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Generic Top Level Domain Name (gTLD) Decisions |
The Wharton School of the University of
Pennsylvania v. Motherboards.com
Claim Number: FA0306000161274
PARTIES
Complainant
is The Wharton School of the University
of Pennsylvania, Philadelphia, Pennsylvania (“Complainant”), of The Wharton School of the University of Pennsylvania. Respondent
is Motherboards.com, College
Station, Texas (“Respondent”) represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon &
Assoc.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wharton.com>,
registered with Enom, 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.
Fernando Triana, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 2, 2003; the Forum received
a hard copy of the Complaint
on June 5, 2003.
On
June 4, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <wharton.com> is registered with Enom,
Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, 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
June 13, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of July 3,
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@ wharton.com by e-mail.
A
timely Response was received and determined to be complete on July 3, 2003.
On July 10, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Fernando Triana,
Esq., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
states that it owns a trademark registration before the United States Patent
and Trademark Office for “WHARTON THE WHARTON
SCHOOL OF THE UNIVERSITY OF
PENNSYLVANIA”, with Serial Nº 74-257,053, and Registration Nº 1,789,592, dated
August 24, 1993. This
trademark registration covers services of International
Classes 35 and 41.
Complainant
asserts that the domain name <wharton.com> is nearly identical to the
service mark in which it holds rights, since
the Complainant uses “WHARTON”
independently of the trademark “WHARTON THE WHARTON SCHOOL OF THE UNIVERSITY OF
PENNSYLVANIA”.
According to the Complainant, the
Respondent is not making a legitimate noncommercial or fair use of the domain
name, and is misleadingly
diverting consumers. Thus, the Respondent lacks of
rights or legitimate interests over the name.
With
respect to the bad faith requirement of the Policy, the Complainant contends
that the Respondent has intentionally attempted
to attract, for commercial
gain, Internet users to Respondent’s web site or other on-line location, by
creating a likelihood of confusion
with the Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of Respondent’s web site or
location or of
a product or service on Respondent’s web site or location.
B.
Respondent
Respondent initially calls the attention
of the Panel to the fact that the Policy was established to allow the expedited
disposition
of clear abuses, which are not present in the present case. The
Policy was not designed to resolve complex trademark disputes. The Respondent cites a number of decisions
which have arrived to this conclusion.
Respondent
believes that the present is not a clear case of cybersquatting and cyber
piracy. Furthermore, Respondent
contents that the Complainant has not proven the elements necessary for a Panel
to grant the Complainant’s
requested remedy.
With
regard to the identity or confusingly similarity between the Complainant’s
trademark and the conflicting domain name, the Respondent
asserts that the
Complainant does not prove its point, since
the word contained in the domain name is only one word of a trademark
containing nine words (WHARTON THE WHARTON SCHOOL OF THE UNIVERSITY
OF
PENNSYLVANIA).
Respondent
points out that Complainant does not allege to have a trademark in the word
“WHARTON”. On the contrary, the Complainant’s
trademark “WHARTON THE WHARTON SCHOOL OF THE UNIVERSITY
OF PENNSYLVANIA” does not give a registrant the right to all domain
names containing one of the nine words throughout the world.
Respondent further contends that the word
WHARTON is a generic term, and cites previous Panel decisions concluding that
when a mark
is both generic and geographically descriptive, the Complainant
does not have an exclusive right in and to same in the Internet.
Additionally, the Respondent asserts that
the service for which Respondent utilizes the domain name is much different
from the types
of products for which Complainant has acquired trademark rights.
The domain name <wharton.com>
is
used for the purpose of the provision of certain services related to the town
by the name of Wharton, Texas, United States of America,
which is located near
the Respondent. Therefore, there is not any competition for revenue sources.
Regarding
the allegation of the Complainant as to the lack of rights and legitimate
interests on the part of the Respondent, the latter
states that the Complainant
failed to sustain its burden of proof. The Complainant just limited to make an
allegation and a restatement
of the issue which must be proven in accordance
with the Policy.
In this regard, the Respondent contends
that it does, in fact, have rights in the domain name for purposes of Paragraph
4(a)(ii) since
Respondent has engaged in the “use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain
name
in connection with a bona fide offering of goods or services”. This is
evidenced through sworn affidavits rendered by both the
Respondent and a
website developer for Respondent, where they attest that the Respondent has
maintained a website at <wharton.com>
since
July 2, 2002 to provide services for the city of Wharton, Texas, United States
of America. These services provided on the website
have generated revenue for
Respondent. Therefore, the Respondent
has used the domain name in connection with a bona fide offering of goods and
services.
