WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Career Guidance Foundation v. Ultimate Search
Case No. D2003-0323
1. The Parties
1.1 The Complainant is Career Guidance Foundation of San Diego, California, United States of America, represented by John Boyce Jr, Foster Walsh LLP of La Mesa, California, United States of America.
1.2 The Respondent is Ultimate Search of Hong Kong, SAR of China, represented by John B. Berryhill of Philadelphia, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name is (the "Domain Name") which is registered with Moniker Online Services, LLC (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2003. On April 29, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 5, 2003, Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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").
3.2 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 May 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2003. The Response was filed with the Center on May 28, 2003.
3.3 The Respondent elected to have this dispute determined by a three-member panel. The Center appointed Nick Gardner as the presiding panelist in this matter and David Sorkin and Michael Albert as panelists. The parties were notified of the panel appointment on July 7, 2003. The Panel finds that it was properly constituted. The Panel members have submitted Statements of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
4.1 The Domain Name was registered by the Respondent on January 17, 2000.
4.2 The Complainant is the proprietor of the registered service mark COLLEGESOURCE. This mark is registered by the United States Patent and Trade Mark Office, Registration Number 2616166. The mark is registered in international classes 41 and 42. For class 41 the mark is associated with educational services, namely providing an on-line computer database via global information networks in the field of college catalogues. For class 42, the mark is associated with an electronic database in the field of college catalogues recorded on microfiche and CD Rom. In this decision this registered service mark is referred to as the Trade Mark.
4.3 Application for the Trade Mark was made on January 19, 1999, the Trade Mark was published for opposition on June 18, 2002, and was registered on September 10, 2002.
5. Parties� Contentions
A. Complainant
5.1 The Complainant asserts that the Domain Name is identical to the Trade Mark It also says it has used the term COLLEGESOURCE in interstate commerce since 1994, and, in effect, asserts that the Domain Name is identical to that unregistered trade mark.
5.2 In January 1997, the Complainant registered the domain name . It applied for the Trade Mark in January 1999.
5.3 Details of the history of the Complainant are set out in the declaration of its President, Ralph J. Anders filed with the Complaint. For over thirty years the Complainant has provided collections of college catalogues as resources for potential students and other interested parties. Originally these resources were available on microfiche and, with effect from 1994, on CD ROMs. In 1995, the Complainant began developing a web site and, in April 1997, registered users started obtaining access to the catalogues on-line. Mr. Anders states that the Complainant first began using the term COLLEGESOURCE as a mark in June 1994. Mr. Anders confirmed that in January 1997, the Complainant registered and has utilized this domain name since that date.
5.4 The Complainant alleges that the Respondent has no rights or legitimate interests in or to the Domain Name. In this regard, the Complainant alleges that the Respondent is engaged in business in a similar field, namely providing links and information concerning colleges and information of interest to those searching and applying to colleges.
5.5 The Complainant alleges that a consumer unsure of the exact format of a particular top level domain will most likely search for the name concerned by reference to a .com top level domain. The Complainant therefore asserts that consumers searching for its products and services would be likely to be linked to the Respondent�s site.
5.6 The Complainant says that the Respondent is a sophisticated user of the Internet.
5.7 The Complainant refers to a previous decision involving the Respondent (E Inc v Ult.Search Inc (WIPO Case No. D2001-1319)) in which the Respondent was found to have acted in bad faith and says the present circumstances are similar.
5.8 The Complainant gives detailed information about how popular it says its site is. It provides information as to the number of organizations that have site licenses for its online service, the number of hits it receives on its web site (by reference to statistics for 2002 and 2003) and matters of this nature.
5.9 The Complainant says that the Respondent�s use of the Domain Name seeks to capitalize on the Complainant�s goodwill and dilutes the Complainant�s domain name. The Complainant also says that "a sophisticated user such as the Respondent should have searched the PTO�s online records and such a search would have revealed that the Complainant had filed [for registration of the Trade Mark�]."
B. Respondent
5.10 A rather different picture of the Respondent�s activities emerges from the Respondent�s evidence. The Respondent identifies its business as being the obtaining of valuable, but generic domain names, whose registration has lapsed. It says it then associates those domain names with contents relevant to the subject matter of the domain names, as in the present case, and seeks to make money out of advertising and other activities associated with such content and such domain names.
5.11 The Respondent says that it noticed that the domain name was about to expire, that domain name having been registered to a previous entity. It says one of the reasons it registers abandoned domain names is that they are likely to be free of any dispute.
