WorldLII Home | Databases | WorldLII | Search | Feedback

Generic Top Level Domain Name (gTLD) Decisions

You are here:  WorldLII >> Databases >> Generic Top Level Domain Name (gTLD) Decisions >> 2004 >> [2004] GENDND 757

Database Search | Name Search | Recent Decisions | Noteup | LawCite | Help

Grand Valley State University v. Robert Beekman [2004] GENDND 757 (14 June 2004)


National Arbitration Forum

DECISION

Grand Valley State University v. Robert Beekman

Claim Number: FA0404000263528

PARTIES

Complainant is Grand Valley State University (“Complainant”), represented by Mary C. Bonnema, 171 Monroe Ave., NW, Suite 600, Grand Rapids, MI 49503. Respondent is Robert Beekman, (“Respondent”), P.O. Box 155, Allendale, MI 49401.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <gvsuhousing.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

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.

Barry Schreiber as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 28, 2004; the Forum received a hard copy of the Complaint on April 29, 2004.

On April 28, 2004, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <gvsuhousing.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 May 3, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 24, 2004 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@gvsuhousing.com by e-mail.

A timely Response was received and determined to be complete on May 24, 2004.

A timely Additional Submission was received from Complainant and determined to be complete on May 28, 2004.

On June 3, 2004 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Barry Schreiber as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant states that since at least 1987, Complainant has exclusively and continuously used the trademark GVSU in association with its university, its products, its services and its housing.  Moreover, Complainant has exclusively and continuously used the trademark GVSU in association with all of the goods and services listed in its trademark registration.  As a result of the quality of the goods and services associated with Complainant’s mark and the considerable effort expended in promoting them under the GVSU trademark, Complainant’s products and services have met with highly favorable acceptance, and the mark has become a symbol of Complainant, its products, its services, and its goodwill.

From 1996 to 1998, Respondent worked as a contractor for Complainant, doing repairs and maintenance work for Complainant in some of Complainant’s apartment housing.  Thus, Respondent had previous business dealings with Complainant and had direct knowledge, as a result of those dealings, about Complainant’s student housing.  Respondent currently lives near the University.  Respondent is no longer affiliated, in any way, with Complainant.  However, Respondent is fully familiar with and aware of Complainant’s exclusive right to use the mark GVSU, particularly with respect to housing.  Not long after working on Complainant’s housing projects, Respondent formed a company called Beekman Management Company for the purpose of renting properties to others, namely to Complainant’s students and prospective students.

On February 20, 2000, Respondent with full knowledge of Complainant’s rights in the trademark GVSU registered the domain name at issue: www.gvsuhousing.com.  Respondent also uses Complainant’s GVSU trademark on his website for the express purpose of renting properties to Complainant’s students

(Emphasis supplied).

Complainant contends that Respondent’s use of Complainant’s registered GVSU trademark in the domain name, coupled with the generic name of the service (housing) in the domain name, leads and redirects users to purchase services from Respondent.  Purchasers of Respondent’s services will be confused as to the source of services offered by Respondent under the subject domain name.  Moreover, users of the Internet are led to believe that the domain name “gvsuhousing” may be owned by, related or sponsored by Complainant, since Complainant is the only authorized user of the federally registered trademark GVSU for housing and other goods and services.

(Emphasis supplied)

B. Respondent states that Complainant’s allegations are without merit for the following reasons:

[a.]       Complainant waxes poetic about Respondent’s work history and Complainant’s alleged good name.  What Complainant fails to include in its Complaint is proof that the domain name at issue is identical or confusingly similar to the trademark that Complainant registered only after becoming aware of Respondent’s domain name.

The domain name <gvsuhousing.com> is not identical or confusingly similar to a trademark or service mark in which Complainant has rights.  Complainant bases its allegation on its U.S. Trademark Registration No. 2,800,256 for the trademark GVSU.  (A copy of which the Respondent attached as Annex A.)  Complainant was granted the trademark, however, on December 30, 2003.

            Respondent began using the domain name on February 20, 2000, almost three years prior to Complainant’s registration of the domain name.  Respondent sites ABT Elecs., Inc. v. MotherBoards.com, FA 221239 (Nat. Arb.  Forum Feb. 20, 2004), (a copy of which Respondent attached as Annex B).  Respondent’s registration of the disputed domain name predated Complainant’s filing date for its registered trademark.  Respondent sited a National Arbitration Forum panel decision which summarily denied the contention that Policy ¶ 4(a) (i) requires a Complainant to merely establish rights in a mark, without regard to the commencement date of those rights.  Additionally, in analyzing whether Complainant had common law rights to the ABT mark, the Panel found that the USPTO certificate that listed Complainant’s first use of the ABT mark as being in 1936 was insufficient, without additional substantiating evidence, to establish rights in the mark.

