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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Board of Regents of the University of Wisconsin System v. NUCOM, Domain Name Brokers; UnderWater Ecology Club; United Women of the East Coast; Union of Wellington Rugby Football; Ukko Wosh; Universal Wireless Sound Project; Udo’s World Society of Philosophers; Ursula Walters; Super Web Services; Uri William Platt
Case No. D2002-0981
1. The Parties
The Complainant is The Board of Regents of the University of Wisconsin System, Madison, Wisconsin 53706of United States of America, represented by Christopher L. Ashley of United States of America.
The Respondent is NUCOM, Domain Name Brokers of Inverness, Scotland IV1 1LD, United Kingdom of Great Britain and Northern Ireland; UnderWater Ecology Club of Zagreb, 10090 Croatia, United Women of the East Coast of Durban, KwaZulu Natal 4056, South Africa; Union of Wellington Rugby Football, of Wellington, New Zealand; UkkoWosh, of Helsinki, Finland; Universal Wireless Sound Project, of Amsterdam, Netherlands; Udo’s World Society of Philosophers of Zurich, Switzerland, Ursula Walters, Super Web Services of Malta, Malta; Uri William Platt of Tel Aviv, 63113 Israel.
2. The Domain Names and Registrar
The disputed domain names are:
They are registered with iHoldings.com Inc. d/b/a DotRegistrar.com, 13205 SW 137th Ave, Suite #133, Miami, FL 33186.
3. Procedural History
The Complaint against NUCOM alone was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2002. On October 23, 2002, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue.
On October 28, 2002, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its response, advising that NUCOM was the previous registrant of the domain names and providing details of the current registrants.
In response to an email notification by the Center on November 5, 2002, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 8, 2002.
The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2002. The Response was filed with the Center on December 7, 2002.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on December 17, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On December 17, 2002, the Complainant filed supplementary material with the Center, requesting that the Panel take this into account in making its decision. In Administrative Panel Procedural Order No 1 dated December 20, 2002, the Panel allowed this filing, subject to the Respondents being given three days from this date to file any submissions that they might wish to make in relation to the Complainant’s supplementary filing. By the same order, the Panel also exercised its power under paragraph 12 of the Rules to request from the Complainant details of the service marks to which it referred in its amended Complaint.
On December 23, 2002, the Center received a response from the Respondent NUCOM to the Complainant’s supplemental filing, and on December 24, 2002, received a response from the Complainant concerning the details of the service marks requested in Procedural Order No 1.
4. Factual Background
The Complainant is the Board of Regents of the University of Wisconsin System, an entity of the government of the State of Wisconsin located in Madison, Wisconsin, USA. According to the Complaint, the Board is the governing body for 13 universities, 13 colleges and a state wide co-operative extension program. There are over 157,000 enrolled students.
According to the Complaint, the disputed domain names are associated with six universities of the University of Wisconsin System. These are: University of Wisconsin – Eau Claire (UWEC), founded 1916; University of Wisconsin – River Falls (UWRF), founded 1874; University of Wisconsin – Stevens Point (UWSP), founded 1894; University of Wisconsin – Oshkosh (UWOSH), founded 1871; University of Wisconsin – Platteville (UWPLATT), founded 1866; and University of Wisconsin – Superior (UWSUPERIOR), founded 1893.
The Complainant has registered domain names in the .EDU domain for <uwec.edu>, <uwrf.edu>, <uwsp.edu>, <uwosh.edu>, <uwplatt.edu> and <uwsuperior.edu>. It appears further that this is a form of designation for its other campuses that have had EDU domain names registered, ie the first letters are UW followed by an abbreviation of the name of the campus and then .EDU. These registrations were made between 1989 and 1992.
