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The Board of Trustees of the Leland Stanford Junior University v. Computer Product Information a/k/a Richard Leeds [2003] GENDND 308 (28 March 2003)


National Arbitration Forum

DECISION

The Board of Trustees of the Leland Stanford Junior University v. Computer Product Information a/k/a Richard Leeds

Claim Number:  FA0302000146571

PARTIES

Complainant is The Board of Trustees of the Leland Stanford Junior University, Stanford, CA (“Complainant”) represented by Laura C. Gustafson, of Pillsbury Winthrop, LLP. Respondent is Computer Product Introductions a/k/a Richard Leeds, Mercer Island, WA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <stanford-books.com>, <stanford-shop.com>, <stanfordustore.com>, <stanfordevents.com>, <stanford-sports.com>,

<stanford-talk.com>, <stanfordforum.com>,<stanford-mail.com> and

<stanford-alumni.net>, registered with Bulkregister.Com, Inc.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 20, 2003; the Forum received a hard copy of the Complaint on February 24, 2003.

On February 24, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain names <stanford-books.com>, <stanford-shop.com>, <stanfordustore.com>, <stanfordevents.com>, <stanford-sports.com>, <stanford-talk.com>, <stanfordforum.com>,<stanford-mail.com> and <stanford-alumni.net> are registered with Bulkregister.Com, Inc. and that Respondent is the current registrant of the names.  Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.Com, Inc. 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 February 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 17, 2003 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@stanford-books.com, postmaster@stanford-shop.com, postmaster@stanfordustore.com, postmaster@stanfordevents.com, postmaster@stanford-sports.com, postmaster@stanford-talk.com, postmaster@stanfordforum.com, postmaster@stanford-mail.com, postmaster@stanford-alumni.net by e-mail.

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 March 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "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 Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <stanford-books.com>, <stanford-shop.com>, <stanfordustore.com>, <stanfordevents.com>, <stanford-sports.com>, <stanford-talk.com>, <stanfordforum.com>, <stanford-mail.com> and <stanford-alumni.net> domain names are confusingly similar to Complainant’s STANFORD mark.

2. Respondent does not have any rights or legitimate interests in the <stanford-books.com>, <stanford-shop.com>, <stanfordustore.com>, <stanfordevents.com>, <stanford-sports.com>, <stanford-talk.com>, <stanfordforum.com>, <stanford-mail.com> and <stanford-alumni.net> domain names.

3. Respondent registered and used the <stanford-books.com>, <stanford-shop.com>, <stanfordustore.com>, <stanfordevents.com>, <stanford-sports.com>, <stanford-talk.com>, <stanfordforum.com>, <stanford-mail.com> and <stanford-alumni.net> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has used the STANFORD mark for over 100 years as the name of its prestigious and world-renowned educational institution.  Complainant holds a registration for the STANFORD mark with the United States Patent and Trademark Office (Reg. Nos. 1,221,613; 2,194,918; and 2,610,164).  Complainant’s alumni association was started in 1892 and currently has more than 75,000 members.  Complainant’s bookstore, THE STANFORD BOOKSTORE, has been under license with Complainant for over 100 years and is now online at <stanfordbookstore.com>.

Complainant has spent considerable sums of money promoting its STANFORD mark.  These efforts by Complainant have established significant goodwill in the mark.  The STANFORD mark is indicative of high quality educational services, research services in numerous fields, and athletics.

Respondent, Computer Product Introductions, registered the disputed domain names between fall of 1999 and spring 2001.  Respondent has linked the disputed domain names to a commercial website affiliated with <klat.com>.  Respondent has altered the website from the official <klat.com> website to imply that the commercial website at the domain names is affiliated with Complainant.  The <stanford-books.com>, <stanfordustore.com>, <stanford-shop.com>, <stanford-forum.com>, and <stanfordevents.com> domain names feature the sale of new and used textbooks and “campus essentials,” products available from Complainant’s <stanfordbookstore.com> website.  Respondent’s <standford-sports.com> domain name features a header reading “Stanford University sports.  Scores and schedules.”  Respondent’s

<stanford-mail.com> advertises “Stanford Mail”; however, Respondent offers “POP email.”

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant has established that it has rights in the STANFORD mark through its widespread use of the mark over the past 100 years in relation to its educational institution, and through its registration with the U.S. Patent and Trademark Office.

Respondent’s <stanford-books.com>, <stanford-shop.com>, <stanford-sports.com>, <stanford-talk.com>,<stanford-mail.com> and <stanford-alumni.net> are all confusingly similar to Complainant’s STANFORD mark because they incorporate Complainant’s entire mark and merely add a hyphen and a generic term.  The addition of a hyphen between words does not add any distinct characteristics to a domain name.  See Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.com>, <tele-place.com>, and <theteleplace.com> are confusingly similar to Complainant’s TELEPLACE trademark).  Moreover, the addition of a generic term to a well-known mark does not create a distinguishable mark, and thus does not overcome a claim of confusing similarity.  See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark); see also Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

Respondent’s <stanfordustore.com> domain name is confusingly similar to Complainant’s STANFORD mark because it merely adds the letter “u” and the generic term “store” to the end of Complainant’s well-known mark.  The addition of extra letters and generic terms does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) analysis.  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 the Complainant combined with a generic word or term); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

Respondent’s <stanfordforum.com> and <stanfordevents.com> domain names are confusingly similar to Complainant’s STANFORD mark because they include Complainant’s entire STANFORD mark and merely add a generic term that could be easily associated with Complainant.  Thus, they do not overcome a Policy ¶ 4(a)(i) confusingly similar analysis.  See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant”); see also Marriott Int’l v. Café au lait, FA 93670 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with Complainant; Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or endorsement of Respondent’s website). 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the disputed domain names to divert Internet users to Respondent’s own commercial website.  Respondent has placed headers on each domain name that create an impression that Respondent is associated with Complainant.  This type of use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

There is no evidence on record that Respondent is commonly known as STANFORD or any of the disputed domain names.  Based on the fame of Complainant’s STANFORD mark, Respondent would be hard-pressed to establish that it is commonly known by any variation of the STANFORD mark.  Thus, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is intentionally using the disputed domain names to create the appearance of an affiliation between Complainant and Respondent.  Respondent is using this Internet user confusion to sell commercial merchandise.  This type of behavior is evidence of bad faith registration and use pursuant to Policy 4(b)(iv) because Respondent is creating a likelihood of confusion for its own commercial gain.  See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

Moreover, based on the fame of Complainant’s STANFORD mark, and Respondent’s use of the domain names to create an impression that it is associated with Complainant, it can be inferred that Respondent had knowledge of Complainant’s rights when it registered the disputed domain names.  Registration of an infringing domain name despite actual knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); see also Pfizer, Inc. v. Papol 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”).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <stanford-books.com>, <stanford-shop.com>, <stanfordustore.com>, <stanfordevents.com>, <stanford-sports.com>,

<stanford-talk.com>, <stanfordforum.com>, <stanford-mail.com>, and

<stanford-alumni.net> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  March 28, 2003


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