WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Trustees of Princeton University v. Princeton Premier Case No. D2009-0056 1. The Parties
Complainant is The Trustees of Princeton University of Princeton, New Jersey, United States of America, represented by Fox Rothschild LLP, United States of America.
Respondent is Princeton Premier of Astoria, New York, United States of America, represented by Acquista & Associates, PC, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD Inc. 3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2009. On January 16, 2009, the Center transmitted by email to GoD Inc. a request for registrar verification in connection with the disputed domain name. On January 16, 2009, GoD Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details disclosing registrant and contact information for the disputed domain name and advising that the disputed domain name expires on February 12, 2009. On January 23, 2009, GoD Inc. confirmed that the disputed domain name would remain locked during the pending administrative proceedings at the Center. The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on January 23, 2009. In accordance with the Rules, Paragraph 5(a), the Response due date was February 12, 2009. The Response was filed with the Center on February 12, 2009.
The Center appointed John E. Kidd as the sole panelist in this matter on February 18, 2009. 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 February 18, 2009, the Respondent asked permission to supplement its Response by forwarding a copy of the Registry Book that Complainant finds offensive. On February 19, 2009, the Center advised the Respondent that there is no explicit provision under the Policy, the Rules or the Supplemental Rules for supplemental filings, however it would advise the Panel of the Respondent's request, and it would be at the Panel's discretion to consider such request. The Panel after reviewing the record, decided on February 27, 2009, to allow the parties to supplement their records, so that a more complete record was available to the Panel. The Respondent was advised that it could submit its Registry Book and Complainant was invited to submit any reply it may have of relevance to the content of the Book. The date of the Panel's decision was then extended to March 16, 2009. Respondent submitted its Registry Book and Complainant submitted a Reply. On March 13, 2009, Respondent then asked permission to respond to Complainant's Reply. On March 23, 2009, the Panel authorized a further supplemental filing by Respondent, limited, however, to only matters raised by Complainant in its Reply and extended the date of the Panel's decision to April 3, 2009. 4. Factual Background
Complainant is The Trustees of Princeton University, a well-known educational institute located in Princeton, New Jersey. Complainant registered the name PRINCETON as a trademark in 1993 and again in 1999, as well as the name PRINCETON UNIVERSITY in 1986 and 1988.
Complainant has also registered as trademarks four (4) other marks that incorporate as a component of the marks the name “Princeton”. Complainant for Internet purposes uses the domain name
Respondent does business as Princeton Premier and claims to own and operate an interactive online business network and website using that name where business leaders and professionals throughout the world are recognized. Princeton Premier is also a publisher of biographies of business people.
Respondent publishes the Princeton Premier 2007-2008 Honors Edition Registry (the Registry Book) that lists over 450 individuals and their businesses and personal accomplishments.
While many of the approximately 450 individuals listed are identified as attending educational institutions such as Harvard, Yale, Notre Dame, Georgetown and Oxford, the Panel could find only two individuals listed in the Registry Book that identified themselves as attending Princeton University.
A survey by the Panel1 also established that besides Princeton, New Jersey, there are at least eleven (11) other cities or towns that bear the Princeton name scattered throughout the United States, numerous streets in cities and towns throughout the United States using the name “Princeton”, and many third party companies, groups and services incorporate the Princeton name as part of their business name or logo.
Complainant has submitted e-mails from seven Princeton University alumni that called attention to solicitations by Respondent. One of the alumni commented “while it's true you're (Respondent) not really trying to represent yourself as being part of the University, I fully believe your use of their name is not coincidental.” Another alumnus commented “when it (actions by Respondent) did not go on to display anything official about the University, I became suspicious.” 5. Parties' Contentions A. Complainant
Complainant is the owner of marks for the names PRINCETON and PRINCETON UNIVERISTY and four other marks that incorporate as part of each mark the name PRINCETON. As such, Complainant contends it is the owners of a family of marks that use the name PRINCETON.
Complainant further contends that Respondent's acts of contacting and specifically targeting Complainant's alumni as to their interest in being included in its Registry Book, has created considerable confusion and false impression as having some connection with the Complainant, by its alumni and the general public. However, no evidence was offered as to the perception of the alumni in general or the general public's perception of Respondent's activity. Two of the alumni identified as targeted by Respondent, while appearing to have concern about the use of the Princeton name, were not misled by the solicitation.
Complainant also argues that it sent a number of cease and desist letters to Respondent, but that Respondent has never replied.
Complainant also contends that Respondent has no rights or legitimate interests in the disputed domain name, because it has no connection to the Town of Princeton, New Jersey, and has targeted at least seven alumni with inquires of whether or not they were interested in being included in Respondent's Registry Book.
