WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Universidad Autónoma de Nuevo León (UANL) v. Portfolio Brains, LLC Case No. D2009-0805 1. The Parties
The Complainant is Universidad Autónoma de Nuevo León (UANL) of San Nicolás de los Garza, Nuevo León, Mexico, represented by Juan Angel Garza Vite, Mexico.
The Respondent is Portfolio Brains, LLC of Los Angeles, California, United States of America, represented by Willenken Wilson Loh & Lieb, LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with NameK. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2009. On June 23, 2009, the Center transmitted by email to NameK a request for registrar verification in connection with the disputed domain name. On June 24, 2009, NameK 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced June 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2009. The Response was filed with the Center on July 14, 2009.
The Center appointed James A. Barker, Kiyoshi Tsuru and David E. Sorkin as panelists in this matter on August 4, 2009. The Panel finds that it was properly constituted. Each member of 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, Universidad Autónoma de Nuevo León, is a university in the State of Nuevo León, Mexico. It is one of the three largest universities in Mexico. It was established in 1933 as the Universidad de Nuevo León. In 1971, it became autonomous from the Government of Nuevo León. It serves around 120,000 enrolled students.
The disputed domain name was registered in May 2002. At the date of this decision it does not revert to an active website.
The Respondent has previously been an unsuccessful respondent in cases decided under the Policy. These include American Airlines, Inc. v. Portfolio Brains, LLC, NAF Case No. FA1247273; Vacation Publications, Inc. v. Portfolio Brains, LLC, NAF Case No. FA1139522; Ace Cash Express, Inc. v. Portfolio Brains, NAF Case No. FA1093846; Mahindra & Mahindra Limited v. Portfolio Brains LLC,WIPO Case No. D2009-0209. In the latter case, the panel found that the involvement of the Respondent in prior cases demonstrated a pattern of bad faith conduct under paragraph 4(a)(iii) of the Policy. 5. Parties' Contentions A. Complainant
The Complainant is the owner of a number of marks registered in Mexico for UANL. That mark is derived from the acronym of the name of the Complainant: Universidad Autónoma de Nuevo León. Those marks were registered in 2008, with a claimed first use in commerce in 1971. The Complainant claims that the disputed domain name is identical to those marks.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent cannot demonstrate any of the matters set out in paragraph 4(c) of the Policy that would provide evidence of rights or legitimate interests. The Respondent is not known by the disputed domain name; and does not have the Complainant's authorization to use UANL in a domain name.
The Complainant claims that the disputed domain name should be considered as having been registered and used in bad faith. The denomination UANL is well-known in Mexico and abroad. In this respect, the Complainant refers to a number of achievements of the university such as:
- research work carried out by the university, including patent registrations;
- collaboration agreements the university has entered with many universities in a large number of countries;
- the achievements of a number of its alumni;
- soccer teams affiliated with the university, including “Tigres UANL”;
- the results of searches for that term conducted using Google, Yahoo! and Altavista, most of which relate to the Complainant;
- various articles on the Internet that relate to the Complainant.
The Complainant says that the Respondent deliberately chose the disputed domain name because of its association with the Complainant. The Respondent can only have registered the disputed domain name in a fraudulent, improper and illicit way, for personal economic gain. The links on the Respondent's PPC website indicate that the Respondent registered the disputed domain name to sell it to the Complainant or its competitors. The Respondent has used metatags in its website which indicate bad faith. The Respondent's use of the disputed domain name in connection with a PPC website also indicates bad faith. The Respondent cannot demonstrate any preparations to use the disputed domain name in connection with a bona fide offering of goods or services. B. Respondent
The Respondent denies the claims made against it.
The Respondent says that the Complainant has not provided any evidence to suggest that the Complainant has rights in the generic four letter string “u-a-n-l” separate to specific fields of use in Mexico. While the Complainant may have limited trademark rights in a particular country, it does not have rights to “u-a-n-l” across the world.
Numerous panels have found that the use of domain names in connection with PPC websites is legitimate and establishes rights or legitimate interests in a domain name. When the disputed domain name is generic or descriptive, a registrant can obtain rights or legitimate interests in the domain name by being the first to register it and/or by providing PPC advertising services. UANL is just a generic string of four letters.
