WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION President and Fellows of Harvard College v. Domains By Proxy, Inc. Online Property LLC Case No. D2010-0263 1. The Parties
Complainant is President and Fellows of Harvard College of Cambridge, Massachusetts, United States of America, represented by Sunstein Kann Murphy & Timbers LLP, United States of America.
Respondents are Domains By Proxy, Inc. of Scottsdale, Arizona, United States of America and Online Property LLC of Janesville, Wisconsin, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2010. On February 22, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On February 24, 2010, GoD, Inc. 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 Complainant on March 2, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 5, 2010. The Center verified that the Complaint together with the amended 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 Respondents of the Complaint and the proceedings commenced on March 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2010. Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 31, 2010.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on April 19, 2010. 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
Harvard University (Harvard), founded in 1636, is the oldest institution of higher education in the United States of America.
Harvard owns numerous trademark registrations in the United States and other countries of its HARVARD mark and various HARVARD-formative marks. The record in this case specifically supports 11 registrations on the Principal Register of the United States, including HARVARD UNIVERSITY, Registration No. 1,578,190, registered 1/16/1990 in connection with educational services based on first use in 1827; HARVARD COLLEGE, Registration No. 2,498,203, registered 10/16/2001 in connection with educational services based on first use in 1638; HARVARD, Registration No. 1,608,533, registered 7/31/1990 in connection with educational services based on first use in 1827; and HARVARD UNIVERSITY, Registration No. 2,699,321, registered 3/25/2003 in connection with computer services based on first use on 1/1/1994.
Harvard has for some time operated a website at the domain name and owns other HARVARD-formative domain names.
Respondents registered the Domain Name on December 13, 2009, long after Complainant first used the name Harvard and well after Complainant registered the HARVARD mark in connection with educational services and computer services.
The Domain Name opens to a website headed “Online Education” and an opening “How to get an Ivy League Education at your own desk with Online Harvard.” The first paragraph of text contains several references to Harvard education, including “It has been a dream of many a student to attend Harvard University.” The site in fact does not link to or contain information about Harvard University but instead contains links to other educational services. The site states that it will be compensated if the user chooses to purchase services in the near future. 5. Parties' Contentions A. Complainant
Complainant contends that Respondents' Domain Name is identical and confusingly similar to Complainant's registered HARVARD trademarks. Complainant contends that HARVARD is among the world's most famous and well known trademarks and has been so found by prior UDRP panels. Respondents' use of the word “online” as part of the Domain Name is generic and does not distinguish the marks.
Complainant contends that Respondents have no legitimate interests in the Domain Name. Respondents have no affiliation with Harvard and have not sought or been granted a license to use the HARVARD mark. There is no information or reason to believe that Respondents are commonly known as “Harvard” or “Online Harvard.”
Complainant further contends that Respondents are using the Domain Name to prevent Internet users from reaching Harvard's natural webpage and, in diverting users from Harvard's site to Respondents' site for commercial gain, Respondents are not making a bona fide use of the Domain Name that would give them legitimate interests in that name.
Finally, Complainant contends that Respondents registered and are using the Domain Name in bad faith. Complainant asserts that Respondents are using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on that website. The website is intended to generate revenues to Respondents based on user clicks on the links to services advertised on the site. Complainant contends that this constitutes bad faith use.
Complainant further cites as evidence of bad faith Respondents' actual and constructive knowledge of Complainant's mark and creation of a false association between Harvard and the Respondents' website.
Complainant contends that there is no plausible good-faith explanation for someone not affiliated with Harvard to register a domain name consisting wholly of the entire HARVARD trademark and that Respondents' failure to use the site for a proper purpose is further evidence of bad faith.
Finally, Complainant contends that use of a proxy service, combined with other evidence, suggests bad faith. B. Respondent
Respondents did not reply to Complainant's contentions. 6. Discussion and Findings
Respondents did not respond to the Complaint therefore the Panel will consider whether Respondents have been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and sent the Written Notice in hard copy by courier to Respondents at the addresses provided in Respondents' registration information available in the WhoIs and from the Registrar. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondents of the Complaint and the administrative proceeding.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondents' failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) Respondents' Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondents registered and are using the Domain Name in bad faith.
The Panel considers the elements in order. A. Identical or Confusingly Similar
Complainant has established legal rights in its HARVARD trademark and various HARVARD formative marks, including, among others, HARVARD UNIVERSITY, by reason of long-term use in commerce and registration by the United States Patent and Trademark Office. Previous UDRP panels have found the HARVARD mark to be well-known. See President and Fellows of Harvard College v. Texas International Property Associates- NA NA,WIPO Case No. D2008-0597; President and Fellows of Harvard College, Harvard Business School Publishing Corporation v. Mr. Oezyurt,WIPO Case No. D2007-1538; President and Fellows of Harvard College, Harvard Business School Publishing Corporation v. LeEl T,WIPO Case No. D2007-1536; President and Fellows of Harvard College v. Nikolay,WIPO Case No. D2005-0120. This Panel so finds as well.
The Domain Name is confusingly similar, though not identical, to Complainant's mark. The Domain Name incorporates Complainant's HARVARD trademark completely and with correct spelling, which prior UDRP Panels have found to be sufficient to establish confusing similarity. See Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd.,WIPO Case No. D2009-0828; AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758.