The First Respondent NUCOM was the registrant of the disputed domains in the ".com" and ".org" domains until August 6, 2002. Thereafter, the registrants are as listed above. It will be observed that each of the Second to Ninth Registrants/Respondents bear designations which accord with each of the domain names, eg Under Water Ecology Club is the registrant of <uwec.com>, United Women of the East Coast is the registrant of <uwec.org>, the Union of Wellington Rugby Football is the registrant of <uwrf.com>, and so on.
5. Parties’ Contentions
Notwithstanding the changes in registrants on August 6, 2002, the Complainant alleges that the domain names remain under the control of the First Respondent NUCOM. In support of this contention, the Complainant refers to the fact that the Whois entries for each of the disputed domain names was changed on the same date (August 6, 2002) and that the domain name servers for each of the names remained the same both before and after these transfers occurred (Complaint, paragraph 2). Each disputed domain name returns a blank page with a single email link (Complaint, Annex F), and the source code for each page is identical except for the <title> field (Annex J). The Complainant also notes that, as of November 4, 2002, the Respondent NUCOM’s web page listed <uwec.com> as for sale, despite the change of registrant to the Underwater Ecology Club on August 6, 2002. In its supplementary filing, the Complainant alleges that it transmitted copies of the Amended Complaint to each of the Second to Ninth Respondents via registered US Mail but that, as at December 17, 2002, four of these packages had been returned to the Complainant undelivered (those to Universal Wireless Sound Project, Udo’s World Society of Philosophers, Ursula Waters’ Super Web Services, and the UnderWater Ecology Club), while a return receipt card had been received for the package transmitted to Ukko Wosh which included a signature in the "Signature of Addressee" box. As at December 17, 2002, the Complainant had not received either confirmation of delivery or a returned package from the other registrants listed in paragraph 16 of the Amended Complaint. Accordingly, the Complainant seeks relief as against NUCOM on the basis that it is still in control of all the disputed domain names, but presumably has joined the other Respondents as a matter of precaution. This raises a preliminary procedural question, on which the First Respondent has made some submissions (see below), and on which the Panel must rule before proceeding to the substantive aspects of the case.
So far as the requirements of paragraph 4(a) of the Policy are concerned, the Complainant makes the following submissions:
1. Domain names that are identical or confusingly similar to a trademark or service mark in which the Complainant has rights: In this regard, the Complainant refers to the size of the University of Wisconsin System, and, in particular the age of the various campuses whose initials have been included in the disputed domain names. It refers to its .EDU registrations (see above), and asserts further that it owns rights in the service marks UWEC, UWRF, UWSP, UWOSH, UWPLATT and UWSUPER (Complaint, paragraph 11). However, from its Response to Procedural Order No 1 it appears that the Complainant has no actual trade or service mark registrations that correspond to the disputed domain names, although it has registrations for several associated marks, including "UWM" for "University of Wisconsin – Milwaukee" (US TM Reg Nos 2,635, 727; 2,344,836; 1,587,758; 1,595,505), a pending registration for "UW-Madison", and a further registered service mark for the educational services provided by UW Colleges (this mark is not described). So far as the UWEC, UWRF, UWSP, UWOSH, UWPLATT and UWSUPER service marks are concerned, the Complainant alleges that it has gained rights through continuous use in commerce (with respect to the provision of higher education and related goods and services) since the date of the registration of the associated .EDU domain names. There appear to be two aspects to the Complainant’s arguments here. First, it alleges that it has a family of marks of the form "UW " where " " refers to the designation for the particular campus within the UW system. In this regard, it does not appear to claim rights in "UW" alone – this is already a registered trademark for the University of Washington – but it asserts that to its knowledge the University of Wisconsin is the only institution within the USA to market goods and services with the "UW " mark format. Secondly, the Complainant argues that it has acquired rights in each of the marks UWEC, UWRF, UWSP, UWOSH, UWPLATT and UWSUPER, and that their use in the .EDU form has been more than just the use of computer addresses. The principal assertion of the Complainant is that these designations have been used as marks to identify the particular educational services and goods (such as books) that are provided by these different campuses.