The Respondent is offering a legitimate service to consumers by helping them find the services they seek. The Complainant notably (and understandably) highlights a handful of keywords which appeared on the website “www.” (due to monetization software not in the Respondent's control) that were school related but completely ignores all the other keywords which appeared on “” which have absolutely nothing to do with the Complainant.
The Respondent claims that the Complainant has not provided any evidence to support a finding that the disputed domain name was registered and has been used in bad faith. The Respondent has not offered to sell, rent, or otherwise transfer the domain name to Complainant or a competitor. The Respondent, the owner of a domain name portfolio, is not in the business of providing educational services in competition with the Complainant. The Respondent has not targeted the Complainant's mark. The Respondent did not actually know of the Complainant, a Mexican university having only Mexican trademarks.
The Respondent also denies that it should have known of the Complainant's mark. The Respondent is not an educational institution that would have had a chance to interact with the Complainant or a soccer aficionado that is familiar with the Complainant's soccer club, such that it should be charged with knowledge of the Mexican university. The Complainant does not have a registered trademark in the United States of America for “uanl” such that the Respondent would have constructive knowledge of it.
In support of its argument that it lacked knowledge of the Complainant, the Respondent provides a declaration by an attorney (not its representative in these proceedings), who states that he is qualified to attest on behalf of the Respondent. In it, he declares that the Respondent “had never heard of the Complainant in this matter prior to the filing of this UDRP”. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows. A. Identical or Confusingly Similar Complainant's registered rights
The Complainant provided various evidence of its registered marks in Mexico for UANL. The disputed domain name is substantially identical to those marks. It incorporates, without adornment, the same letters in the same order.
The Respondent does not dispute (and it could not reasonably do so) that the Complainant has registered rights in Mexico. The Respondent however says that the Complainant does not have rights “across the world”. That may be true. But that is not relevant. Under paragraph 4(a)(i) of the Policy, the Complainant need only establish that it “has rights” in a mark, which is what it has done.
For these reasons, the Complainant has established that the domain name is identical to a mark in which it has rights, under paragraph 4(a)(i). Complainant's unregistered rights
Although it is not necessary to consider whether the Complainant has an unregistered mark for the purpose of paragraph 4(a)(i) of the Policy, it is important to the two grounds that follow, relating to paragraphs 4(a)(ii) and (iii). The importance of this issue lies in the fact that the disputed domain name was registered in 2002 – around 6 years before the registration of the Complainant's marks. Neither party explicitly addressed this issue. The Panel does not consider that this failure limits its consideration. The Panel thinks that it should address this issue to give a fully deliberated decision on the evidence in the case file.
For common law or unregistered rights in a mark to be established for the purpose of the Policy, the Panel must find that, on the balance of probabilities, the relevant mark has become distinctively identified with the Complainant. Some panels have also noted that having rights in a common law mark indicates that the ‘owner' of the mark would succeed in an action for passing off or misleading conduct against another who used that mark. For example, the panel in Fortune Promoseven v. IQ,WIPO Case No. D2001-1370 noted that common law rights are:
“…rights in and to a name or logo, for example, which are ordinarily rights acquired through long and extensive use such as to entitle the holder to succeed in a passing off action or unfair competition action. The basis of the action is that the unauthorized use of the name or logo or other device by a third party will be likely to lead people to believe that the use in question is by or with the authority of the rights owner.”
On balance, the Panel considers that the Complainant provided sufficient evidence for a finding that it has unregistered rights in UANL as a mark. From the evidence in the case file, that four letter string has limited associations other than with the Complainant. The Complainant's reputation is readily discernible through Internet searches, which are not constrained by jurisdictional limitations. The Panel accepts that the Complainant is a significant educational institution and has, for a substantial period of time, been well-known in Mexico as ‘UANL'. As an independent institution, the Complainant has been so identified since at least 1971. The Panel also accepts that the Complainant's mark is identified with soccer teams with which it is affiliated, including “Tigres UANL”. The Panel accepts these matters even though the Complainant provided little direct evidence of them. The Complainant provided various recent evidence of the reputation of its mark (including the results of Internet searches, as well as various articles about it on the Internet which identify the Complainant by its acronym). Being recent, this evidence does not directly establish that the Complainant has acquired rights in UANL as a mark through ‘long and extensive' use. However, the Panel considers it reasonable to infer, from the Complainant's evidence, that the Complainant's reputation has been developed over a substantial period, and in various fields connected with its activity as a university. This was not a matter relevantly disputed by the Respondent.
