29, 2005.

The Center appointed Dennis A. Foster as the sole panelist in this matter on October 11, 2005. 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.

4. Factual Background

The Complainant is the University of Washington at Bothell, a young branch of the University of Washington that was founded around 1994. The Complainant University contains a business school of which the Respondent is a ‘96 alumna. ¹

In early 2003, the Complainant and the Respondent began collaborating to plan and hold a reunion for the Complainant’s business school alumni. The main reunion event was held on April 24, 2004, and with more than 300 attendees exceeded all expectations. Everyone, even the Complainant’s own officials, agree that the reunion’s success was in substantial part due to the Respondent’s talent and efforts in organizing the reunion and in convincing an unexpectedly large number of the Complainant’s business school alumni to attend.

The Respondent used the disputed domain name, <uwbalum.com>, to help organize and coordinate the reunion. A few months after the reunion, the Complainant began asking the Respondent to transfer the disputed domain name to the Complainant. In February, 2005, in response to the Complainant’s request that the Respondent quote a price, the Respondent agreed to transfer the disputed domain name in exchange for US$5,000 worth of scholarships for the Complainant’s business school students.

The Respondent also says she wants to use the disputed domain name to keep the Complainant’s business school alumni in touch with each other.

The Complainant owns a registered trademark for UW and design, no. 2041079 dated February 25, 1997 on the United States Principal Register in International Classes 016, 025 and 041 for education services and items such as T-shirts. The Complainant also owns a Principal Register trademark for UW ALUMNI and design, no. 2327562 dated March 14, 2000, in International Classes 042 and 035 for promoting alumni services and for product endorsement. The Complainant also has provided some examples of its using the name UW at Bothell to sell such common college campus items as tote bags and decorative magnets (Complaint Annexes 11a-c).

The Respondent registered the disputed domain name, <uwbalum.com>, on May 22, 2003.

5. Parties’ Contentions

A. The Complainant

- The Complainant University has been using the UW trademark in commerce since 1930 and has two active trademark registrations dated June 25, 1996 and February 25, 1997 (Complaint Annexes 8a and 8b).

- The Complainant has continuously used the UW trademark in relation to the University’s three campuses in Bothell, Seattle, and Tacoma in connection with numerous goods and services, including, but not limited to, educational services and materials, research, athletic events, and clothing.

- The Complainant has been using UW ALUMNI as a trademark since January 1996 and registered UW ALUMNI as a trademark on June 30, 1997.

- In a further effort to promote the interests of its alumni and students, the Complainant has since 1995 continuously maintained and operated an UW Alumni Association website under “www.washington.edu/alumni”.

- The Complainant has established common law trademark rights to UW BOTHELL.

- In addition to the trademarks UW, UW ALUMNI, and UW BOTHELL, the Complainant also owns rights in the abbreviation UWB. Since approximately 1995, the Complainant has continuously been using the abbreviation UWB of the trademark UW BOTHELL as a trade name for the UW Bothell campus, and on October 12, 2001, the Complainant registered the domain name <uwb.edu>.

- The Respondent has created a misleading implication that the Complainant has sponsored or endorsed or is affiliated with the disputed domain name website, thereby causing a likelihood of confusion.

- The elimination of the spaces between the words in the trademark UW ALUMNI and the addition of the “.com” top-level domain do not create distinctions relevant for the purposes of Policy, paragraph 4(a)(i).

- The addition of the single letter “b” to the trademark UW ALUMNI only creates an insubstantial difference in the appearance of words and so does not distinguish the domain name from the trademark.

- The disputed domain name <uwbalum.com> incorporates the abbreviation UWB of the Complainant’s trademark UW BOTHELL.

- This false impression is exacerbated by the fact that the University in 2002 established the UW Bothell Alumni Association, which has an associated website at “www.uwb.edu/alumni”.

- The use of “alum” does not sufficiently render <uwbalum.com> dissimilar from UW BOTHELL or UW. The generic term “alum”, a shortening of “alumni”, directly relates to the Complainant’s educational services, the Complainant’s Alumni Association, and to the Complainant’s trademarks UW ALUMNI and UW.

- The Respondent is not a licensee of the Complainant’s trademarks or in any way authorized by the Complainant to use the marks for the Respondent’s own purposes.

- Because the Respondent led the Complainant to believe that the domain name registration was made on the Complainant’s behalf, the Complainant reimbursed her for the costs involved.

- The Respondent has not used or made preparations to use the domain name in connection with a bona fide offering of goods or services. The Respondent operates a marketing services firm and also does not conduct a business providing services or goods to UWB alumni.