Complainant also argues that for essentially the same reasons, Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
Respondent claims to have conducted its business and services under the name Princeton Premier since 2007. Respondent contends that it owns and operates an interactive on line business network website using its business name, where business leaders and professionals biographies are recognized, listed and have the ability to network with each other.
Respondent asserts that its business is not related to education in anyway whereas Complainant's marks are based on academia and education.
Respondent further contends that it has rights and legitimate interests in the disputed domain name by creating, using and registering it on February 2, 2007. Since then, Respondent claims it has made extensive commercial use of the disputed domain name in connection with its business which is a bona fide offering of goods and service.
Respondent alleges that it is commonly known by the disputed domain name which is also identical to its business name. Respondent further alleges that it is making fair use of its name without any intent to mislead or to disrupt Complainant's business. Further, that the disputed domain name has not been registered or used in bad faith.
Respondent argues that Complainant has not established that any of the three (3) conditions of the Policy, necessary for a transfer of the disputed domain name, are present in this case. 6. Discussion and Findings
The Panel has read and has considered all of the supplemental submissions of the parties. Each party, therefore, has had a fair opportunity to present its case. See DeDietrich Process Systems v. Kewmtron Ireland Ltd.,WIPO Case No. D2003-0484.
Paragraph 15(a) of the Rules sets out the principles this Panel is to use in rendering its decision for anyone seeking to have a disputed domain name transferred to it, under the Policy. The party seeking transfer has the obligation and must present satisfactory evidence that the three (3) conditions of Paragraph 4(a)(i), (ii) and (iii) of the Policy have been met. See PRGRS, Inc. v. BPB Prumerica Travel,WIPO Case No. D2002-0076. A. Identical or Confusing Similar
The Panel finds that Complainant has clearly established that it owns several registered marks comprised of or including the name “Princeton”. In this case, this is sufficient to establish Complainant's rights in the PRINCETON mark for the purpose of the first element of the Policy. However, the Panel also notes that the provided evidence only appears to give Complainant exclusive rights to the PRINCETON mark for selected goods and services, but does not of itself serve to establish rights (as claimed by Complainant) in a broader family of PRINCETON marks. Complainant offers only conclusionary argument in the latter respect and has offered no other evidence to establish that the criteria of Paragraph 4(a)(i) has been met. The Panel finds that simply using a series of similar marks or registering several marks with a common name does not of itself establish the existence of a family status. See Creamette Co. v. Merlino 299 F 2d. 55 (9th Cir. 1962) (status denied) and McDonald's Corp v. McBagels, Inc. 649 F. Supp. 1268 (S.D.N.Y. 1986) (status granted).
In any event, the Panel finds that the dominant component of the disputed domain name is PRINCETON, the same as the registered mark of Complainant. As numerous courts and prior UDRP Panels have recognized, the incorporation of a mark in its entirety into a disputed domain name is sufficient to establish that the disputed domain name is identical to the mark. The Panel finds that the disputed domain name is legally identical to Complainant's mark PRINCETON. The addition of word “premier” has little if any effect on the determination of legal identity. See Paccar, Inc. v. Tslescon Technologies, LLC, 115 F. Supp. 772 (E.D. Mich. 2000) (finding that is not appreciably different from the trademark PETERBUILT) and Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding that is legally identical to the trademark QUIXTAR). Numerous other Panel decisions have established that the addition of a common or dictionary word to a registered mark does not typically alter the fact of legal identity. Moreover, adding the generic top-level domain “.com” is insufficient to distinguish the disputed domain name from Complainant's mark. See Pomellato S.p.A. v. Tonetti,WIPO Case No. D2000-0493.
The Panel finds that the addition of the word “premier” to the word “Princeton” does not obviate the legal identity between the registered mark PRINCETON and the disputed domain name.
The Panel concludes that Complainant has adequately met its burden and established its rights in this case under the first condition under Paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interest
The second condition of Paragraph 4(a)(ii) requires Complainant to show that the Respondent has no rights or legitimate interests in the disputed domain name. The mere assertion that a respondent has no rights or legitimate interests in a domain name does not constitute proof. While numerous panels have recognized that proving a negative can be difficult and that a complainant is for that reason generally only required to make out a prima facie case that a respondent lacks rights or legitimate interests in order to shift the burden of proof to the respondent on this element, it is not entirely clear to this Panel that such a case has been established by Complainant on the provided record here. In any event, even proceeding on the assumption that it has been, Complainant's assertions have been vigorously disputed by Respondent, and ultimately, the overall burden of proof in such a case must rest with Complainant.
Complainant's case under the second element of the Policy is essentially to claim that Respondent:
1. has no actual connection to the town or borough of Princeton, New Jersey;
2. advertises and claims to publish the “Princeton Premier Business Leaders and Professionals Honors Edition section” of a registry, in which it claims to “include biographies of the world's most accomplished individuals”; and in doing so,
3. specifically targets alumni and the family of alumni of Princeton University with its advertising for inclusion in is publication, in support of which Complainant points to a sample of seven e-mails in which alumni of Complainant were asked by Respondent if they were interested in being included in Respondent's Registry Book.