Respondent alleges that its business
activities have included the development of websites to provide various
services for various
cities and communities, including the promotion of local
businesses and the provision of assistance to individuals seeking information
about the communities.
According to Respondent, the use given to
the domain name at issue suffices for the purposes of the Policy. In its
opinion, even if
the web site had not yet been activated with the complete
website at the URLs in question, it would not mean that the registrant
lacks of
rights and legitimate interests over the domain name.
Respondent emphasizes in the fact that
the word “WHARTON” is the name of three (3) towns (located in Texas, New Jersey
and Ohio, United
States of America), the name of a famous author, a
geographical location and a word in the dictionary. This weighs heavily in
favor
of Respondent, since Complainant cannot claim exclusive rights to a
common word. The term “WHARTON” is subject to substantial third
party use
unaffiliated with Complainant. In this regard, Respondent also cites a number
of previous Panel decisions concluding that
the registration of a domain name
incorporating merely a common word establishes Respondent’s legitimate
interest.
Finally,
the Respondent refers to the third requisite of the Policy, about the
Respondent’s bad faith registration and use of the
domain name. Respondent
believes that the Complainant has also failed to sustain its burden of proving
that Respondent registered
and is using the domain name in bad faith.
It
is the Respondent’s opinion that bad faith cannot be established in this case
because Complainant only has limited rights with
respect to a limited trademark
in the generic word “WHARTON”. The use made by the Respondent of the common
word “WHARTON” establishes
that the value of the disputed domain name derives
not from any alleged fame of Complainant’s mark but, rather, from the
popularity
of this common word.
Considering
that the Complainant failed to meet its burden of proving bad faith, Respondent
decides to demonstrate that there was
not bad faith in its part. Respondent
alleges that neither Respondent, its business activities nor any of its
associates have had
any intent for commercial gain to misleadingly divert
consumers or to tarnish any alleged trademark/service mark. Likewise, neither
Respondent, its business activities nor any of its associates have ever sold or
attempted to sell the domain name <wharton.com>
to any individual or
entity that owns a trademark for the word “WHARTON”. Neither Respondent, its
business activities nor any of
its associates have registered or acquired the
domain name in question for the purpose of selling, renting, or otherwise
transferring
the domain name registration to the Complainant who is alleged to
be the owner of the trademark or service mark or to a competitor
of the
Complainant, for valuable consideration in excess of the documented
out-of-pocket costs directly related to the domain name.
Neither Respondent,
its business activities nor any of its associates have registered the domain
name in question in order to prevent
the owner of any trademark or service mark
from reflecting the mark in a corresponding domain name, (and neither he, his company,
his business activities nor any of his business activities have engaged in a
pattern of such conduct). Besides, neither Respondent,
its business activities
nor any of its associates have registered the domain name for the purpose of
disrupting the business of the
Complainant or any competitor. By using the
domain names in question, neither Respondent, its business activities nor any
of its
associates have attempted to attract, for commercial gain, Internet
users to their web sites or other on-line location, by creating
a likelihood of
confusion with any alleged mark as to the source, sponsorship, affiliation, or
endorsement of a web site or location
or of a product or service on a web site
or location.
Respondent
contends that there has been absolutely no evidence presented by Complainant
before the Panel to show one of the circumstances
set out above or any other
circumstance of bad faith.
Since
Complainant has failed to prove the three (3) elements contained in the Policy,
the Respondent considers that the Complainant’s
request for the transfer of the
domain name should, therefore, be denied.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Likewise,
paragraph 10 (d) of the Rules for Uniform Domain Name Dispute Resolution Policy,
provides that “[t]he Panel shall determine
the admissibility, relevance,
materiality and weight of the evidence.”
In
the present case, the Panel wants to place emphasis in the importance of the
evidence filed by the parties to prove their assertions,
which has been studied
to determine its relevance and weight in arriving to a decision. The Panel
wishes to clarify that the statements
that have been accompanied by evidence
have been given more importance than the mere statements made by the parties without
further
demonstration of their existence.
Paragraph
4(a) of the Policy requires that the 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 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.
Complainant
has filed evidence of its United States of America’s trademark registration of
“WHARTON THE WHARTON SCHOOL OF THE UNIVERSITY
OF PENNSYLVANIA” as a word mark,
to cover services of International Classes 35 and 41.
