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President and Fellows of Harvard College v. Nikolay [2005] GENDND 781 (16 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

President and Fellows of Harvard College v. Nikolay

Case No. D2005-0120

1. The Parties

The Complainant is President and Fellows of Harvard College, a charitable corporation organized and existing under the laws of the Commonwealth of Massachusetts, Cambridge, Massachusetts, United States of America, represented by Brinks, Hofer, Gilson & Lione, United States of America.

The Respondent is Nikolay, Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed Domain Name <harvardgirlschool.com> is registered with Direct Information PVT. Ltd. d/b/a Directi.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2005 (via e-mail). On February 10, 2005, the submitted Complaint was received in hard copy by the Center. On February 3, 2005, the Center sent the Complainant an Acknowledgment of Receipt of Complaint. On February 3, 2005, the Center transmitted by email to Direct Information PVT. Ltd. d/b/a Directi.com a Request for Registrar Verification in connection with the Domain Name at issue. On February 4, 2005, Direct Information PVT. Ltd. d/b/a Directi.com, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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”).

On February 14, 2005, and 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 February 14, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2005.

The Center appointed Guillermo Carey as the sole panelist in this matter on April 20, 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 President and Fellows of Harvard College, a charitable corporation organized and existing under the laws of the Commonwealth of Massachusetts. Established in 1636. Complainant is the oldest institution of higher learning in the United States, and enjoys a world class reputation throughout the United States and the world as a preeminent learning institution (Complainant, Annex 4).

In accordance with information provided in the Complaint and as verified by this Panel directly from the Who Is database, the Respondent is Nikolay, who registered the Domain Name <harvardgirlschool.com> on August 13, 2004 (Complainant, Annex 1). He has neither connection nor association with the Complainant, nor has he been licensed or otherwise authorized to use the name or trademark of the Complainant or to register any Domain Name incorporating the HARVARD mark (Complainant, Annex 7 and 8).

Complainant has used the HARVARD mark and marks incorporating the HARVARD mark in interstate commerce in the United States in connection with the promotion and sale of various services including the providing of educational and related services, since at least as early as 1638, and in connection with the promotion and sale of various goods, since at least as early as 1827, thus situating the HARVARD mark among the world’s most famous and well known. Therefore, the HARVARD mark has generated substantial goodwill and has come to be associated by members of the relevant consuming public with services and products of only the highest quality by Complainant, therefore becoming an asset of incalculable value (Complainant, Annex 4).

The Complainant has provided evidence of the registration of the following marks, in accordance with the certificates issued by the U.S. Patent and Trademark Office, plus numerous registrations for the HARVARD mark and marks incorporating the HARVARD mark throughout the world (Complaint, Annex 5):

MARK	Reg. No.	Reg. Date	First Use Date	Class
HARVARD	1,608,533	Jul. 31, 1990	1827	41
HARVARD	1,624,908	Nov. 27, 1990	Jun. 30 1982 and Jun. 1980	21 & 25
HARVARD	1,842,914	Jul. 5, 1994	1827	16
HARVARD	2,002,662	Sept. 24, 1996	May 31, 1962	14
HARVARD	2,042,969	Mar. 11, 1997	Jun. 20, 1984	18
HARVARD	2,119,339	Dec. 9, 1997	Dec. 31, 1953	25
HARVARD BUSINESS SCHOLL (and Design)	2,323,056	Feb. 29, 2000	1936	35
THE INTERACTIVE MANAGER SERIES HARVARD BUSINESS SCHOOL PUBLISIHING (and Design)	2,474,978	Aug. 7, 2001	Dec. 13, 1996	9
HARVARD SCHOOL OF DENTAL MEDICINE	2,498,197	Oct. 16, 2001	1941	41
HARVARD EXTENSION SCHOOL	2,498,199	Oct. 16, 2001	1985	41
HARVARD MEDICAL SCHOOL	2,498,200	Oct. 16, 2001	1782	41
HARVARD GRADUATE SCHOOL OF EDUCATION	2,498,201	Oct. 16, 2001	1990	41
HARVARD LAW SCHOOL	2,498,202	Oct. 16, 2001	1907	41
HARVARD DIVINITY SCHOOL	2,498,204	Oct. 16, 2001	1816	41
HARVARD MEDICAL SCHOOL	2,512,410	Nov. 27, 2001	1959	42
HARVARD SCHOOL OF PUBLIC HEALTH	2,514,939	Dec. 4, 2001	1922	41
HARVARD BUSINESS SCHOOL	2,514,956	Dec. 4, 2001	1951	41
HBS INTERACTIVE HARVARD BUSINESS SCHOOL INTERACTIVE	2,578,177	Jun. 11, 2002	Jan. 24, 2001	41
HARVARD BUSINESS SCHOOL PUBLISHING	2,617,582	Sep.10, 2002	1996	41
HARVARD BUSINESS SCHOOL PRESS	2,624,199	Sep.24, 2004	Jun. 1984	41