Respondent's case in reply is essentially to claim that it is commonly known by the name “Princeton Premier”, and that it operates a business under that name offering bona fide goods and services to professionals all over the world. In support of such claims, in addition to the content of Respondent's website (from which it does indeed appear to be offering the claimed goods and services under the name “Princeton Premier”), the Respondent has provided a copy of a publication titled “Princeton Premier 2007-2008 Honors Edition Registry”, in which appears to be listed the names, resumes and contact details of various individuals from around the world.
Of itself, this does not constitute persuasive evidence that the Respondent is commonly known by the disputed domain name. It does however strongly suggest that the Respondent is using the domain name for an offering of goods or services. The key question here is whether such offering should be regarded as bona fide for the purpose of the second element of the Policy. This is a question often closely related to the issue of bad faith. In other words, does the balance of evidence suggest that the Respondent, in offering its goods and services through the disputed domain name, is doing so with the specific intention of targeting and profiting from confusion with Complainant's PRINCETON mark?
Respondent assets that it has never claimed any affiliation with Complainant, and the Panel notes that part of Complainant's own evidence would seem to confirm Respondent's assertion in this regard.
But this does not adequately explain - if indeed Respondent is not located in or in some way connected with a geographical area called Princeton - why Respondent would have chosen the word “Princeton” to be the dominant component of a domain name and registry services business offering information about professionals and university alumni from around the world? Why “Princeton Premier”? Why not of “Professional Premier”, or “Alumni Premier”, or some other variation that did not also happen to contain the Complainant's PRINCETON trademark. It would generally avail a respondent in a UDRP proceeding little to point to a potentially descriptive or geographic meaning of a term included in a domain name if that domain name is not in fact being used in a manner connected in some fashion with the descriptive meaning of the term. On the other hand, the Panel takes judicial notice that there are at least eleven (11) other cities or towns in the United States that are called Princeton, numerous streets in cities and towns throughout the United States using the name “Princeton” and many other third parties that use the name Princeton as a part of their business name. The Panel finds that such use is a common occurrence, and the name “Princeton” is used in a wide variety of businesses extending across a spectrum of business activities and geographic locations. This is a factor which, when weighed in the balance, militates against a finding in Complainant's favor on the rather limited provided record here.
As to the second of the Complainant's arguments, as noted above there are more than 450 entries in the Registry Book, and only two of these entries appear to identify a connection to Princeton University. This fact is consistent with the Respondent's claim that is not specifically targeting Princeton University alumni. And it may, on its face, be sufficient to answer Complainant's rather limited argument and evidence as put in the Complaint in the present proceedings.
As for Respondent's connection to the Town of Princeton, New Jersey, without more, this assertion is insufficient to prove the Respondent has no rights or interests in the disputed domain name. The Panel has also considered Complainant's assertions that the “family of alumni” and the “family of Princeton University” have been targeted by Respondent. The “family” references are undefined and thus ambiguous. Without context the conclusionary statements are insufficient to establish Complainant's burden of proof for the second condition under Paragraph 4(a)(ii) of the Policy.
However, the provided evidence does show that Respondent, in using its business and domain name, approaches business professionals all over the world who it believes are exceptional in their field, as to their interest in submitting a biographic background. The submitted material is then used to create Respondent's Registry Book. On balance, after careful consideration, the Panel finds that Complainant has failed in these proceedings to establish to the Panel's satisfaction that this does not constitute a bona fide offering of goods and services under the Policy, Paragraph 4(c)(i).
For all of the above reasons, in balancing the rights of Complainant and the apparent business of Respondent, the Panel finds that the Complainant has failed to sustain its burden under Paragraph 4(a)(ii) of the Policy. C. Registration and Use in Bad Faith
Because this Panel has determined that Complainant has not satisfied Paragraph 4(a)(ii) of the Policy, there is no need for the Panel to decide here on whether the Respondent has registered and used the disputed domain name in bad faith. See First American Funds Inc. v. Ult.Search, Inc.,WIPO Case No. D2000-1840 and PRGS, Inc. v. BPS Premerica Travel, supra.
If, however, material evidence was to come to light only after the issuing of the present Decision, the Panel would not exclude the possibly of a re-filing if the relevant well established criteria were to be met by the Complainant. See Creo Products Inc. v. Website In Development,WIPO Case No. D2000-1490. 7. Decision
For all of the foregoing reasons, the Complaint is denied.
John E. Kidd
Sole Panelist
Dated: April 30, 2009
Full & Egal Universal Law Academy