The
Panel notes that the trademark over which Complainant holds rights is prima
facie not identical to the domain name <wharton.com>. However, a
deeper analysis will show a different result.
The
trademark “WHARTON THE WHARTON SCHOOL OF THE UNIVERSITY OF PENNSYLVANIA” is
registered before the United States Patent and Trademark
Office under
certificate N° 1,789,592. Examining the service mark registration certificate
filed by the Complainant as an exhibit
of the Complaint, it can be evidenced
that it has the following disclaimer: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT
TO USE “SCHOOL
OF THE UNIVERSITY OF PENNSYLVANIA”, APART FROM THE MARK AS
SHOWN”.
According
to the above, the only part over which the Complainant claims and holds
exclusive rights is precisely “WHARTON THE WHARTON”.
Therefore, for the
purposes of this controversy, the Panel considers that the confusingly
similarity between the Complainant’s trademark
and the domain name
<wharton.com> will be determined taking into account only the words
“WHARTON THE WHARTON”.
As
repeated by several previous Panels, it has to be taken into account that the
“.com” suffix is not an element to be considered
when analyzing the identity or
similarity between the Complainant’s service mark and the conflicting domain
name (See Wal-Mart Stpres,
Inc. v. Walsucks and Walmarket Puerto Rico[1],
stating that: “[t]he addition of the generic top-level domain (gTLD) name
".com" is without legal significance since use of a gTLD is
required
of domain name registrants, ".com" is one of only several such gTLDs,
and ".com" does not serve to identify
a specific enterprise as a
source of goods or services”.)
Comparing the relevant part of the domain
name <wharton.com> with the relevant part of the Complainant’s service
mark, (i.e.,
“WHARTON THE WHARTON”), the Panel concludes that both signs are
confusingly similar to the extent of the Policy. According to the
criteria used
when comparing two signs, they must be analyzed in its whole and not by separating
their elements, and the examiner
must pay attention to the similarities between
the signs instead of their differences. When comparing <wharton> and
“WHARTON
THE WHARTON”, the Panel finds that both signs have high visual and
phonetic similarities to the point of being misleading, particularly
taking
into account that the Complainant’s trademark is a repetition of the word
“WHARTON” with the article “THE”, which is not relevant
in determining a case
of confusingly similarity.
Based on the foregoing, the Panel finds
that the Complainant has met its burden of proof with regard to the confusingly
similarity
between its mark and the conflicting domain name.
Paragraph
4 (c) of the UDRP, determines that the following circumstances, in particular
but without limitation, if found by the Panel
to be present, shall demonstrate
the Respondent’s rights or legitimate interests to the domain name:
(i)
Before any
notice to Respondent of the dispute, it has used or made demonstrable preparations
to use the domain name or a name corresponding
to the domain name in connection
with a bona fide offering of goods or services; or
(ii)
Respondent
(as an individual, business, or other organization) has been commonly known by
the domain name, even if he has acquired
no trademark or service mark rights;
or
(iii)
Respondent
is making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly
divert consumers or to tarnish the
trademark or service mark at issue.
Respondent
alleges to have rights and legitimate interests in the domain name at issue
because it has engaged in the use of the domain
name in connection with a bona
fide offering of goods or services. To demonstrate its use, the Respondent
asserts that it has maintained
a website at <wharton.com> since July 2,
2002, to provide services for the city of Wharton, State of Texas, United
States of
America. This has been a commercial use, since the Respondent has
received revenue from it.
Respondent
also asserts in its response that the word “WHARTON” is generic and therefore,
Complainant can not allege to have an exclusive
right to use it. In this
respect, the Panel wishes to make the following comments.
A term
is generic when it is the common or technical name of the product or service
identified with it, or has become a sign or statement
which, in everyday
language or normal use within the country, is the common or usual designation
for the goods or services in question.
For example, the word “CAR” would be
generic when it is used to designate automobiles, as well as the word “CHAIRS”
would be generic
if used in connection with furniture. In the present case, the Panel finds that
the word “WHARTON” is not a generic term, since it is not the word used to designate
any
goods or services. “WHARTON” is rather a word with several meanings in the
English language, which is a phenomenon completely different
to the one alleged
by the Respondent.