5.12 The Respondent points out that the Trade Mark is restricted to a narrowly defined field of services and it infers from the prosecution history of the Trade Mark that the Complainant was required to narrow the scope of protection obtained under the Trade Mark. It denies that its precise activities fall in the scope of the services covered by the Trade Mark.
5.13 The Respondent also says that the words "college source" are generic and a number of organizations provide similar services by reference to these names. It identifies, for example, "www.the" and "" in this regard.
5.14 The Respondent says that, in any event, it effected its registration over three years before any complaint from the Complainant. It denies that even had it carried out a trade mark search at that time, it would have found the details of the Complainant�s pending application for the Trade Mark, saying those were not publicly available at that stage.
5.15 So far as bad faith is concerned, it says that "there is no single entity on the planet which is as closely scrutinized and has demonstrated a pattern of good faith registrations" as the Respondent. In this regard, it identifies eight previous decisions under the Policy in relation to various domain names (, , , , , , and ) where it has successfully resisted complaints that have been made against it. It notes that the Complainant identified in the Complaint the one decision in which it did not succeed, without referring to the eight in which it did succeed. It says that the one decision relied upon by the Complainant is distinguishable in this regard.
5.16 The Respondent notes that the various statistics relied upon by the Complainant all postdate the date of the Respondent�s registration.
5.17 The Respondent notes that the Complainant acknowledges that a .com domain name is likely to be searched for prior to a .org domain name by a consumer uncertain of the exact URL for which he is searching. The Respondent notes that in these circumstances one would have expected the Complainant to have registered at the time it registered . The Respondent infers that it did not do so because the prior owner of had already registered it and that the Complainant did not have sufficient rights to challenge that registration of what is, in any event, a generic term.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material, the Panel finds as set out below.
6.2 In order to succeed in this Complaint, the Complainant has to establish, pursuant to paragraph 4(a) of the Policy that:
(i) the Domain Name is identical to or confusingly similar to the "COLLEGESOURCE" trademark;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Identical or Confusingly Similar
6.3 The application for the Trade Mark was filed shortly before the Respondent effected registration of the Domain Name, but it was not granted until after the date of that registration.
6.4 There seems to be a dispute as to whether, at the date of the registration of the Domain Name, the pending Trade Mark application was publicly available. On the evidence, the Panel is not satisfied this was the case; in any event, the Panel does not think this alters the Panel�s conclusion.
6.5 The Panel accepts the evidence of the Complainant that it was making use of the term "COLLEGESOURCE" in interstate trade since 1994. Such use is sufficient to constitute use as a trademark under the Policy.
6.6 Accordingly the Panel concludes the Complainant has rights in the trade mark COLLEGESOURCE (whether arising by virtue of its pending trademark application for the Trade Mark or by virtue of its prior unregistered use of the term), and accordingly that the Domain Name is identical to a trade mark in which the Complainant has rights the .com suffix being ignored for these purposes.
Rights or Legitimate Interests
6.7 The Respondent says it has rights or legitimate interests in respect of the Domain Name. Specifically, the Respondent alleges that, before any notice to it of the dispute, it began using the Domain Name in connection with a bona fide offering of goods or services. In this regard it says it was "associating" the Domain Name "with a set of associated results from a paid advertiser database."
6.8 It seems clear that the Respondent is in the business of obtaining lapsed domain names and putting them to use in this manner. On balance, the Panel is inclined to think that such activities, where carried out in relation to a domain name which is generic or which is not clearly associated with a single entity (as to which see below) does constitute rights or legitimate interests within the meaning of the Policy. The Panel notes that other panels have apparently agreed with this view in relation to the activities of this Respondent.
6.9 A curiosity of the case is that neither party has explained who previously owned and what use it was put to. It seems inconceivable that the Complainant does not know this and the Respondent in effect invites the Panel to infer that the prior owner must have had a right that could not have been defeated by the Complainant. The Panel thinks this is a reasonable inference to draw. Whether the Respondent can, in effect, take advantage of such right as a "successor in title" is perhaps debatable. It does, however, assist the Respondent in its arguments that the term "collegesource" is not wholly distinctive of the Complainant�s activities � other organizations use similar terms and at least one (unknown) organization has used, apparently without challenge, what the Complainant itself acknowledges is a "stronger" version of its own domain name � the .com version.
