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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yale University v. Michael Hodge, Interwebgroup, LLC

Case No. D2008-1568

1. The Parties

Complainant is Yale University, New Haven, Connecticut, United States of America, represented by Venable, LLP, United States of America.

Respondent is Michael Hodge, Interwebgroup, LLC, Ashton, Maryland, United States of America.

2. The Domain Name and Registrar

The disputed domain name <yale.mobi> is registered with Go Montenegro Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2008. On October 17, 2008, the Center transmitted by email to Go Montenegro Domains, Inc., a request for registrar verification in connection with the disputed domain name. Following clarification by GoDaddy.com, Inc. of the identity of the registrar of the disputed domain name, on October 22, 2008, Go Montenegro Domains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainant on October 24, 2008, providing the revised registrar information, and inviting Complainant to submit an amendment to the Complaint. Complainant filed a revised Complaint on October 27, 2008. The Center verified that the revised Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on October 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 19, 2008.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 26, 2008. 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.

By email of December 10, 2008, the Center advised the parties that, at the request of the Panel, the due date for decision in this matter was extended until December 15, 2008.

4. Factual Background

Complainant is the owner of several registrations for the trademark and service mark YALE on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 1391903, dated April 29, 1986, in International Class (IC) 41, covering educational services (as further specified); registration number 1391926, dated April 29, 1986, in IC 42, covering research in certain fields, and; registration number 1984951, dated July 9, 1996, in IC 25, covering clothing of various types (Complaint, Annex B). Complainant states that it has registered the YALE trademark and service mark in numerous foreign countries.1

Complainant has long used the YALE mark in commerce to identify itself as a source of educational services in the United States of America, having been established as an institution in 1701, and having used the YALE mark since its establishment. Yale University operates a commercial Internet website at “www.yale.edu”. Yale is frequently referred to in newspapers, periodicals, and other media as a source of educational services and research output. As a consequence of continuous long use and extensive public media references, the YALE mark is well known in the United States of America. (Complaint, Annexes D & E)

According to the Registrar’s verification report, Respondent is registrant of the disputed domain name. According to that report, the record of registration for the disputed domain name was created on the September 26, 2006.

By e-mail dated September 22, 2008, Respondent offered to sell and transfer the disputed domain name to Complainant, stating:

“We are going to list the new mobile domain www.yale.mobi <http://www.yale.mobi/> through a godaddy auction but thought we'd reach out to you first to see if you want it. We are only asking $900 and could complete the transfer through go daddy. Feel free to contact me if you have an interest.

Just a thought.

Michael Hodge

301-980-…. <http://www.mytallk.mobi/>” (Complaint, Annex G)

By email dated October 6, 2008, Complainant’s internal legal counsel rejected Respondent’s offer to sell and transfer, and Complainant’s internal counsel demanded that Respondent cease and desist from use of the YALE mark (id., Annex H). By email dated October 6, 2008, Respondent indicated that it was negotiating with a third-party interested in purchasing the disputed domain name (id.).

There is no evidence on the record of this proceeding of the use by Respondent of the disputed domain name in connection with an active Internet website.

The Registration Agreement in effect between Respondent and Go Montenegro Domains, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the trademark and service mark YALE based on long use in commerce and as evidenced by registrations at the USPTO and in foreign countries. Complainant alleges that its YALE mark is well known.

Complainant argues that the disputed domain name is identical to its YALE mark, adding only the generic top level domain (gTLD) identifier “.mobi”.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has not demonstrated any trademark rights in the term “yale”, and Respondent has made no apparent use of the disputed domain name other than to offer it for sale. Complainant acknowledges that third parties also may have rights in the term “yale”, but indicated that Respondent is not one of them.

Complainant alleges that Respondent was certainly aware of Complainant’s well known mark when it registered the disputed domain name, and that Respondent manifestly evidenced bad faith by offering to sell it to Complainant for a price in excess of its out-of-pocket expenses directly related to the name. Complainant further alleges that Respondent intended to use the disputed domain name to divert Complainant’s customers to Respondent’s website, or to disrupt Complainant’s business.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center. Although it did not file a Response, Respondent briefly communicated with the Center and Complainant subsequent to the initiation of the proceeding. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has demonstrated rights in the trademark and service mark YALE based on long use in commerce in the United States of America, and as evidenced by registrations at the USPTO (see Factual Background supra). Complainant has further established, based on evidence of extensive public reference to the YALE mark in the United States of America by third parties, that the YALE mark is well known in the United States of America in connection with the services of Complainant.

The disputed domain name <yale.mobi > differs from Complainant’s mark only by addition of the generic top-level domain (gTLD) identifier “.mobi”. The addition of the gTLD “.mobi” in the present circumstances does not distinguish the disputed domain name from Complainant’s mark. The disputed domain name <yale.mobi> is identical to the YALE mark for purposes of the Policy.

Complainant has demonstrated that it holds rights in a trademark and that the disputed domain name is identical to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.” (Policy, paragraph 4(c))

Complainant has alleged that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent had opportunity to demonstrate rights in the disputed domain name, but failed to provide evidence that would establish such rights. The only direct evidence of Respondent’s use of the disputed domain name is its offer to sell and transfer it to Complainant. Respondent also claimed to be negotiating sale of the disputed domain name to a third party (and alternatively to be considering an auction of the disputed domain name). Such activities do not establish rights or legitimate interests in the disputed domain name that is identical to Complainant’s well known mark.

Complainant has succeeded in demonstrating that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates that “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” (Policy, paragraph 4(b)). Among these are “(i) circumstances indicating that [the respondent] ha[s] registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name.”

Respondent has offered to sell and transfer the disputed domain name to Complainant for a price of USD 900. Respondent did not document out-of-pocket costs directly related to the domain name in the order of magnitude of USD 900. The Panel concludes on the basis of the evidence presented that Respondent registered the disputed domain name for the purpose of selling it to Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.

Complainant has succeeded in demonstrating that Respondent registered and has used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <yale.mobi>, be transferred to Complainant.


Frederick M. Abbott
Sole Panelist

Date: December 15, 2008


1 Complainant has not provided documentary support of the foreign registrations, and these registrations are not considered established for purposes of the Policy.

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-1568.html

 

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