            Respondent argues in the instant case that Complainant has proved no right in the trademark other than its registration postdating Respondent’s use of the domain name.  Complainant has provided no additional proof of its rights in the mark prior to Respondent’s use of the domain name.  Consistent with ABT Elecs., Respondent further argues that Complainant fails to prove that the domain name is identical or confusingly similar to Complainant’s trademark.

            Respondent states that Complainant further argues that Respondent’s use of the domain name “leads and redirects users to purchase services from Respondent” and that users of the Internet may mistake Respondent’s website to be that of Complainant  “since Complainant is the only authorized user of the federally registered trademark GVSU for housing and other goods and services.” 

Complainant errs in both assumptions, says Respondent.  For most of the period during which Respondent has used the domain name, Complainant had not offered housing to students at its Grand Rapids campus, the locale in which 19 of Respondent’s 21 rental properties are located.  It is not possible to redirect the purchasers when Complainant historically did not offer an identical service from which the user could be redirected. 

Additionally, according to Respondent, Complainant alleges that it is the only authorized user of the trademark for housing.  But the Annex provided by Complainant does not list housing amongst the multitude of goods and services described.  It is hard to imagine that Complainant was sufficiently thorough to include “coasters made of paper,” “animal carriers,” and “toy rubber ducks,” but somehow overlooked housing.  In short, Complainant’s trademark does not even cover the service provided by Respondent.

[b]        Respondent has rights and legitimate interests in the domain name that is the subject of this Complaint.

            (i.)            Prior to Respondent’s receipt of notice of the dispute, Respondent’s use of the domain name has been in connection with a bona fide offering of goods or services.  Specifically, Respondent has offered properties for rent to the general public using the domain name <gvsuhousing.com> since early 2000.  Respondent has not specifically solicited any individual affiliated with Complainant and, in fact, leases housing to many individuals who have no affiliation with Complainant.

            (ii.)            Respondent has been commonly known by the domain name, even though Respondent has not acquired trademark or service mark rights.  In fact, Respondent began using the domain name before Complainant offered housing services in the City of Grand Rapids.  Thus, Respondent’s common usage of the domain name predated Complainant’s in Respondent’s major business locale.  Additionally, Respondent has made a substantial investment in the domain name to ensure that individual’s seeking out its company know to do so via that domain name.  Respondent has placed the domain name on signage, shirts, mailer materials, letterhead, business cards and the like at considerable expense to Respondent.

            (iii.)            Respondent is making a 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.  In fact, until recently, Complainant had no consumers in the City of Grand Rapids to divert and until December 30, 2003, no trademark to tarnish.  In reality, Complainant is a “Johnny come lately” both as to goods provided and the trademark at issue.

[c.]        The domain name should not be considered as having been registered and being used in bad faith.

            Complainant alleges that Respondent has registered the domain name primarily for the purpose of disrupting Respondent’s business and that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

            These allegations are almost remarkable insofar as Complainant was not even in the business of housing in the City of Grand Rapids when Respondent began engaging in the housing rental business and acquired its domain name.  Thus, Complainant had no business to disrupt.  Further, it was impossible for Respondent to believe that it was creating a “likelihood of confusion” with Complainant’s product, because Complainant did not have an offering in the marketplace.

            While Complainant argues that Respondent exhibited bad faith by using the domain name despite Respondent’s knowledge of Complainant’s trademark rights in the domain name at issue, Respondent could not have had knowledge of the alleged trademark rights because Complainant did not even receive those rights until several years after Respondent’s use of the domain name.

C. Additional Submissions by Complainant

            In response to Respondent’s Response, Complainant summarized and stated, “In sum, it is important to look at the facts.  The University, publicly known as GVSU, provided “GVSU” student housing since 1987.  Therefore, it has common law trademark rights in the mark that date back over 15 years.  The University also owns a U.S. Trademark Registration for the mark.  Respondent worked for GVSU as a contractor, conducting maintenance on GVSU’s apartment housing from 1996-1998, a fact he does not deny.  Respondent, thus, knew about GVSU’s reputation and housing services.  Yet, and as he admits in paragraph [3] [a] of his Response, he started using the ‘GVSU’ mark in his domain name in February 2000, registering a domain name that wholly incorporates the GVSU mark. 

