WIPO Domain Name Decision: D2009-0460 (function(w,d,s,l,i){w[l]=w[l]||[];w[l].push({'gtm.start':new Date.getTime,event:'gtm.js'});var f=d.getElementsByTagName(s)[0],j=d.createElement(s),dl=l!='dataLayer'?'&l='+l:'';j.async=true;j.src=''+i+dl;f.parentNode.insertBefore(j,f);})(window,document,'script','dataLayer','GTM-P7RLS2'); WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Drake University v. Drake State University Case No. D2009-0460 1. The PartiesThe Complainant is Drake University of Des Moines, Iowa, United States of America, represented by McKee, Voorhees & Sease P.L.C., United States.The Respondent is Drake State University of Rockford, Illinois, United States. 2. The Domain Name and RegistrarThe disputed domain name is registered with GoD, Inc. 3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2009. On April 8, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 8, 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. 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”).On April 13, an e-mail communication was received by the Center from the Respondent, presenting an informal response to the Complaint. The following day, on April 14, 2009, the Center received an additional e-mail communication from the Respondent, containing a “final addendum response to the complaint”. The Center acknowledged both communications on April 15, 2009, indicating that if no further messages or formal Response were received from the Respondent, these communications would be forwarded to the administrative Panel on appointment. There have been no further communications from the Respondent in this case.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 April 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2009. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent of the expiry of the Response period on May 12, 2009.The Center appointed William R. Towns as the sole panelist in this matter on June 3, 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. 4. Factual BackgroundThe Complainant, Drake University, is a private university founded in 1881 that currently offers more than 70 undergraduate majors in addition to advanced degrees, including postgraduate degrees in law and pharmacy. The Complainant owns a number of federal trademark registrations for DRAKE issued by the United States Patent and Trademark Office (USPTO), and claims to have used the mark in commerce in the United States since as early as 1881.The Respondent registered the disputed domain name on November 28, 2006. The disputed domain name resolves to the Respondent's website, on which the Respondent's educational services purportedly are offered. “Drake” is prominently displayed at the top of the Respondent's website, the contents of which are asserted to be copyrighted by “The Trustees of Drake State University”. The home page of the Respondent's website also refers to “[t]he Drake faculty”. There is no disclaimer respecting the Complainant on the Respondent's website.According to the WhoIs information maintained by the concerned registrar, the Respondent is located in Rockford, Illinois. The Respondent's website, however, represents that “Drake State University is an outreach organization headquartered in California”. The notice of dispute that the Complainant sent to the Respondent's WhoIs mailing address in Rockford, Illinois was returned by the U.S. Postal Service as undeliverable. 5. Parties' Contentions A. ComplainantThe Complainant maintains that the disputed domain name is confusingly similar if not identical to its DRAKE mark, in which Complainant has established rights through registration and through continuous use of the mark for over 125 years. The Complainant asserts that it is well known for its educational services, and alleges that the Respondent intentionally chose a domain name confusingly similar to Complainant's DRAKE mark in order to engender confusion among students and to trade on the goodwill developed in the Complainant's mark.The Complainant asserts that it has not authorized the Respondent to use the Complainant's mark, and that the Respondent has no relationship, association or affiliation with the Complainant. According to the Complainant, the Respondent has never been known by the disputed domain name. The Complainant argues that there is no evidence that the Respondent (Drake State University) actually exists – that is, no record of any state university or other educational institution by that name in either Illinois or California. Further, according to the Complainant, the Respondent's WhoIs mailing address and telephone number are fictitious.The Complainant argues that while educational services may be offered on the Respondent's website, any such offering of services is not bona fide. According to the Complainant, the Respondent is not accredited by any accreditation body recognized by the U.S. Department of Education, and the Respondent's website serves merely to provide a veneer of legitimacy to an otherwise illegitimate service. Further, the Complainant maintains that the Respondent cannot establish rights or legitimate interests in the disputed domain name in connection with an offering of services that relies exclusively on creating a likelihood of consumer confusion as to an affiliation with the Complainant.The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that the Respondent knew or should have known of the Complainant's rights in the DRAKE mark when the disputed domain name was registered. The Complainant further contends that the Respondent registered the disputed domain name for no apparent purpose other than to trade upon the goodwill in the Complainant's mark. According to the Complainant, the evidence establishes that the Respondent is acting in bad faith by intentionally attempting to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's DRAKE mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's services. B. RespondentThe Respondent did not formally reply to the Complainant's contentions. As previously noted, however, the Respondent submitted an informal response to the Center on April 13, 2009, followed by an addendum thereto on April 14, 2009. The Respondent asserts in its submission of April 13, 2009, that the Complainant cannot assert exclusive rights to the surname “Drake” in connection with educational services. According to the Respondent, Drake State University bears the surname of its founder, James M. Drake. On this basis, the Respondent claims an equal right to use “Drake”, and denies any bad faith.Nevertheless, in the addendum submitted by the Respondent on April 14, 2009, the Respondent states that after consulting with legal counsel the Respondent is taking steps to cease its services under the “Drake” name. The Respondent indicates that it would like to default in this matter, and requests a period of three weeks to make preparations for this change in brand. In the event of a decision on the merits under the Policy, the Respondent requests that the disputed domain name be cancelled rather than transferred to the Complainant. 