- The Respondent is not known as “uwbalum”.

- In addition, the Respondent did not make any legitimate noncommercial or fair use of the domain name, apart from the use on the Complainant’s behalf in connection with the alumni reunion.

- The Complainant’s trademarks, UW and UW ALUMNI, are well-known within the State of Washington, and its trade name and abbreviation, UWB, is also widely known. As an alumna of the University of Washington, Bothell Business Program, when the Respondent registered <uwbalum.com>, she must have been aware of the UW, UW ALUMNI, and UW BOTHELL trademarks and the abbreviation UWB as a trade name.

- Registration of an infringing domain name despite such actual knowledge of the Complainant’s rights is evidence of bad faith registration pursuant to the Policy at paragraph 4(a)(iii).

- The Respondent led the Complainant to believe that she registered the disputed domain name on the Complainant’s behalf as a member of the Volunteer Committee for its one-time use as an RSVP service for the 2004 reunion. Trusting her, the Complainant reimbursed her for the cost of the unauthorized domain name registration. It was not until several months after the reunion, when the Complainant discovered that the website was still active and contacted the Respondent, that she informed the Complainant of her intention to keep the domain name for her own purposes.

- The Respondent offered to transfer the domain name to the Complainant in exchange for the Complainant paying a total of US$5,000 to two UW Bothell alumni-related funds of the Respondent’s choosing. An offer to sell a registered domain name is evidence of bad faith registration and use pursuant to Policy paragraph 4(a)(iii).

- Even if the Panel were to find that the Respondent’s initial primary purpose for registering the <uwbalum.com> domain name was not to sell, rent, or otherwise transfer the domain name to the Complainant, she should still be considered to have made a bad faith offer to sell when she refused to transfer the domain name unless the Complainant donated a total of US$5,000 to funds of the Respondent’s choosing.

- The Respondent’s transfer in response to the Complainant’s last effort to resolve this dispute, and her attempt to conceal her identity through Jumpline 2000, indicate bad faith.

B. The Respondent

- The Complainant University of Washington owns several of these trademarks but it does not own a registered trademark for UW BOTHELL.

- The Complainant does not own the abbreviation UWB.

- The Complainant has always been aware of the Respondent’s ownership of the domain name <uwbalum.com> and has always known the Respondent’s intentions for its use. Prior to receiving this Complaint, the Complainant University had never declared the domain name <uwbalum.com> to be identical or confusingly similar to any of its trademarks. On the contrary, it found no intellectual property infringement (Response Annex 3).

- The Complainant has been making a concerted effort to remove the use of UWB from its official language and is avoiding it being recognized or represented as an abbreviation for UW Bothell which contradicts the purpose of this claim against the Respondent (Response Annex 4).

- The domain name <uwbalum.com> is not a trivial and indistinct variation of the Complainant’s trademarks UW ALUMNI, UW BOTHELL, and UW. The domain name <uwbalum.com> was created for the purpose of being distinctive, descriptive, and representative of the domain name holder. Only by using the combined letters can this distinction be made. The Complainant and its representatives recognize (Response Annex 5), value, and promote this distinction, albeit selectively (Response Annex 6).

- The disputed domain name <uwbalum.com> was created for the purpose of connecting UWB alumni. The website is a standing example of the bona fide service provided to the Complainant. A message from the Business Program Director promotes the event’s success (Response Annex 9).

- As it currently stands, the website is an example of volunteer efforts and abilities. It is also an example of a past event, similar to other past events posted in recognition of efforts put forward. Plans for its use as a non-commercial networking vehicle have been put on hold to respond to the ongoing nature of the Complainant’s dispute.

- The Complainant was aware that the Respondent registered the disputed domain name <uwbalum.com> and of its intentions to use it in support of UWB alumni (Response Annexes 14, 15, 16 and 17). The Complainant was also aware of the Respondent using the disputed domain name to promote UW Bothell’s 10^th anniversary celebration which began in December, 2004.

- The domain name <uwbalum.com> has not disrupted Internet users from reaching the Complainant’s website “www.uwb.edu/alumni” dedicated to the UW Bothell Alumni Association.

- Prior to this meeting, the last communication the Respondent received from the Complainant University regarding the domain name <uwbalum.com> stated it did not have a legal claim to the domain name (Response Annex 1).