On October 22, 2004 and on November 3, 2004, the Complainant sent by e-mail a letter to the Respondent, informing him of the Complainant’s exclusive rights on the HARVARD trademark and requesting the Respondent to immediately transfer the registration of the Domain Name <harvardgirlschool.com> to Harvard. The Respondent issued no reply to these letters (Complainant Annex, 7 and 8).

The Domain Name is linked to a website displaying pornographic pictures and videos, causing rotating banners to appear and generating hyperlinks to other pornographic websites of the same caliber.

5. Parties’ Contentions

A. Complainant

The Complainant submits that Complainant has consistently and prominently displayed the HARVARD mark in connection with the advertising, promotion and sale of its goods and services, generating substantial goodwill and becoming an asset of incalculable value to the Complainant.

In accordance to the registration certificates for the HARVARD mark and marks incorporating the HARVARD mark for the various goods and services, registered on the Principal Register of the United States Patent Trademark Office, and pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065, Complainant’s right to use the marks in these registrations has become incontestable.

Complainant argues that Respondent registered the Domain Name and uses it to link various pornographic websites with numerous explicit photographs depicting men and women engaged in lewd sexual acts.

Furthermore, on October 22, 2004, Complainant sent a demand letter to Respondent requesting that he transfer the Domain Name to Complainant. Complainant also sent a cease and desist letter to Respondent on November 3, 2004. None of these letters were responded to by Respondent.

Complainant argues that the dominant portion of the Domain Name (HARVARD) is confusingly similar to the marks to which the Complainant holds exclusive trademarks rights, being identical in terms of appearance, sound and impression. The Complainant further argues that the descriptive/generic term “girlschool”, included in the Domain Name, have little or no trademark significance, and, therefore, do not function to distinguish one mark from another.

Complainant further states that Respondent has no rights or legitimate interests in the Domain Name, arguing that he does not own any trademark registration for any mark comprising, in whole or in part, the HARVARD mark, nor has Complainant ever licensed or otherwise authorized Respondent to use the HARVARD mark, or has Respondent ever been commonly known by the Domain Name or any other name remotely similar to the Domain Name. Therefore Respondent is using the HARVARD mark to draw Internet users to its websites rendering profit from the sale of pornographic services, which does not constitute a legitimate non-commercial fair use of the HARVARD mark.

Finally, Complainant alleges that Respondent registered and used the Domain Name in bad faith, which is proved by Respondent’s failure to respond Complainant’s demand letter, his use of the Domain Name in connection to pornographic websites and Respondent’s intent to derive commercial gain by including the HARVARD mark in the Domain Name, diverting Internet traffic to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.

As per the above, Complainant requests that this Panel issues a decision that the Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Complainant must prove each of the following:

(i) that the Domain Name registered by the respondent is identical or confusingly similar to a trademark in which the complainant has rights; and

(ii) that the respondent has no legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided plain and undisputed evidence indicating its ownership of the HARVARD trademark rights in the U.S.A, declaring as well the ownership of this trademark worldwide. HARVARD was registered by the Complainant, on 1990, in the United States, being the first use of the trademark dated as early as 1782, as provided by certificates issued by the U.S. Patent and Trademark Office.