6. Discussion and Findings A. Scope of the PolicyThe Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “[c]ybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See the Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and(ii) The respondent has no rights or legitimate interests with respect to the domain name; and(iii) The domain name has been registered and is being used in bad faith.Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is confusingly similar to the Complainant's DRAKE mark, in which the Complainant unquestionably has demonstrated rights for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr.,WIPO Case No. D2000-1525. The disputed domain name incorporates the Complainant's mark in its entirety, and as such is confusingly similar under this standard. The addition of the letter “u” does not serve to dispel confusing similarity between the disputed domain name and the Complainant's mark, and given that the Complainant is a long-established university, may in fact compound the confusion (“Drake U”).1Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate InterestsAs noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden is shifted to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. It is uncontroverted that the Complainant has not authorized the Respondent to use the DRAKE mark. The record nonetheless reflects that the Respondent registered the disputed domain name, which incorporates the Complainant's mark in its entirety, and uses the disputed domain name to divert Internet users to a website from which the Respondent appears to offer educational services that appear to compete with those offered by the Complainant. This is sufficient in the Panel's judgment to constitute a prima facie showing under paragraph 4(a)(ii). See, e.g., Document Technologies, Inc., supra; Compagnie de Saint Gobain v. Com-Union Corp.,WIPO Case No. D2000-0020.Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or(iii) the respondent is 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.There is no evidence in the record that the Respondent has been commonly known by the disputed domain name. The Respondent's name ostensibly is “Drake State University”, and no evidence has been presented that the Respondent is commonly known as “Drake”, “Drake University” or “Drake U”.The Respondent maintains that is has rights or legitimate interests in the disputed domain name because “Drake” is a surname – namely, that of its founder, James M. Drake. Whether this is in fact the case is unclear; there is no mention of James. M. Drake on the Respondent's website. Regardless, the use of a confusingly similar domain name to trade on the goodwill of another's mark does not qualify as a bona fide offering of goods or services. See Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380. The Respondent likely was aware of the Complainant when the disputed domain name was registered. As noted earlier, the Respondent prominently displays the Complainant's DRAKE mark on the home page of its website, which also contains references to the “Drake faculty” and attributes copyright ownership to the “Trustees of Drake State University”. The Complainant has submitted evidence of actual confusion among students who have mistaken the Respondent's website for that of the Complainant.Taking into consideration the totality of circumstances in the record, the Panel is persuaded that the Respondent more likely than not had the Complainant's mark in mind when registering the disputed domain name, and that the Respondent's aim in registering this confusingly similar domain name was to trade on the goodwill in the Complainant's mark. This does not constitute the use of the disputed domain name in connection with a bona fide offering of goods or services. Nor in light thereof can the Respondent credibly claim to be making a legitimate or fair use of the disputed domain name, regardless of whether “Drake” is a surname. See Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986.Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.As noted earlier, the Panel draws an inference from the circumstances of this case that the Respondent was aware of the Complainant's rights in the DRAKE mark when registering the disputed domain name. The Respondent's registration of the disputed domain name with knowledge of the Complainant's existing trademark rights is evidence of bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. The Panel also is persuaded from the record that Respondent chose the disputed domain name primarily for the purpose of exploiting and profiting from the Complainant's mark, which constitutes bad faith. See Aubert International SAS and Aubert France SA, supra. The Panel concludes that the Respondent has used the disputed domain name in bad faith in an intentional attempt to attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion in terms of paragraph 4(b)(iv) of the Policy. See E v. Ult. Search Inc.,WIPO Case No. D2001-1319.Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. DecisionFor 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. William R. Towns Sole PanelistDated: June 17, 2009 1 The Complainant observes that “U” is commonly used as an abbreviation for “University” in the context of domain names.
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