- However, had the Respondent known the Complainant was renewing its trademark infringement claim against the domain name, the Respondent would never have provided its response to sell the disputed domain name. The Respondent believes the Complainant acted in bad faith when it made additional attempts to contact the Respondent without stating any trademark infringement claims it had against the disputed domain name.

- Any changes made with respect to the domain name <uwbalum.com> were made to Administrative and Technical Contact information, thus preventing continued harassment from the Complainant’s representatives.

- The Respondent told the Complainant when it first began this dispute in December, 2004, that it would not touch the website until the dispute was resolved.

6. Discussion and Findings

In order for the Complainant to prevail and win transfer of the disputed domain name, the Policy provides at paragraphs 4(a)(i)-(iii) that the Complainant must show:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in the domain name; and

- the domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided copies of a few of its trademark registrations. These include UW (abbreviation for the University of Washington), United States Principal Trademark Register no. 2041079 dated February 25, 1997, in International Classes 016, 025 and 041 for paper products and T-shirts inter alia.

There is also the trademark UW ALUMNI, United States Principal Trademark Register no. 2327562 dated March 14, 2000, in International Classes 042 and 035 for services and products for alumni (Complaint Annexes 8b and 9).

In addition, the Complainant has provided examples of its use of the name UW Bothell to sell such common university campus items as tote bags, paper weights and decorative magnets (Complaint Annexes 11a, b and c).

The Complainant admits that it does not have a registered trademark for UWB. In fact, as the Respondent has shown (Response Annex 4), at times in the recent past the Complainant’s official policy has been to encourage the Complainant’s University staff to use the name UW Bothell, and not UWB. The Complainant repeatedly states that it has rights in the trade name UWB while the Policy only protects trade and service marks.

Nonetheless, the Panel believes it is common practice in the United States of America for the students and the public to search for short, abbreviated handles for college names. These then become a widely accepted way of referring to the institution that provides education services. In the present case, the Panel notes that many of the Complainant’s officials and alumni refer to UWB and to UWB Alumni (Response Annexes 3, 4,5, 6, 10, 11 and 12). Also, the Panel believes it is significant that the Respondent used the abbreviation UWB when she worked for one year on the highly successful April 24, 2004, reunion. It seems clear, and probably was predictable, that alumni, students and the local population primarily choose to refer to the Complainant as UWB rather than the University of Washington at Bothell, or even, as the Complainant prefers, UW Bothell. The Panel finds the Complainant does have common law service mark rights in the name UWB.

The disputed domain name, <uwbalum.com>, is composed of the Complainant’s UWB service mark plus the abbreviation “alum”, which is readily recognized by the relevant public as referring to the Complainant’s alumni. The word “alum” is, then, a logical, descriptive add-on that can not cure confusing similarity. (See Aventis Pharmaceuticals Inc., Aventis Pharma SA v. Goldie Fishero, WIPO Case No. D2004-0094, March 16, 2004, where “cheap” and “on-line” were found to be logical, descriptive additions when paired with well-known pharmaceuticals. See also The Professional Golfers’ Association of America (PGA) v. Provisions, LLC, WIPO Case No. D2004-0576, September 13, 2004, where adding a year, 2004, to a famous golf event also was a descriptive add-on.)

Therefore, the Panel finds that the disputed domain name, <uwbalum.com>, is confusingly similar to the Complainant’s common law service mark UWB, and that the Complainant has met its burden of proof under section 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant acknowledges it was aware that the Respondent registered the disputed domain name and was using it to organize the April 24, 2004, UWB alumni event. Some of the Complainant’s highest officials, including its chancellor, worked hand-in-hand with the Respondent to organize the alumni reunion. The Respondent used the disputed domain name to communicate with both the Complainant’s officials and UWB alumni. The Complainant even reimbursed the Respondent $35 for expenses associated with the disputed domain name.

However, it has now been almost a year and a half since the April 24, 2004, alumni reunion. Since that time, as the Complainant and the Respondent both agree, the Complainant has withdrawn its permission for the Respondent to use the disputed domain name and has repeatedly sought to have it transferred to the Complainant.

Regardless of the Complainant’s wishes to the contrary, the Respondent contends that she is planning to use the disputed domain name to promote an alumni association for the Complainant’s business school alumni. The Respondent believes that, as a UWB business school alumna, she has the right to use the disputed domain name in this way.

The Panel can not readily see which of the paragraphs of 4(c)(i)-(iii) of the Policy the Respondent is attempting to fit into. The Panel rules out paragraph 4(c)(i) because the Respondent has not offered any service using the disputed domain name for over a year. Even then, paragraph 4(c)(i) still probably was not applicable because it does not appear the Respondent’s services were remunerated by the Complainant or by anyone else.