As
contended by the Respondent in its response, the word “WHARTON” is the name of
three (3) towns, located in the States of Texas,
New Jersey and Ohio, as well
as the name of a famous author, Edith Wharton. Therefore, the word is both a
geographical name and a
surname. This does not make the word generic, but
evidences that it is a term that has different uses and meanings.
It is
important to clarify that, under trademark law, the word “WHARTON” is
distinctive enough and thus has been recognized as a trademark
by the USPTO.
Such trademark registration grants the Complainant with an exclusive right to
use such word and, as a consequence,
to prevent any other party from using an
identical or confusingly similar term. Due to the fact that the trademark
“WHARTON THE WHARTON
SCHOOL OF THE UNIVERSITY OF PENNSYLVANIA” (with no claim
to the exclusive right to use “SCHOOL OF THE UNIVERSITY OF PENNSYLVANIA),
was
registered by the USPTO on behalf of the Complainant, it means that such term
is not descriptive or generic and is capable of
distinguishing the goods and/or
services for which it is registered. Furthermore, the distinctive force of the
Complainant’s trademark
is not an issue to be contested in the present
administrative proceeding, and if that is the Respondent’s purpose, it shall
bring
the case to the competent authorities.
However,
as mentioned, the rights granted by such trademark registration can be enforced
within the boundaries imposed by the registration
itself (i.e., the services
covered by the trademark). This limitations weigh heavily when it comes to
trademarks composed by a word
with different meanings as in the present case.
The Complainant has indeed built a great prestige around his service mark, to
identify
its recognized business school. Notwithstanding, the Complainant can
not prevent third parties from using the word “WHARTON” to make
reference to a
town named Wharton or to a person with the surname Wharton. The Complainant’s
rights are limited by the coverage of
the trademark registration granted by the
USPTO.
In
the Internet field, this reasoning leads to very important conclusions with
regard to the differences between Trademark Law and
Internet Law, that are
useful in the present matter:
a) The fact that the Internet has no
territorial boundaries, makes that the principle of territoriality of the
trademark protection does
not apply to domain names. Therefore, if one person
has a trademark registration in China, and the other person has its trademark
registered in Argentina, both trademark owners have an identical right to have
its sign reflected in a top level domain name.
b) Due to the worldwide coverage of the
Internet, the “speciality rule” applied to trademarks can not be applied to
domain names. In
Trademark Law, the general principle is that a trademark is
protected for the goods and services for which it has been registered,
and as a
consequence, two or more identical trademarks can coexist when they identify
unrelated goods or services. However, in the
Internet, two identical domain
names can not coexist, even if they refer to completely different contents,
related with either goods
or services.
c) The above led to the adoption of the
principle of “first come first served” with regard to domain names
registration. This is particularly
relevant and useful when two or more parties
have a legitimate right to have a domain name. When two parties have trademark
registrations
over any given word, both of them have the same right to have
such mark reflected in a top level domain, and it will be assigned
to the first
of them who requests the registration. Same principle is also applied in the
case of domains including generic, descriptive
or common words, being assumed
that anyone has a right or legitimate interest to register that domain name. In
this last case, generally
speaking, a trademark owner and any other party with
an interest over the name (excluding obviously any presence of bad faith),
would
have the same right to register the domain name, and it will be assigned
to the first of them who registers it.
d) In case of domain names including words
of common use, there would be an exception to the aforementioned when the
trademark owner
has succeeded in achieving an strong secondary meaning of the
word. In this case, the trademark owner should demonstrate that the
common word
over which it holds rights, is immediately and exclusively
identified by the public with its trademark. This criterion was analyzed by the
Panel in the case of Car Toys, Inc. vs. Informa Unlimited,
Inc.[2],
as follows:
“Car Toys,
Inc. has not proven that Informa has no legitimate interests in respect of the
domain name cartoys.net. The CAR TOYS trademark
is not fanciful or arbitrary,
and Car Toys has submitted no evidence to establish either fame or strong
secondary meaning in its
mark such that consumers are likely to associate
cartoys.net with CAR TOYS. Informa has demonstrated that the name is in use
elsewhere.”
e) The Policy, as pointed out by the
Respondent, was designed to be applied in cases of clear abuse and bad faith in
the part of the
registrant of the domain name. It is not applicable in cases of
conflict of rights. Consequently, the remedies provided by the Policy
can only
be granted when the conflict involves one party that haves rights and one party
that lacks of them. When both parties have
rights, even if they are of
different nature, the remedies can not be granted.