            Respondent does not deny that he knew about GVSU’s mark and related housing at the time he registered his domain name.  Respondent does not even explain why he decided to use the acronym ‘GVSU’ in his domain name.  And, when the University formally informed Respondent about GVSU’s trademark rights, Respondent initially ignored the University and then, when the time for renewal of the domain name was ripe; Respondent simply re-registered the domain name with an utter disregard for the University’s legally protectable trademark rights.” 

FINDINGS

The Panelist finds that Complainant has proved each of the required three elements of Paragraph 4(a) of the Policy, subsections (1), (2) and (3), to wit: (1) Respondent’s domain name is identical or confusingly similar to the University’s GVSU trademark; (2) Respondent has no legitimate interests with respect to the domain name; and (3) Respondent registered and re-registered the domain name in bad faith and hence the relief sought by Complainant should be granted.

DISCUSSION

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.”

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.

Identical and/or Confusingly Similar

Finding for Complainant

Complainant implies that it has common law rights in the GVSU mark by stating that it has used the mark exclusively and continuously since 1987 in association with its university, its products, its services and its housing.  See Tuxedos by Rose v. Nunez, FA 95248 (Nat. Arb.  Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb.  Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982).

Also, Complainant asserts that it holds rights to the GVSU mark because it registered the mark with the U.S. Patent and Trademark Office (“USPTO”) on December 30, 2003 (Reg. No. 2,800,256, filed on June 21, 2002).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.  Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Complainant argues that the <gvsuhousing.com> domain name is confusingly similar to its GVSU mark because the domain name fully incorporates the mark and merely adds the generic term “housing.”  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 Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied.).

The Panel has found that the addition of the generic top-level domain “.com” is irrelevant in determining whether the <gvsuhousing.com> domain name is confusingly similar to Complainant’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Rights or Legitimate Interests

Finding for Complainant

The Panel finds that Respondent used the subject domain name to become commonly known by the name GVSU Housing by piggybacking on Complainant’s well known reputation and therefore only in such manner became commonly known as GVSU Housing.  Therefore, Respondent’s claim of being commonly known by the <gvsuhousing.com> domain name is not well founded.  Respondent has not “clean hands.”  The Panel thus concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c) (ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb.  Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

The Panel agrees with Complainant’s argument that Respondent’s <gvsuhousing.com> domain name takes advantage of the goodwill associated with Complainant’s mark and therefore the use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c) (iii).  The Panel finds that Respondent lacks rights and legitimate interests in the domain name because the domain name resolves to a commercial website and takes advantage of the goodwill associated with Complainant’s mark.  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb.  Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

Registration and Use in Bad Faith

Finding for Complainant

The Panelist concurs with Complainant’s assertion that Respondent had actual knowledge of Complainant’s mark because Respondent worked as a contractor for Complainant, doing repairs and maintenance work in some of Complainant’s apartment housing prior to registering the domain name.  Thus, Complainant argues that Respondent registered the domain name in bad faith because Respondent knew of Complainant’s rights in the mark.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.  Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Pfizer, Inc. v. 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”).  The Panelist agrees.

Also, Complainant argues that Respondent registered and used the <gvsuhousing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name resolves to a website that displays Complainant’s trademark and advertises Respondent’s apartments to Complainant’s students.  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb.  Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b) (iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb.  Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Complainant is engaged in the student housing business.  The Panel clearly and unequivocally finds that Respondent’s domain name competes with Complainant’s business, and hence concludes that Respondent registered and used the <gvsuhousing.com> domain name in bad faith pursuant to Policy ¶ 4(b) (iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.  Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b) (iii)).

In its Additional Submission, Complainant argues that Respondent registered the domain name in bad faith because Respondent renewed the domain name registration after receiving notification of Complainant’s rights in the GVSU mark.  See Houlberg Dev. v. Adnet Int’l, FA 95698 (Nat. Arb.  Forum Oct. 27, 2000) (holding that as Respondent had actual knowledge of Complainant’s asserted rights in "Retail Engine" as a trademark before it renewed the domain name, the domain name was renewed in violation of ICANN Policy ¶ 2(b)” and hence in bad faith).  The Panelist finds in this regard that any legitimate claim Respondent could have had to the use of the subject name, claiming that its customers knew it by that name, was lost when Respondent re-registered the domain name, knowing then or should have known then that it was trading on Complainant’s good name and reputation in the community.  The Panelist questions Respondent’s motive in the first place when so choosing the use of a domain name which clearly capitalized on the reputation of Grand Valley State University.

DECISION

Complainant, having established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s sought relief shall be GRANTED.

Accordingly, it is Ordered that the <gvsuhousing.com> domain name be TRANSFERRED from Respondent to Complainant.

Barry Schreiber Panelist
Dated: June 14, 2004


WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/757.html