Paragraph 4(c)(ii) is easy to rule out because the Respondent may well be a UWB alumna, but so are hundreds of other individuals: the Respondent thus is not “commonly known” by the disputed domain name, <uwbalum.com>. In another UDRP case where the respondent had an MBA from Imperial College, London, UK, the panel still found that the respondent could not claim to be commonly known as Imperial MBA or to use the disputed domain name <imperialmba.com> (Imperial College of Science, Technology and Medicine v. Webweaver Media Construction and Zahid Khan (for Imperial College Management School Alumni Association-ICMSAA), WIPO Case No. D2000-1146, November 13, 2000). Also, the disputed domain name <stanford-alumni.net> was transferred to the complainant Stanford University regardless of whether the defaulting respondent might have been a Stanford alumnus in The Board of Trustees of the Leland Stanford Junior University v. Computer Product Information a/k/a Richard Leeds, National Arbitration Forum Case No. FA146571, March 28, 2003.

Finally, the Respondent may well have been using the disputed domain name in a fair use, non-commercial way as allowed by paragraph 4(c)(iii) of the Policy. But in any case, this particular use ended about a year and a half ago. The Respondent’s stated plans to use the disputed domain name for some future Complainant alumni association are too vague to be evaluated.

The Panel finds the Complainant has shown the Respondent no longer has a right to use the Complainant’s trademark prominently found in the disputed domain name. The Panel also finds the Respondent has not shown it has legitimate rights or interests in the disputed domain name as allowed under the Policy at paragraphs 4(c)(i)-(iii).

C. Registered and Used in Bad Faith

The Complainant contends the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(b)(i) of the Policy. As evidence, the Complainant has exhibited an email dated February 1, 2005, (Complaint Annex 4) in which the Respondent states she will transfer the disputed domain name to the Complainant if the Complainant will set up a total of US$5,000 worth of scholarships to the Complainant’s business school.

In the Panel’s view, the Complainant’s evidence on this point is unconvincing. For a year and a half after registration, the Respondent did not attempt to sell the disputed domain name to the Complainant or to anyone else. The Respondent’s offer to the Complainant dated February 1, 2005, was made only after prodding by the Complainant.

Similarly, it does not appear to the Panel that this is a case where the many cases on passive holding as proof of bad faith should be invoked and followed per the Complainant’s contentions. First, this is because a well-established trademark usually is required for bad faith to issue from passive holding, but here the Panel was only just able to find the Complainant has common law service mark rights in UWB. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 18, 2000, or Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464, July 27, 2000, cases involving trademarks of substantial renown - TELSTRA and TOSHIBA) Second, it is clear to the Panel that the Respondent did not register the disputed domain name in bad faith. On the contrary, the Respondent registered the disputed domain name in the context of a joint business school alumni reunion project with the Complainant.

From May, 2003, until some months after April, 2004, the Complainant was happy with how the Respondent was using the disputed domain name. The Complainant has now changed its mind and wants the disputed domain name transferred to it, but in the Panel’s view this can not be done based on passive holding as an indication of bad faith: the passive holding cases do not countenance a complainant and a respondent working together on a project with the complainant aware the respondent is registering the disputed domain name.

Similarly, the Panel sweeps away the Complainant’s contention that the Respondent’s changing the owner name for the disputed domain name registration was an indication of bad faith. The Panel is confident that at all times the Complainant was well aware that the Respondent and alter ego Michele Tofflemire owned the domain name and was at all times able to contact the Respondent, even when the Respondent started to use the services of the entity Jumpline 2000 to hold the disputed domain name. At all times relevant to this proceeding the Respondent has run a marketing firm (New Ventures Marketing) in a location close to and well-known to the Complainant and with contact information readily available to the Complainant.

The Panel finds the Complainant has failed to show the Respondent registered the disputed domain name in bad faith as required by paragraph 4(a)(iii) of the Policy.

Reverse Domain Name Hijacking

The Panel rejects the Respondent’s request for a finding of Reverse Domain Name Hijacking per paragraph 15(e) of the Rules. The Complainant showed the disputed domain name was confusingly similar to its UWB common law service mark. The Complainant also showed the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is just able to hold onto the disputed domain name because the Panel can see that, at least at the time the disputed domain name was registered, the Complainant and the Respondent were on good working terms.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dennis A. Foster
Sole Panelist

Date: October 25, 2005