WIPO Domain Name Decision D2006-0091 for uesp.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Utah Higher Education Assistance Authority v. JIT Limited

Case No. D2006-0091

1. The Parties

The Complainant is Utah Higher Education Assistance Authority, Salt Lake City, Utah, United States of America, represented by Kirton & McConkie, United States of America.

The Respondent is JIT Limited, Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name is registered with Universal Registration Services, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January�19,�2006. On January�20,�2006, the Center transmitted by email to Universal Registration Services, Inc. a request for registrar verification in connection with the domain name at issue. On the same date, Universal Registration Services, Inc. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February�2,�2006. The Center verified that the Complaint together with the amendment to the Complaint (together referred to in this decision as simply, ‘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 February�3,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February�23,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February�24,�2006.

The Center appointed James A. Barker as the sole panelist in this matter on March�7,�2006. 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.

4. Factual Background

The Complainant operates under an authority known as the Utah Higher Education Assistance Authority (UHEAA). The Complainant offers what are known as 529 tax plans under state law, which provide a means of establishing monetary resources to pay for future college an university expenses.

The Complainant operates a website at , which was registered in 1998.

The Respondent registered the disputed domain name in 2003. The disputed domain name reverts to a website which offers a variety of goods and services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the grounds set out in paragraphs 4(a)(i)-(iii) of the Policy is made out.

The Complainant claims that it has been using an identical mark to the disputed domain name since at least 1996, in connection with 529 tax plans. The Complainant states that its rights are therefore senior to uses made by the Respondent.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. It is not the bona fide purveyor of any related goods or services. The Respondent provides neither 529 tax plans or related services at the website to which the disputed domain name refers. There is no evidence that the Respondent is commonly known by the name UESP.

The Complainant claims that the Respondent registered and has used the disputed domain name in bad faith. The Respondent has a pattern of appropriating the marks of others and registering domain names. The Respondent’s use of the disputed domain name diverts Internet users by seeking to create confusion by opportunistic similarity with the Complainant’s trademarks. The Complainant attempted to resolve the matter directly with the Respondent, but the Respondent failed to respond.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, paragraphs 4(a)(i)-(iii), for the Complainant to succeed and have the disputed domain name transferred to it, the Complainant must prove that:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith.

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed as follows.

A. Identical or Confusingly Similar

i. The Complainant has rights in a mark

To prove this first element, the Complainant must establish that it has common law rights in a mark. The general consensus of panels’ views is that, to establish a common law mark:

“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. …” (See item 1.7, WIPO Overview of Panel Views on Selected UDRP Questions.)

The Complainant states that it has common law trademark rights in UESP, from its use of UESP since 1996. It states that it has been “doing business as the Utah Education Savings Plan and UESP”. It also claims to have used UESP under Utah State law, in connection with marketing savings plans for college and university expenses. To establish these claims, the Complainant’s evidence is:

- that it has operated a website at , which it uses to market its financial products. The Complainant registered that domain name in 1998;

- a copy of the front page of its website, in which UESP appears several times, as an obvious acronym for the Utah Education Savings Plan.

The Complaint includes no other evidence to support its claims that it has rights in UESP as a trademark.

So is the evidence provided by the Complainant enough to establish that is has rights in UESP as a trademark? To answer this question, it is instructive to consider previous cases under the Policy, which involve similar facts to this one. Two in particular had facts analogous to this case:

In Irish Institute of Purchasing and Materials Management v. Association for Purchasing and Supply, Owen O’Neill, WIPO Case No. D2001-0472, the complainant was the Irish Institute of Purchasing and Materials Management. The domain name then at issue was . The complainant used the letters IIPMM as part of an “.ie” domain name and claimed goodwill in the use of these letters in association with its services. On its website, it referred to itself throughout as IIPMM. But it did not have a registered mark for IIPMM. Like in this case, there was not much other evidence that that complainant used the letters IIPMM to distinguish its goods and services. The panel noted that the letters did not make a word, had no meaning, and therefore by definition were not descriptive. The panel found that, although it would have been preferable for that complainant to provide more evidence, the evidence was sufficient to establish common law rights in the mark IIPMM.

In Freedom of Information Foundation of Texas v. Steve Lisson, WIPO Case No. D2001-0256, the complainant was the Freedom of Information Foundation of Texas. The domain name then at issue was . The then complainant operated a website at . It did not have a registered mark for FOIFT. Like in the IIPMM case, the panel noted that the letters FOIFT were “not a readily recognizable acronym”. The then panel found that the FOIFT had acquired the necessary distinctiveness to be protectable as a service mark.

(There have been other cases in which panels have found that a complainant has trademark rights in an acronym of its business name. Those other cases include National Football League Players Association, Inc. v. Cayman Trademark Trust d/b/a Trademark, WIPO Case No. D2005-0234; The National Deaf Children’s Society and Ndcs Limited v. Nude Dames, Chat, Sex, WIPO Case No. D2002-0128. But more importantly, the evidence of the complainant’s use of the acronym in those cases was more extensive that the other two cases cited above.)

There have also been cases in which a different conclusion was reached: In Koninklijke Nederlandse Springsstoffen Fabriek N.V. v. Kim Hyungho GMM, WIPO Case No. D2002-0707, the complainant claimed rights in relation to KNSF, as an abbreviation of its company name. It also operated a website at . The domain name then at issue was . The evidence proffered by the complainant in that case was three newspaper articles. The articles started by using the full name of complainant, who thereafter was referred to as KNSF. The panel found that those articles only showed that the complainant’s business had been publicly mentioned under the letters KNSF as an abbreviation for the full company name. They did not show, the panel found, that the complainant was “generally known” by that abbreviation.

As noted above, ultimately, the evidence must show that the acronym has “become a distinctive identifier” for it to be a common law trademark. The mark UESP does not appear to have any generic meaning. And in the particular and specific industry in which the Complainant operates and markets itself, the evidence suggests that UESP would be naturally and distinctively identified with it. But this Panel considers that more prior panel decisions than not, involving similar facts, have reached a similar conclusion.

For these reasons, the Panel finds that the Complainant has sufficient rights in the mark UESP.

ii. The domain name is identical

Disregarding the “.com” extension, the disputed domain name is self-evidently identical to the mark UESP.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out matters by which a respondent may demonstrate that it has rights or legitimate interests in a domain name. However, the Respondent did not contest the statements by the Complainant. There is nothing in the nature of the website to which the disputed domain name reverts that suggests a right or legitimate interest in UESP. Without a Response, there is nothing else in the case file that indicates that the Respondent has such rights or legitimate interests.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides (in part) that there is evidence of bad faith registration and use where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

The Panel finds that all of the elements of paragraph 4(b)(iv) are established. The disputed domain name was registered in 2003, well after the Complainant began use of its own mark. It seems likely that the Respondent knew of the Complainant’s mark. In that connection, the website to which the disputed domain name refers includes links or references to “529 Utah”, “UESP” and “Uesp Account Access” (among others) - all which appear distinctively associated with the Complainant or its particular services.

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, , be transferred to the Complainant.

James A. Barker
Sole Panelist

Dated: March�21,�2006

Full & Egal Universal Law Academy