Given that the disputed Domain Name is nearly identical to the Complainants registered trademarks and wholly integrates the Complainant’s registered HARVARD mark, the confusion between the Respondent’s Domain Name and the Complainant’s rights to the HARVARD trademark is obvious and irrefutable.

Furthermore, the prefix www, which is the common abbreviation of World Wide Web, and the addition of the generic term “girlschool” to the HARVARD trademark, does not modify, by any means, the belief of this Panel that persons coming across the Respondents’s website may very well conclude that it is owned by or associated with the Complainant as the owner of the famous worldwide HARVARD trademark. See, for example, the Administrative Panel Decision in Nokia Corp. v. Nokiagirls.com aka IBCC, WIPO Case No. D2000-0102 (“The Domain Name consequently consists of the trademark of the Complainant to which the general noun “girls” is added. The ability of this word “girls” to distinguish the Domain Name from the trademark of the Complainant is limited. As a general noun, “girls” is indeed a rather neutral addition to this trademark.”)

This Panel has no hesitation in finding that the disputed Domain Name is essentially identical and confusingly similar with the Complainant’s registered trademark. Consequently, the Complainant has satisfied the requirements under Paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant is the owner of a distinctive and famous mark HARVARD, with market leading operations in education services among other services and goods worldwide.

There is no evidence which shows that the Respondent has any rights or legitimate interests regarding the Domain Name <harvardgirlschool.com>, nor any evidence that indicates that the Respondent is commonly known by the Domain Name. Furthermore, it is clear to this Panel that Respondent is not associated with Complainant, nor has Complainant licensed or otherwise authorized Respondent to incorporate its registered trademark into the Domain Name.

The failure of Respondent to respond the demand letter and the cease and desist letter issued by Complainant, together with the absence of response to Complainants contentions, brings forth the burden of proof upon Respondent, resulting that there is no evidence indicating Respondent’s rights or legitimate interests over any mark consisting of the term “harvard” in any country.

There is undisputed evidence of the acknowledgement of the Respondent of the Complainant’s trademark rights (a demand letter was sent to the Respondent regarding its infringement upon the Complainant’s rights on October 22, 2004, and a cease and desist letter was submitted on November 3, 2004. Complaint, Annex 7 and 8). Further, the Respondent issued no response to these letters, evidencing no legitimate interests or rights to use the HARVARD mark included in the Domain Name.

Therefore, the Complainant satisfies the requirements of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s rights in the trademark HARVARD are prior to the Respondent’s registration of the disputed Domain Name.

Given the worldwide reputation, presence and distinctiveness of the Complainant’s trademark, the Respondent was most certaintly aware of the mark prior to registering the disputed Domain Name.

The disputed Domain Name points to the Respondent’s website, which links to a number of pornographic sites offering pornography and other unsavory commercial advertisements.

The Respondent’s registration and use of a Domain Name incorporating the Complainant’s famous mark to link to other unrelated sites indicates the deliberate attempt to capture persons to believe those sites are in some way associated with the Complainant. The inappropriate nature of Respondent’s website links indicate the likely intent of the Respondent to tarnish Complainant’s reputation and world famous marks.

Evidence was provided (Complaint, Annex 7 and 8) indicating that the Complainant notified the Respondent on October 22, 2004, and on November 3, 2004, of the infringement in which he had incurred by registering the disputed Domain Name. The Respondent issued no response to these letters, although in knowledge of its infringement.

Therefore, this Panel finds that the Respondent has registered and used the Domain Name in bad faith, and the Complainant has satisfied the third requirement under Paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <harvardgirlschool.com>, be transferred to the Complainant.

Guillermo Carey
Sole Panelist

Dated: May 16, 2005