On the assumption that it has shown that it has rights in the above marks, the Complainant then argues that the disputed domain names are very similar or identical, and that the likelihood of confusion is very great. In this regard, the Complainant notes that it is common for an Internet searcher to use the abbreviation of the institution for which they are searching, eg University of Wisconsin, and, in the case of the different campuses to add the abbreviation for those particular places, eg "RF" for River Falls.
2. Respondent has no rights or legitimate interests in respect of the domain names: The Complainant asserts that the Respondent has no affiliation with the Complainant, and there has never been any licence or authorization to use its marks. Prior to August 6, 2002, it notes that the First Respondent was offering to sell the domain names (Complain, Annex D). It argues further that the Respondent cannot point to any legitimate interest in the domain names other than to sell them. It notes further that it received no answer to a letter dated November 20, 2001 that was sent to the First Respondent (Annex E) requesting transfer of the domain names. A second letter was sent on July 3, 2002 (Annex E). The changes in registrants of the domain names occurred shortly after this (August 6, 2002). The Complainant asserts that these registrants are fictitious and that the domain names still remain under the control of the First Respondent. It argues further that there is no evidence that the First Respondent is recognized under any of these domain names, or that there has ever been any bona fide offering of goods or services through them. Finally, it argues that these registrations will adversely affect the Complainant in the carrying out of its educational mission and may be damaging to its good name and reputation.
3. Domain names were registered and are being used in bad faith: In this regard, the Complainant notes that it received no response to its letters of November 20, 2001 and July 3, 2002. It asserts further that the First Respondent has offered to sell <uwec.com> for consideration far in excess of its out-of-pocket expenses – for lease or sale for up to $29,950 (Annex I). It argues further that the Respondent has held the domain names for several years with no intention of using them in any way, except for the purposes of resale, referring here to Telstra Corp Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0003. It argues that the Respondent’s continued use in bad faith, ie through passive holding, prohibits it from the legitimate use of its marks in the promotion of its educational mission.
The First Respondent makes a number of points in its Response and Comments in relation to the Complainant’s Supplementary filing.
1. It is a domain name brokering service, which it carries on a legitimate business enterprise. In the case of the eight domain names in dispute, it claims that these names were each sold and transferred though their brokering service on August 6, 2002, and that this had occurred some two months before the institution of the present Complaint. Accordingly, the present proceeding can only go ahead if all the domain names were under the same ownership at the time of the Complaint, but as this is no longer the case separate proceedings against each of the new registrants are now required. The First Respondent states further that it has advised each of the new registrants (its clients) that they need not submit an additional response to the one lodged by the First Respondent until such time as a separate proceeding is brought with respect to their domain name.
2. None of the Complainant’s marks is a famous mark, such as Coca-Cola. Further, outside the USA, it is unlikely that anyone would recognize "UW" as being associated with the University of Wisconsin. The First Respondent refers here to the results of a Google search (not exhibited) that show that University of Washington is number 1, while the University of Warsaw (Univwersytet Warszawski) and University of Waterloo also feature in the top 5 (it is not stated where the University of Wisconsin stands in this list).
3. It disputes that the Complainant’s registration of the .EDU names gives any rights with respect to the ".com" domains, and notes there are other groups that have abbreviations that are similar to those of the Complainant.
4. It disputes the allegation of bad faith, arguing that it is a legitimate business enterprise, and notes further that its offer to sell was solicited (in response to an email from the Complainant requesting to buy it). It argues further that it has no need to make unsolicited offers with respect to its 4 letter domain names, as there are many businesses, individuals and organizations with those initials that will approach it for the corresponding domain name. In this regard, the "practice of re-selling domain names can be considered legitimate – as with any commodity where there is only one item and many potential buyers, it is reasonable to expect a sale for profit or auction to the highest bidder."
