Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Board of Trustees of The Leland Stanford Junior Uiv. , Stanford, CA, USA ("Complainant"). The Respondent is Thomas Manski, Lombard, IL, USA ("Respondent").

The domain name at issue is "stanforduniversity.com", registered with Network Solutions.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Henry W. Blizzard Jr Retired Circuit Judge.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 31, 2000; The Forum received a hard copy of the Complaint on September 5, 2000.

On September 6, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "stanforduniversity.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 11, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 2, 2000 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@stanforduniversity.com by e-mail.

On October 5, 2000 pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Henry W. Blizzard Jr as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant contends that it is a world renowned private university founded over 100 years ago and well known for its academic, research and associated programs for training, conferences, information technology and athletics. Complainant owns several Federal trademarks and service marks Registrations, including "Stanford","Stanford Graphics", "Leland Sanford Junior University Organized 1891","Sanford University Medical Center" Complainant also contends that it has common law rights to the "Stanford " mark by extensive use, identifying services and goods in interstate commerce provided by the university. Complainant also owns and uses several other domain names that use the name "Stanford". Complainant contends that the domain name in question is confusingly similar to its trademarks and service marks that it owns; that the domain name in question uses the identical word "Stanford" and when used in combination with the word "University" will confuse the public into believing that a web site was that of Complainant. Complainant alleges that Respondent has no rights or interest in the domain name in question and that the Respondent has not been licensed or authorized to use its marks in any manner. Complainant alleges that Respondent registered the domain name in question in bad faith; that the registration was done to prevent Complainant from reflecting the mark in a corresponding domain name; and that by refusing to respond to communications sent to him complaining about using the domain name and by refusing to transfer it, Respondent engaged in a pattern of such conduct.

B. Respondent

Respondent is a licensed physician and surgeon, licensed in California. He contends that he and certain colleagues plan to practice in Palo Alto, California with privileges at Stanford University Medical Center. He alleges a common law right to the name "StanfordUniversity.com" by registering and owning the domain name and that Complainant does not have any trademark rights to "Stanford University or "Stanford University.COM" Respondent alleges that he registered the domain name in good faith and that he has not used it as a web site. Respondent alleges that complainant has yet to establish operating web sites at "Stanforduniversity.net" or "stanforduniversity.org" in arguing that complainant, not Respondent is acting in bad faith.

The domain name in question is confusingly similar to the Registered Marks owned by the Complainant in that the domain name uses the term "Stanford", which is identical to the term in Complainant’s marks. Both are spelled in the same way and when used in conjunction with the word "university" confuses the public into believing a web site was being operated by the Complainant, which of course would not be true, see Microsoft Corp.v Amit Mehrotra, D2000-0053(WIPO Feb.23, 2000).

The Respondent has no rights or legitimate interest in or to the domain name. Complainant has used the name "Stanford" for over 100 years and has Registered marks using this name. Respondent must do more than merely register the domain name too acquire common law rights see SAMPATTI.COM LTD v CHETAN, AF-0249(Resolution July 31,2000).

The allegation that the Respondent registered the domain name in bad faith is not supported by the evidence. Although it is true that Respondents registration of the domain name in question prevents the Complainant from registering and using the domain name, there is no showing that the Respondent has engaged in a pattern of such conduct because it is not shown that the Respondent has registered other domain names. In the absence of a showing of bad faith, the relief requested is due to be denied under ICANN Policy,since a showing of bad faith is one of the essential elements that must be shown for the Complainant to prevail.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled 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.

The domain name in question uses the term "Stanford" which is the identical to the words as used in the marks owned by the Complainant. The spelling is the same and when used with the word "university", suggest to a third party that material was being present or issued by the Complainant, when in fact this would not be true. Confusion would result to the public mind over such a web site. There is nothing to distinguish the use of the word "Stanford" and it is therefore identical.. See Wal-Mart Stores Inc. v Walmart Canada,D2000-0032 (WIPO Feb.23, 2000)

Complainant has established an interest in the name "Stanford" both through registration and common law usage. The Respondents activities do not establish any right in him or any legitimate interest in the name. The registration of the domain name and the plans to use it in a medical practice fail to establish or show any legitimate interest in the name on his part.

Registration in Bad Faith may be established under ICANN Policy 4(b)(ii) by evidence circumstances which indicate that the domain name was registered in order to prevent the owner of a trademark or service mark from reflecting it in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct. However, the term "a pattern of conduct" means having registered more than one domain name or multiple registration of domain names. Here, there is no evidence that Respondent has registered any other domain names. Therefore, a finding of bad faith under ICANN Policy 4 (b)(ii) can not be made. The contention that Respondent failed to transfer the domain name and ignored the Complaint’s correspondence is not evidence of a pattern of conduct. See American Online,Inc. v iDomain Names.Co, FA 93766 (Nat. Arb. Forum).

Based upon the findings and discussion and pursuant to Rule 4 (a) of the ICANN Uniform Domain Name Dispute Policy, it is decided as follows:

The Complainant having failed to establish bad faith on the part of the Respondent, an essential element of proof, the relief requested by Complainant is denied.

Henry W. Blizzard Jr., Retired Circuit Judge. Arbitrator

Dated October 9,2000