These
reflections are applicable in the present case, taking into account that the
domain name <wharton.com> is formed by a
word that has different
meanings, and the Respondent alleges to have rights and legitimate interests
based on the use of the word
in a form that is different from the use given to
it by the Complainant as trademark owner. Additionally, the Complainant has not
demonstrated that it has achieved such a strong impression in the public’s
mind, so that the word “WHARTON” can be only and immediately
linked to the
Complainant.
The Panel notes that the trademark rights
of the Complainant can not be enforced in this case against the Respondent,
taking into
account that the Respondent is making a legitimate commercial use
of the domain name <wharton.com>, through a website devoted
to different
issues not related to the Complainant’s business school. The Panel visited the
Respondent’s website on July 14, 2003,
and found out that it offers a number of
options to the visitors, including a hotel locator in Wharton, Texas, a link to
an online
book seller including Edith Wharton books, a search engine to locate
people living in the town of Wharton, Texas, among others. This
use suffices
for the extent required by the Policy, to prove rights and legitimate interests
in the part of the Respondent.
With regard to the burden of proving that the Respondent
lacks of rights or legitimate interests over the disputed domain name, the
Panel wishes to clarify to the Respondent that such burden lies on its side.
This can be concluded from the wording of the Policy
and has been accepted by
previous Panels, as in the case of Woolworths House v. David Anderson[3]:
“In
general, under this limb of the necessary requirements for a successful
complaint, the burden of proof must lie with the Respondent
to demonstrate that
he has rights or legitimate interests.”
Notwithstanding, this does not mean that
the Complainant is not compelled to at least state his case properly and file
the evidence
it has in its hands to prove its allegations.
The Panel wishes to place special
emphasis in the fact that the evidence used to arrive to a decision in this
issue was provided solely
by the Respondent. The affidavits filed with the
response, and particularly the one rendered by the website designer,
demonstrated
that the Respondent has rights and legitimate interests over the
conflicting domain name, and that the Respondent’s business include
the
development of web sites to provide services for various cities and
communities. This evidence was not contested by the Complainant
and
consequently, was accepted by the Panel as enough demonstration of the
Respondent’s rights and good faith. The Panel was surprised
to note that the
Complainant failed to support its contentions with evidence and just limited to
copy parts of the provisions of
the Policy without further explanation. A mere
allegation of the lack of rights or interests of the Respondent is not enough
under
the scope of the Policy to find a Complaint successful.
In this regard, the paragraph 3(b)(ix)(2)
of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) requests the Complainant to describe in
the Complaint why the Respondent should be considered as having no
rights or legitimate interests in respect of the domain name that is the
subject
of the Complaint. In a similar case, the Panel in the dispute of Graman
USA Inc. v. Shenzhen Graman Industrial Co.[4]
stated the following:
“The
Complaint is detrimentally brief and unspecific, and consequently appears to
violate UDRP Rule 3. Complainant has not provided
a prima facie case (..),
Complainant must still meet the required burden to establish its case. See
TotalFinaElf E&P USA, Inc.
v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002)
(finding that in order to bring a claim under the Policy, Complainant must
first
establish a prima facie case).”
It is not the Panel’s intention to
encourage Complainants and Respondents to file extremely large submissions.
However, it is expected
that the parties, and particularly the Complainants,
support their cases in due form and describe the facts that make them believe
that the three (3) requirements of the Policy are met. Being the Complainant a
sophisticated person or entity (as it is in the present
case), such
expectations tend to be greater, and the Panel is disappointed to find that the
Complainant has not even made an effort
to present a prima facie case.
Based on the aforementioned, the Panel
concludes that the Respondent has demonstrated that it has rights and
legitimate interests
over the disputed domain name, and hence, the Complainant
has not succeeded in this point.
Since the Panel has found that the
Respondent has rights and legitimate interests over the domain name
<wharton.com>, it would
not be necessary to study if the Respondent has
acted in bad faith, as stated in the Complaint. However, the Panel wishes to make some comments with regard to
this issue.