6. Discussion and Findings
Before considering the specific requirements of paragraph 4 of the Policy, it is necessary to consider whether this proceeding is correctly brought against the First Respondent as being the entity in control of the disputed domain names, or whether the proceeding against the First Respondent should be dismissed and separate proceedings against each of the Second to Ninth Respondents should be instituted.
As a matter of principle, it seems clear that a proceeding under the Policy should be against one Respondent only or several Co-Respondents where they share responsibility for a particular domain name (or series of names, as the case may be). It would not therefore be open to a Panel to proceed to determine, in one proceeding, complaints in respect of a series of domain names where these were registered by different parties. In several instances, however, Panels have proceeded to decide cases where there are a number of Respondents on the basis that these are either the fictitious names of the one person or entity or where the one person or entity controls all the domain names in question: See, for example, Yahoo! Inc v Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188 and Caesars World Inc v Starnet Communications and Atlantic West Gaming Entertainment Ltd, WIPO Case No. D2002-0066.
In the present case, there is strong reason to believe that the registrations effected on August 6, 2002, were to fictitious persons or entities, and that this was part of a scheme intended to put the Complainant to the expense and effort of instituting a series of separate proceedings while the First Respondent remained in effective control of the domain names. In this regard, the Panel notes the following points:
i) The registrations all took on the same day, and shortly after the Complainant had written for the second time on July 3, 2002, outlining its concerns.
ii) There are no active web pages associated with any of the new registrants, which might be expected to be the case were they legitimate persons or entities. Instead, each page contains a single email address, and the source code for each page is identical except for the <title> field (Complaint, Annex J).
iii) The names of the new registrants, while imaginative, appear too good to be true: can it really be expected that eight such registrants should suddenly materialize on the same day and shortly after the Complainant had expressed its concern about the use of these domain names?
iv) There is no evidence that the Second to Ninth Respondents are to be found at the mail addresses that are given in their Whois registration details. While the First Respondent has indicated that it has advised these persons that they need not reply, the fact remains that notice of the proceedings has been served on these persons/entities at their registered addresses, and it would therefore have been a prudent response (if they actually exist) for them to file a Response, objecting to the jurisdiction of the Panel. The fact that this has not occurred is a further indication that the persons and addresses are, indeed, fictitious.
In light of the above, the Panel concludes that it has jurisdiction to proceed to determine the case, and that any direction that it gives to the relevant registrar should be treated as a direction with respect to the First Respondent or with respect to each of the Second to Ninth Respondents as directed and controlled by the First Respondent. It is relevant here to add that this pattern of registration changes is clearly indicative of a lack of good faith on the part of the First Respondent, and will therefore be relevant to matters that must be established by the Complainant under paragraph 4(a) of the Policy, notably paragraph 4(a)(iii).
A. Identical or Confusingly Similar
Under paragraph 4(a) (i) of the Policy, the Complainant must establish that the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights.
As noted above, the Complainant has no relevant trade or service mark registrations, and must therefore rely upon whatever rights it can demonstrate to exist in its unregistered marks. There appear to be two aspects to the Complainant’s contentions here. The first is that it has rights in the mark "UW__"comprising the letters "UW" plus the name or abbreviation of the particular campus of the University of Wisconsin System. The problem with this contention is that, in the absence of rights evidenced by some form of registration, the Complainant needs to establish that it has used the letters "UW__" in this format, as a mark, and, in the course of doing so, has built up a reputation or goodwill in that form of identification so that it refers to it (University of Wisconsin System) and no one else. However, there is no evidence of the extent of this form of usage, its longevity or the particular goods or services in respect of which it has been so used. As the Respondent points out, there is little distinctiveness, if any, in the letters "UW", and they could equally well refer to several other US universities such as the University of Washington (which actually has a registration for "UW") or the University of Wyoming, to say nothing of the University of Warsaw in Poland or the University of Waterloo in neighbouring Canada. Accordingly, the Panel has to conclude, on the evidence before it, that there is insufficient to indicate that the format "UW___" has become associated with the University of Wisconsin System only and has been used in a trademark sense by it.