The Domain Name adds to the HARVARD trademark the word “online” and the “.com” suffix. “Online” refers generically to the accessibility by computer connection of electronic information on another computer or computer network, such as on the Internet. This generic descriptor is insufficient to distinguish the Domain Name from Complainant's trademark and does not therefore negate the otherwise confusing similarity between the Domain Name and the trademark. See Delta Air Lines, Inc. v. Ruslan Moussaev,WIPO Case No. D2009-0718, and cases cited therein; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923 (“Generally, a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it,” citing J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23.50 (4th ed.)).
The “.com” generic top level domain is regarded as a nondistinctive functional necessity and irrelevant for the purpose of determining confusing similarity. Viacom International, Inc. v. Erik Peterson,WIPO Case No. D2001-0346.
The Panel concludes that Complainant has established that the Domain Name is confusingly similar to trademarks in which Complainant has legal rights. Policy, paragraph 4 (a)(i). B. Rights or Legitimate Interests
Complainant makes a prima facie case that Respondents have no rights or legitimate interests in the Domain Name.
Respondents are not using the Domain Name in connection with a bona fide offering of goods or services. Respondents, without authority from Complainant, use the Domain Name to divert Internet traffic from Complainant's website to a website falsely suggesting association with or sponsorship by Complainant but featuring links to websites offering the services of others, including some direct competitors of Complainant, and they appear to do so for the purpose of their own commercial gain. See Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe,WIPO Case No. D2007-1695; Mastercard International, Inc. v. Daniel Kaufman,WIPO Case No. D2006-1031; Deutsche Telekom AG v. Dong Wang,WIPO Case No. D2005-0819; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252 (no rights or legitimate interests where respondent generated commercial gain by intentionally and misleadingly diverting Internet users away from complainant's site to a competing website). Respondents intentionally create a false impression of association or sponsorship between Complainant and Respondents' website which is deceptive to the Internet user and presumptively harmful to Complainant's goodwill in its HARVARD mark. See, Shaw Industries Group, Inc., Columbia Insurance Company v. Administrator, Domain, WIPO Case No. D2007-0583; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Respondents' use of the Domain Name does not constitute a bona fide offering of goods or services under Policy, paragraph 4(c)(i) that would create legitimate interests in the Domain Name.
Complainant has not authorized Respondents' registration and use of a domain name incorporating the HARVARD trademark. There is no evidence that Respondents have been commonly known by the Domain Name. Policy, paragraph 4(c)(ii). See, Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (no rights or legitimate interests where (1) respondent is not a licensee of complainant; (2) complainant's rights in the mark precede respondent's registration; (3) respondent is not commonly known by the domain name in question).
The evidence suggests also that Respondents are not making either a noncommercial or a fair use of the Domain Name. Policy, paragraph 4(c)(iii). The website appears clearly to be commercial in nature in that it provides the user with links to a number of commercial sites and states that Respondents may earn revenues if users purchase services advertised on the website.
Respondents, in default, failed to produce evidence to rebut Complainant's prima facie case and have not, therefore, shown that they have rights or legitimate interests in the Domain Name. The Panel thus concludes that Complainant has established that Respondents have no rights or legitimate interests in the Domain Name. Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant must demonstrate that Respondents both registered and are using the Domain Name in bad faith. Policy, paragraph 4(a)(iii).
Respondents' use of such a well-known, long-registered and much longer-used trademark as HARVARD as the basis of their domain name gives rise to an inference that Respondents registered the Domain Name with actual and constructive knowledge of Complainant's trademark. This is in itself evidence of bad faith registration. Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598. See also Delta Air Lines, Inc. v. Ruslan Moussaev,WIPO Case No. D2009-0718 and cases cited therein. There is no plausible explanation for someone unaffiliated with Harvard University to register a domain name using the HARVARD trademark to lead Internet users to a website advertising education services, unless the purpose is to exploit the goodwill Harvard has in its name and trademark in connection with the field of higher education. Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598.
Paragraph 4(b)(iv) of the Policy provides that the following, among other factors, shall be evidence of the registration and use of a domain name in bad faith:
By using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site . . . by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
This is precisely what Respondents do with the Domain Name here. The Domain Name uses the HARVARD trademark to suggest that an Internet user can find and access online information concerning Harvard University and obtain Harvard educational services. The title, headline and text on the website all suggest that the website is about obtaining information about how to obtain a Harvard education. This proves to be completely false and misleading to an Internet user. Respondents are clearly using a false association with Complainant and the resulting confusion to divert the Internet user to Respondents' website for the purpose of Respondents' own commercial gain. It is clear on the face of the website itself that Respondents intend to generate advertising revenues from click-throughs, which satisfies the commercial gain element of bad faith described in paragraph 4(b)(iv) of the Policy. Respondents' website thus constitutes clear evidence of bad faith registration and use of the Domain Name, as described in Policy, paragraph 4(b)(iv). See Delta Air Lines, Inc. v. Ruslan Moussaev,WIPO Case No. D2009-0718 and cases cited therein.
The use of a proxy service to hide the identity of the actual domain name registrant can have legitimate purposes, but it can also be suggestive of bad faith, depending upon the circumstances of a particular case. See Microsoft Corporation v. Whois Privacy Protection Services/Lee Xongwei,WIPO Case No. D2005-0642. The Panel finds that the use of a proxy registration suggests bad faith under the circumstances of this case.
The Panel concludes that Complainant has established that Respondents registered and use the Domain Name in bad faith. 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 Complainant.
John R. Keys, Jr.
Sole Panelist
Dated: May 3, 2010
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