According
to paragraph 4(b) of the UDRP, the following circumstances, in particular but
without limitation, if found by the Panel
to be present, shall be evidence of
the registration and use of a domain name in bad faith:
(i)
Circumstances
indicating that Respondent has registered or has acquired the domain name
primarily for the purpose of selling, renting,
or otherwise transferring the
domain name registration to the Complainant who is the owner of the trademark
or service mark or to
a competitor of that Complainant, for valuable
consideration in excess of Respondent’s documented out-of-pocket costs directly
related
to the domain name; or
(ii)
Circumstances
indicating that Respondent has registered the domain name in order to prevent
the owner of the trademark or service
mark from reflecting the mark in a
corresponding domain name, provided that Respondent has engaged in a pattern of
such conduct;
or
(iii)
Circumstances
indicated that Respondent has registered the domain name primarily for the
purpose of disrupting the business of a competitor;
or
(iv)
Circumstances
indicating that, by using the domain name, Respondent has intentionally
attempted to attract, for commercial gain, Internet
users to his web site or
other on-line location, by creating a likelihood of confusion with the
Complainant's mark as to the source,
sponsorship, affiliation, or endorsement
of his web site or location or of a product or service on his web site or
location.
A finding of presence of rights and
legitimate interests in the Respondent practically precludes any possibility of
finding bad faith
in the registration and use of the domain name. In this
sense, the House Judiciary Committee, when commenting the 15 U.S.C. §
1125(B)(i)(IV),
explained that: “[t]he fact that a person may use a mark in
a site in such a lawful manner may be an appropriate indication that the
person's registration
or use of the domain name lacked the required element of
bad-faith.”[5]
Notwithstanding, the Panel studied the
Complaint looking for the description of the way in which the Respondent
registered and uses
the domain name in bad faith. As occurred in the case of
the allegation of absence of rights and legitimate interests of the Respondent,
the Complainant only made a restatement of one of the circumstances indicated
in the Policy as evidence of bad faith, without explaining
how it was applied
to the present case or submitting evidence of its contentions.
The burden of proof of the presence of
bad faith in the registration and use of the domain name relies on the
Complainant. However,
the Complainant in this dispute failed to prove its
point, and the Panel had to base its decision on the more structured and
complete
brief filed by the Respondent. The Panel in the case of Loris Azzaro
BV, SARL v. Asterix and Mr De Vasconcellos[6],
found out the following:
“Therefore,
in consideration of, and weighing up the facts above stated, the Administrative
Panel finds that there is insufficient
evidence to clearly establish that
Respondents have registered and are using the Domain Name in bad faith. Mere
belief and indignation
by Complainant that Respondents have registered and are
using the Domain Name in bad faith are insufficient to warrant the making
of
such a finding in the absence of conclusive evidence.”
Consequently, since the Complainant did
not provide any evidence of the bad faith in the part of the Respondent, the
Panel is forced
to conclude that such bad faith requirement has not been met.
On the contrary, the Respondent has demonstrated its rights and legitimate
interests over the domain name <wharton.com> and has filed evidence of
its good faith in the registration and use of such domain
name in connection
with a bona fide offering of services related to the town of Wharton, Texas,
United States of America. This evidence
was formed by the affidavits rendered by
the Respondent’s legal representative and by its web site developer, where they
explained
the nature of the Respondent’s business and of its rights and
legitimate interests over the disputed domain name. Such evidence,
as mentioned
before, was never contested by the Complainant.
In particular, Complainant failed to
demonstrate which circumstances indicated it that, by using the domain name,
Respondent has intentionally
attempted to attract, for commercial gain,
Internet users to his web site or other on-line location, by creating a
likelihood of
confusion with the Complainant's mark as to the source,
sponsorship, affiliation, or endorsement of its web site or location or of
a
product or service on its web site or location. Although this was the statement
made by the Complainant in the Complaint, it did
not provide the Panel with a
plausible explanation of the facts that led it to make such statement, apart
from the existence of its
service mark “WHARTON THE WHARTON SCHOOL OF THE
UNIVERSITY OF PENNSYLVANIA”, which as explained before, is not enough for the
purposes
of the Policy considering the particulars of this case. Based on this
and on the content of the response, the Panel concludes that
such circumstances
had not existed.
Due to the above, the Panel finds that
the Respondent has not acted in bad faith when registering and using the
conflicting domain
name and therefore, the Complainant failed to prove this
point.
DECISION
For all the foregoing reasons, the Panel
decides that although the domain name registered by the Respondent is
confusingly similar
to Complainant’s mark, Respondent has rights and legitimate
interests over the domain name and has acted in good faith, and therefore
Complainant’s Complaint is hereby dismissed.
Fernando Triana, Esq., Panelist
Dated: July 24, 2003
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