The second, and more credible, way in which the Complainant seeks to establish its rights is to argue that each of the designations UWEC, UWRF, UWSP, UWOSH, UWPLATT and UWSUPER has been used by the Complainant as a trade or service mark in relation to educational services and associated products. The main evidence that is provided here is of the longstanding registration and use of the various .EDU domain names, which provide the Internet address to each of the relevant UWS campuses. However, an Internet address alone does not provide the necessary evidence of trade or service mark use: there must be some indication on the relevant webpages that the goods or services advertised on those pages are being provided under those designations used as trade or service marks, ie to indicate that these goods or services have a particular provenance in the Complainant or in one of its constituent campuses. With this requirement in mind, the Panel has visited each of the webpages with the addresses UWEC.EDU, UWRF.EDU, UWSP.EDU, UWOSH.EDU, UWPLATT.EDU and UWSUPERIOR.EDU, and has found little evidence there that the educational services described therein are provided by reference to the designations UWEC, UWRF, UWSP, UWOSH, UWPLATT and UWSUPER. Thus, on the webpage for UWEC, the principal name that appears is "University of Wisconsin – Eau Claire" rather than "UWEC", indicating that once the Internet address has been accessed the user is directed to the services, etc, provided under the designation "University of Wisconsin – Eau Claire," rather than "UWEC" The same occurs on the webpages for UWOSH, UWPLATT and UWSUPER – indeed, the predominant usages on these pages are "UW – Oshkosh", UW – Platteville" or "UWP", and "UW – Superior" respectively. The only pages on which the abbreviations appear with any regularity are those for UWRF and UWSP, although again the full names "University of Wisconsin – Stevens Point" or shortened versions such as "UW – Stevens Point" are used with more prominence.
In order for the Complainant to make good its contention that it has common law trade or service marks in any or all of the designations UWEC, UWRF, UWSP, UWOSH, UWPLATT and UWSUPER, more evidence of the use of these designations as marks in relation to specific goods or services is required. Such evidence could have been provided in the following ways:
- More prominent usage of the designations on the respective webpages (see above).
- Evidence of the use of the designations in other hard copy publications, eg university prospectuses and other publications that highlight the designations in a prominent way, so as to indicate that the goods or services referred to in these publications are provided under that designation rather than, say, the designations "University of Wisconsin – Eau Claire".
- Evidence of the use of these designations on specific goods provided by the complainant, eg on books, clothing, souvenirs, etc. It is not enough here to provide an Internet address incorporating one of these designations that will take the user to a campus bookshop – there must be some evidence that the books are being offered and sold under that designation.
- Evidence of the volume of such uses. Even if any of the above can be shown to be trademark uses, there must be some evidence of the volume and extent of those uses. In the present proceeding, nothing of this kind was provided.
With considerable reluctance, particularly in light of the Respondent’s conduct, the Panel concludes that the Complainant has not established the first part of the requirement under paragraph 4(a)(i), namely that it has rights in a trade or service mark(s). Accordingly, even though it is likely that the second part of paragraph 4(a)(i) would have been met, i.e. that the domain names are identical or confusingly similar, the Complaint fails at this first hurdle.
B. Rights or Legitimate Interests
In light of its finding under paragraph 4(a)(i), it is unnecessary for the Panel to make any finding in relation to paragraph 4(a)(ii). If this had been necessary, however, it would have found in favour of the Complainant.
C. Registered and Used in Bad Faith
In the same way, it is unnecessary for the Panel to make any finding in relation to paragraph 4(a)(iii). Once again, however, if its finding had been otherwise in relation to paragraph 4(a)(i), it would have found in favour of the Complainant. In this regard, it notes that the systematic change of registrations on the same date, coupled with the way in which this was done (see above), provides strong evidence from which registration and use in bad faith could have been inferred.
For all the foregoing reasons, the Complaint is denied.
Dated: December 31, 2002