This does not mean that the Complainant's evidence was strong. As noted above, the Complainant made no argument that it had rights in an unregistered mark. A substantial amount of the evidence provided by the Complainant (including evidence of the Complainant's collaboration agreements with other universities, and its various patents) was not particularly relevant to demonstrating the reputation of its mark. Many of the media articles attached to the Complaint appeared to use the term UANL only after first identifying the name of the Complainant in full. This suggests that UANL was used in those articles as a convenient acronym, rather than as a mark per se. That is, a number of those articles suggest that the Complainant is not so well-known as ‘UANL' that it is unnecessary to spell out its name in full.
While acknowledging these weaknesses in the Complainant's evidence, the Panel is satisfied, on the balance of probabilities, that the Complainant also has unregistered rights in UANL. For the reasons set out above, the Panel considers that those rights would have subsisted before the registration of the disputed domain name in 2002. B. Rights or Legitimate Interests
The Panel also considers, on the balance of probabilities, that the Respondent has no rights or legitimate interests in the disputed domain name.
The consensus of previous decisions under the Policy is that a complainant establishes this element by making out a prima facie case against the Respondent. (See Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.) Here, the Complainant has sufficiently made out such a case. The burden then shifts to the Respondent to rebut the case against it. The Panel considers that the Respondent has not rebutted that case.
The Respondent claims that it has rights or legitimate interests in the disputed domain name because the term “UANL” is “generic”, and that its PPC website may be legitimately used in connection with such a generic term. However the Respondent provides no explanation at all for this claim. What class of goods or services does UANL refer to? The Panel is not aware that UANL has any generic or descriptive meaning. The Respondent has not identified any. The Complainant has provided evidence of Internet searches which indicate that the term is substantially associated with the Complainant. The Respondent provided no evidence that UANL has any other association, such as with third parties. The Respondent refers to a number of prior cases decided under the Policy relating to PPC websites. However, those cases all concerned self-evidently descriptive terms registered as domain names. It is not self-evident that UANL has any descriptive meaning.
It may be that the Respondent is saying that UANL is generic because the Respondent registered it as a random series of letters. Even if this is the Respondent's claim, the Respondent provided no evidence of having registered the domain name randomly. For example, no evidence was provided of any other randomly registered domain names. Neither did the Respondent provide any plausible explanation as to how or why it chose the disputed domain name in particular - as opposed to any other random four letter combination.
The Respondent has not otherwise demonstrated circumstances, including those in paragraph 4(c) of the Policy, which might support its rights or legitimate interests. In particular, paragraph 4(c)(i) provides that a respondent may demonstrate a right or legitimate interest if it has made a bona fide offering of goods or services. Previous panels have found that the use of a domain name, incorporating a complainant's mark, in connection with a PPC landing site, is not relevantly bona fide. (See e.g. Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073). In the absence of any evidence that UANL has a descriptive meaning, and because of the circumstantial evidence of bad faith as set out below, the Respondent's use in this case appears relevantly similar. 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 in circumstances where the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship or affiliation, or endorsement of the Respondent's website. The Panel considers that there is sufficient evidence of this kind of bad faith. The Respondent's website, being a PPC landing website, is one that operates for commercial gain by attracting Internet users. As noted above, the disputed domain name is identical to the Complainant's mark and is likely to create confusion for that reason.
To substantiate a finding under paragraph 4(b)(iv) of the Policy, there must also be evidence that the Respondent deliberately targeted the value of the Complainant's mark. The Complainant claims that the Respondent must have been aware of its mark because that mark was and is well-known. As set out above, the Complainant had no registered mark when the disputed domain name was registered in 2002. If it had no other trademark rights, the Complaint might well have failed for the reasons set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. As set out in paragraph 3.1 of that Overview, the consensus view is that “Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right”.
The Panel has therefore looked to whether the Complainant can rely on its unregistered rights in UANL, for the purpose of demonstrating bad faith registration and use of the disputed domain name. The question then is whether the Respondent registered the disputed domain name knowing of the Complainant's rights in its mark, and intending to unfairly exploit the value of that mark.