Registered and Used in Bad Faith
6.10 There is no direct evidence that the Respondent was aware of Complainant or its use of the term COLLEGESOURCE or its pending application for the Trade Mark in January 2000, when the Respondent registered the Domain Name. The Panel accepts the Complainant�s submission that the Respondent is a sophisticated user of the Internet. It seems at least likely that it may have checked other variants of the term "collegesource," but there is no direct evidence of the point. Even if it did so, the Panel is not satisfied this would have, in effect, put the Respondent on notice that it could not, itself, effect registration of "collegesource" as a domain name. This is because it is not clear to the panel that the term can only be associated with the Complainant � see below.
6.11 The Panel takes the view that "collegesource" is a word which derives from the combination of two ordinary English words, which, by their nature, are descriptive of services which involve providing information about colleges. As such, the Complainant faces a heavier burden in establishing that the Respondent is acting in bad faith, in comparison to those cases where the domain name is an invented or fanciful term which corresponds to a trade mark of a complainant.
6.12 Of course, the use made of ordinary words may be such that they acquire distinctiveness. With appropriate evidence it may be possible to show that the level of distinctiveness is such that the words have become associated with a particular complainant such that lack of legitimate interest by any other party registering a domain name corresponding to such words may be inferred. Even then, a respondent�s evidence as to how it came to choose such words as a domain name may rebut the inference.
6.13 In the present case, the Panel accepts that the evidence establishes that the Complainant�s activities have resulted in at least some level of recognition and distinctiveness in the term "collegesource" as being associated with services provided by the Complainant, and the domain name as being the URL associated with such services.
6.14 However, the evidence does not establish that this term is uniquely associated with the Complainant. The term (or very similar variants of it) is used by others, apparently without objection. There was clearly the prior owner of (see above), as well as other sites such as "www.the" and "" which the Respondent has identified in this regard.
6.15 Furthermore, the evidence produced by the Complainant as to the level of recognition and traffic generated by the "www." web site all postdates the Respondent�s registration. This may be significant � it seems entirely possible that the level of recognition and traffic associated with "collegsource" as a domain name may, as at the date of registration of the Domain Name, depend upon the nature and extent to which was being used by its previous owner. The Panel has no details from the Complainant as to what the relevant figures were for at this date, nor does it have any details as to what activities were previously carried out in relation to by its previous owner. As noted above, it seems inconceivable that the Complainant does not know, in at least general terms, what took place in this regard.
6.16 The Panel notes that in relation to the (non exhaustive) list of bad faith activities provided by the Policy the first three examples of bad faith activity set forth in the Policy do not apply here: (1) the Respondent has not made an effort to sell the Domain Name; (2) the Respondent does not appear to have registered the Domain Name in order to prevent the Complainant from reflecting the COLLEGESOURCE mark in a corresponding domain name; and (3) the Respondent does not appear to have registered the Domain Name primarily for the purpose of disrupting the Complainant's business. Indeed, the Complainant does not assert that any of these three examples are present in this case.
6.17 The fourth example, intentional attraction of Internet users for commercial gain by creating a likelihood of confusion with the Complainant's mark, is in the Panel�s view a closer matter, and this is the example stressed by the Complainant. Of course, finding liability under this heading presupposes that the Respondent had knowledge of the Complainant's mark when it registered the Domain Name. The Complainant urges that the Panel "ought to infer ... that Respondent had actual knowledge of [the Complainant�s] prior rights" when it registered the Domain Name, because of the "strength and distinctiveness" of the COLLEGESOURCE mark.
6.18 The Panel might well agree if the Complainant�s mark were, on the evidence, particularly distinctive of the Complainant�s activities or otherwise famous. But, here the Panel is unwilling to make the inference suggested, given COLLEGESOURCE is a descriptive combination of two common terms (see above) and given evidence of others using variants of essentially the same term.
6.19 In these circumstances the Panel declines to find the Respondent has registered the Domain Name in bad faith or that its subsequent use of the Domain Name constitutes bad faith.
7. Decision
7.1 In the light of the above findings, the Panel's decision is as set out below.
7.2 The Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.
7.3 The Complainant has not established that the Respondent has no rights or legitimate interests in respect of the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
7.4 The Domain Name has not been registered and is not being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
7.5 Accordingly, the Complaint is denied.
N. J. Gardner
Presiding Panelist
David Sorkin
Panelist
Michael Albert
Panelist
Dated: July 21, 2003
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