The Complainant is West Virginia University Board of Governors for and on behalf of West Virginia University of Charleston, West Virginia, United States of America, represented by Jackson Kelly, PLLC, United States of America.
The Respondent is WV Sports Report of Cross Lanes, West Virginia, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2011. On December 8, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, 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”).
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 December 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2012.
The Center appointed Richard Hill as the sole panelist in this matter on January 13, 2012. 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 owns trademark rights in the term “wvu” and is well-known under that acronym, in particular for its sports teams.
The Complainant has not granted the Respondent any license, permission, or any other right or authority to use any domain name incorporating the Complainant’s mark.
The Respondent is using the disputed domain name to point to a website that offers sports information and products and services related to sports, including products that compete with those of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant states that it owns a United States Registered Trademark for the term “wvu”. That mark has been used by the Complainant for clothing (namely t-shirts, sweatshirts, polo shirts, caps and jackets) since no later than 1985 and for providing facilities for collegiate sporting events (namely basketball, football and baseball games) since 1891. Thus, the WVU mark has long been used to identify the Complainant and its athletics teams.
The Complainant alleges that the disputed domain name is confusingly similar, in the sense of the Policy, to its mark because it incorporates the mark in its entirety and merely adds to it the term “sports” which is related to the Complainant’s activities. The Complainant cites UDRP precedents to support its position.
According to the Complainant, the Respondent intended to and actually used the disputed domain name to provide “online services about all things West Virginia University sports and to sell WVU merchandise”.
Further, says the Complainant, there is not and never has been any affiliation between the Complainant and the Respondent and the Complainant has not granted the Respondent any license, permission, or any other right or authority to use any domain name incorporating the Complainant’s mark.
The Complainant alleges that the Respondent intends to make a profit using the Complainant’s mark to direct Internet users to its website, which offers products that compete with those of the Complainant. This is not a legitimate use of the Complainant’s mark. The Complainant cites UDRP precedents to support its position.
The Complainant states that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion or an appearance of affiliation with the Complainant and its mark, which constitutes bad faith registration and use under the Policy. The Complainant cites UDRP precedents to support its position.
Further, says the Complainant, the Respondent is based in West Virginia. The use of the Complainant’s mark in the disputed domain name is an intentional attempt to create a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, and/or endorsement of the website at the disputed domain name or the “” website to which it resolves. Any person residing in the State of West Virginia knows what “wvu” refers to, as the Complainant is the only educational institution in the state identified with these letters and with nationally recognized collegiate athletic teams. The Respondent’s use of the disputed domain name is simply a blatant attempt to capitalize and profit from the Complainant’s registered mark, which constitutes bad faith registration and use under the Policy. The Complainant cites UDRP precedents to support its position. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant owns rights in the WVU mark and is active in sports. The disputed domain name is confusing similar to its mark because it combines the mark with a descriptive term. See Novell, Inc. v. Taeho Kim, NAF Claim No. 0167964 (finding the domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also American International Group, Inc. v. Ling Shun Shing, NAF Claim No. 0206399 (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy, paragraph 4(a)(i) because the appended term related directly to the complainant’s business).
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
The Respondent does not present any explanation for its registration of the disputed domain name. In accordance with paragraph 14(d) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s silence. Since the record shows that the Respondent is well aware of the Complainant’s mark, products, and services, the Panel infers from the Respondent’s silence that it has no plausible explanation for its registration of the disputed domain name.
Indeed, there is no evidence to show that the Respondent has any rights to the disputed domain name.
Further, the Panel holds, for the reasons set forth below, that the Respondent registered and is using the disputed domain name in bad faith and thus cannot have rights or legitimate interests in the disputed domain name.
Moreover, where a party has registered and used a domain name in bad faith, that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan,WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937. C. Registered and Used in Bad Faith
On the basis of the evidence available to it, the Panel holds that the disputed domain name was registered and is being used primarily for the purpose of marketing products that compete directly with those of the Complainant. Thus the Respondent attempts to attract for commercial gain Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a service on the Respondent’s website.
This constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. See Shaw Industries Group, Inc. and Columbia Insurance Company v. Click Consulting Ltd.WIPO Case No. D2006-1422; and HYDAC Technology GmbH v. Click Consulting Ltd.,WIPO Case No. D2006-1364.
Moreover, as the Complainant correctly notes, the Respondent’s website is such that it will likely lead to confusion among Internet users as to the Complainant’s sponsorship of or affiliation with the resulting website. Such use is further evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b)(iv). See American University v. Richard Cook, NAF Claim No. 0208629 (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith”); see also Perot Systems Corp. v. P, NAF Claim No. 0095312 (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Richard Hill
Sole Panelist
Dated: January 15, 2012
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