WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Arizona Board of Regents on behalf of the University of Arizona v. DNS, Admin, Nevis Domains / Gee Whiz Domains Privacy Service Case No. D2008-1543 1. The Parties
The Complainant is Arizona Board of Regents on behalf of the University of Arizona, Tucson, Arizona, United States of America (“United States”), represented by Kilpatrick Stockton, LLP, United States of America.
The Respondents are DNS, Admin, Nevis Domains, Charlestown, Saint Kitts and Nevis, and Gee Whiz Domains Privacy Service, Las Vegas, Nevada, United States of America (hereinafter collectively referred to as the Respondent). 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2008 against Gee Whiz Domains Privacy Service. On October 10, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On October 14, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on October 21, 2008 naming DNS, Admin, Nevis Domains as the Respondent. 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 October 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on November 19, 2008.
The Center appointed David Stone as the sole panelist in this matter on November 25, 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. 4. Factual Background
The Complainant is one of the leading public research universities in the American Southwest, producing more than $530 million in annual research. Since as early as 1915, the Complainant has used the name Arizona Wildcats in connection with the university and its athletic teams. Since as early as 1950, the Complainant has used the ARIZONA WILDCATS mark in identifying various clothing items and other licensed merchandise. Over the past five years, the Complainant's gross royalties for its licensed products, including those under its ARIZONA WILDCATS mark, has exceeded $5.2 million. For many years, the Complainant has used and promoted its ARIZONA WILDCATS mark on or in connection with its athletics teams and websites featuring information regarding education, athletics and sporting events.
The Complainant holds United States federal trademark registrations for ARIZONA WILDCATS in both standard letters and design form, including US Trademark Reg. No. 2,679,963 issued January 28, 2003 and US Trademark Reg. No. 1,504,908 issued September 20, 1988.
The disputed domain name was registered on or about March 4, 1999. At all relevant times, the domain name has led to a site displaying advertising from which web-users may “click through” to various sites, including, for example, NFL and NBA sports sites.
The original Complaint identified as the Respondent the registrant of the disputed domain name, namely Gee Whiz Domains Privacy Service. Following an invitation to amend the Complaint based on additional information provided by the registrar to the Center, the Complaint was amended to reflect the disclosed registrant information provided by the registrar. 5. Parties' Contentions A. Complainant
The Complainant submits that its widespread and extensive use of the Mark ARIZONA WILDCATS has led to substantial goodwill in that expression in the United States and elsewhere. As noted above, the Complainant also owns registered United States federal trade marks for the expression ARIZONA WILDCATS.
The Complainant submits that the domain name is identical to its registered trade marks and to the mark in which it has established substantial goodwill.
Further, the Complainant argues that the Respondent has no legitimate interest in the disputed domain name because:
I. the Respondent knew or ought to have known of the Complainant's registered trade marks and goodwill accumulated through long term use;
II the Respondent has not been commonly known as or done business in the name of ARIZONA WILDCATS;
III. the Respondent's use of the domain name to show a portal website containing links to other websites (commonly known as a “click-through” site), and for which the Complainant alleges the Respondent receives revenues, is not use in connection with a bona fide attempt to offer goods and services to the public;
IV. the Respondent's use of the disputed domain name is not legitimate noncommercial speech because no attempt has been made to communicate via the disputed domain name;
V. the Complainant has not authorised the Respondent to register or use the disputed domain name or its ARIZONA WILDCATS mark.
Further, the Complainant alleges that the disputed domain name was registered and is being used in bad faith because:
I. the Respondent has used the disputed domain name as a “click through” website and that such use disrupts the Complainant's business;
II. the Respondent is intentionally intending to attract Internet users to its website by creating a likelihood of confusion with the Complainant's ARIZONA WILDCATS mark; and
III. that use of a privacy service is suggestive of bad faith.
The Complainant requests that the domain name be transferred to the Complainant. B. Respondent
The Respondent did not file any submission or evidence. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
- that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
Paragraph 4(b) of the Policy sets out circumstances which, 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. A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant's registered ARIZONA WILDCATS mark as well as the sign ARIZONA WILDCATS used by the Complainant over many years. B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name. The Panel agrees with the Complainant's submission that the Respondent's use is little more than the use of a famous trade mark to divert traffic to itself for the purposes of raising click-through revenue.
In the absence of any submissions from the Respondent, the Panel also finds that the Respondent has not been commonly known as or done business in the name ARIZONA WILDCATS, nor is it authorised by the Complainant to use the ARIZONA WILDCATS trade mark.
None of the circumstances set out in Paragraph 4(c) of the Policy is made out. C. Registered and Used in Bad Faith
The Panel finds that the Respondent's bad faith can best be summarised as falling under Paragraph 4(b)(iv) of the Policy.
The Respondent has used and is using the disputed domain name for a portal or click-through website offering links to a variety of other websites including what appear to be websites of competitors of the Complainant. This constitutes use of the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the Respondent's website and other online locations by creating a likelihood of confusion with the Complainant's mark: see Bang & Olufsen a/s v. Unasi Inc,WIPO Case No. D2005-0728; Mudd, (USA) LLC v. Unasi, Inc. (MUDD PRODUCTS-COM-DOM),WIPO Case No. D2005-0591; and Microsoft Corporation v. Gioacchino Zerbo,WIPO Case No. D2005-0644. 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.
David Stone
Sole Panelist
Dated: December 9, 2008
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