Generic Top Level Domain Name (gTLD) Decisions

Leland Stanford Junior University, Stanford, CA, USA
COMPLAINANT,

vs.

Zedlar Transcription & Translation, Burbank, CA, USA
RESPONDENT.

DECISION
Claim Number: FA0006000094970

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is “STANFORDCARDINAL.COM”, registered with Network Solutions Inc (“NSI”).

PANELIST(s)

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on June 6, 2000; The Forum received a hard copy of the Complaint on June 5, 2000. 

On June 9, 2000, NSI confirmed by e-mail to The Forum that the domain name “STANFORDCARDINAL.COM” is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP. 

On June 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 5, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On July 5, 2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On July 7, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is confusingly similar to its trademark registered for and in use by the Complainant.  Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name and is using the domain name in bad faith.

B. Respondent

The Respondent failed to submit a response in this matter and, accordingly, all reasonable inferences of fact in the Complaint will be deemed to be true.

FINDINGS

The Complainant is a private university founded over 100 years ago.  The Complainant owns several U.S. trademarks associated with its famous name and educational services: STANFORD (registered December 28, 1982; No. 1,221,613), STANFORD GRAPHICS (registered May 5, 1996; No. 1,960,571), LELAND STANFORD JUNIOR UNIVERSITY ORGANIZED 1891 (registered December 14, 1982, No. 1,219,912), STANFORD UNIVERSITY MEDICAL CENTER (registered July 7, 1992; No. 1,699,544), and STANFORD (in connection with medical services (registered January 13, 1998; No. 2,194,918).

The Stanford Cardinal is the name of the Complainant’s sports teams. 

The Respondent registered the domain name “STANFORDCARDINAL.COM” on October 17, 1998.  The Respondent has also registered <stanfordbasketball.com>.  The Complainant neither authorized nor licensed the Respondent to use any STANFORD mark or name for any purposes.

Prior to filing this complaint, the Complainant negotiated with the Respondent in attempt to attain a transfer of the domain names.  The Respondent agreed to allow the domain names to expire; however, the Respondent misrepresented his intentions, as shown by the fact that the domain name <stanfordbasketball.com> has been recently transferred to a third party.

DISCUSSION

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 support a claim 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 Complainant has both common law and statutory rights in the STANFORD marks.  The domain name in question is confusingly similar to the Complainant’s marks.  Policy ¶ 4(a)(i).  See Marriott Int’l v. Café au lait, FA 93670 (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s mark).  The Respondent’s domain name is likely to confuse the public as to the official location of the Complainant’s site.  In addition, the Respondent’s site creates confusion as to the affiliation and endorsement of the Respondent’s site.

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name in question.  The Respondent does not assert any rights or legitimate interests to the domain name in question.  Despite inclusion of responsive correspondence from Respondent to Complainant, outside of this proceeding,  there remains no indication of the slightest commercial use by Respondent of the domain name in question for the 2 ˝ years since its registration.  See Mondich and Amer. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that failure to develop a site in a two year period raises the inference that the respondent has no bona fide intent to use the name).  The Respondent has not used the domain name in connection with any bona fide offering of goods or services and has not used the name in a legitimate noncommercial or fair manner.  Policy ¶ 4(c)(i), (iii).

The Respondent is also not commonly known by the Complainant’s well-known marks.  Policy ¶ 4(c)(ii).  The Complainant’s marks have been used for over a century in connection with the Complainant’s educational and research facility.

For the above reasons, the panel finds that the Respondent has no rights or legitimate interests in the domain name in question.

Registration and Use in Bad Faith

The Complainant asserts that the Respondent acted and is acting in bad faith.  The Respondent does not deny that its actions were taken in bad faith, having failed to Respond as required by the Rules.

The Respondent has made no use of the domain name in question.  This is evidence of bad faith.  See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that passive holding of a domain name is evidence of bad faith).

The Respondent has registered many domain names with intent to benefit from other parties’ famous marks.  The Respondent knew or should have known of the Complainant’s rights in the marks in question.  Rather, the Respondent registered the domain name to create confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Complainant’s authentic website and educational services.  Policy ¶ 4(b)(iv). 

It is the panel’s view that the Respondent registered and used the domain name in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted. 

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, “STANFORDCARDINAL.COM” be transferred from the Respondent to the Complainant.

James A. Carmody, Judge (Ret.)
Dated: July 11, 2000