The Respondent flatly denies a specific awareness of the Complainant when it registered the disputed domain name. However, on balance, the Panel does not consider that denial to be sufficiently credible for the following reasons.
Firstly, the term “UANL” appears to have few obvious associations other than with the Complainant. To support this, the Complainant provides the results of various Internet searches, as well as various articles referring to it on the Internet. As noted above, while that evidence is more recent than the registration of the disputed domain name, the Panel considers it reasonable to infer that the Complainant was similarly well-known when the disputed domain name was registered. The Respondent provides no evidence that would support a different finding.
Secondly, the disputed domain name is not comprised of such a short combination of letters that it is easy to imagine it being registered at random. If the disputed domain name were comprised only of a two or three letter combination, the Panel could imagine it being speculatively registered. This is simply because short terms are more likely to have a number of associations and, as such, a higher value as domain names. The Panel considers that a four letter combination, as in this case, is less likely to have value of that kind.
Thirdly, the Complainant (based in Mexico) and the Respondent (based in California) are geographically proximate. While the Respondent relies, in part, on the Complainant's separate country of business to deny knowledge of the Complainant's mark, the Panel considers that it would be artificial to infer that the Respondent's awareness of the wider world necessarily stops at its own jurisdictional boundary.
Fourthly, the Respondent has been a serially unsuccessful respondent in past cases under the Policy. (Referred to above under ‘Factual Background'.) A previous panel has found that the involvement of the Respondent in prior cases demonstrated a pattern of bad faith conduct under paragraph 4(a)(iii) of the Policy. That is, the Respondent has previously been found to have deliberately targeted complainants' trademarks, including for the purpose of linking them with PPC landing websites.
Fifthly, the Complainant provides evidence of the Respondent's website as at March 2004, October 2005, and November 2006. At those dates, the Respondent's website contained a variety of links with a self-evident relationship to the general field in which the Complainant does business. Those included links entitled e.g. “College Finder”, “College” and “Web Teaching Software”. (The Complainant also refers to other links appearing on those websites, at some other, unspecified date, which related more directly to the Complainant. The Complainant says that those included links such as “Carreras de UANL”. However the Complainant provides no supporting evidence of such links having appeared.)
The Respondent claims that these links appeared due to “monetization software” not in the Respondent's control. The Respondent notes that other links appeared on its website which had no relationship to the Complainant. While that may be, the Respondent cannot disclaim responsibility for links appearing on its own website. Recently, the more prominent of those links related to the Complainant's field of business. The circumstances otherwise set out above suggest that this was the ultimately intended result.
Finally, the Panel has not given substantial weight to the declaration attached to the Response, in which the Respondent's knowledge of the Complainant is denied. Ordinarily, the Panel considers that a declaration given under penalty of perjury should be considered carefully. However, the nature of the declaration is ambiguous. The Panel would usually expect such a declaration to be given by someone directly connected with the Respondent, and relating to that person's own knowledge. But in this case the declaration is given by an attorney. That attorney's relationship to the Respondent is not disclosed. The basis on which that attorney says he is “qualified to attest” on behalf of the Respondent is not spelled out. Neither is the basis for that attorney's statement that the Respondent had never heard of the Complainant.
Taken together, each of these factors creates a sufficient circumstantial case against the Respondent. It is not a case which the Panel considers is sufficiently rebutted by the Respondent's flat denial. The Respondent otherwise offers no real explanation as to how or why it registered the disputed domain name.
In making this finding, the Panel notes that the evidence in this case contains some contrary indications. It is notable that the Respondent has held the domain name since 2002. Evidence attached to the Complaint indicates that, in February and November 2003, the Respondent's website contained a broad variety of links, none of which related directly to the Complainant or its field of activity. Links relating to the Complainant's field of business arose later – on the Complainant's evidence, after March 2004. The Complainant refers to metadata on the Respondent's website. However, that metadata does not itself indicate any particular targeting of the Complainant. Further, and as noted above, the Complainant does not present much direct evidence of the notoriety of its mark around the time the disputed domain name was registered. Even considering these aspects of the evidence, the Panel finds that the circumstantial case against the Respondent is ultimately stronger, for the reasons set out above. 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
Presiding Panelist
Kiyoshi Tsuru
Panelist
David E. Sorkin
Panelist
Dated: August 18, 2009
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