Complainant is Yale University (“Yale”) of New Haven, Connecticut, United States of America represented by Venable, LLP, United States of America.
Respondents are Domain Holding Corp. AS and Eric Keller of Farmingdale, New Jersey, United States of America, self-represented, collectively referred to as “Respondent.” 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2013. On August 8, 2013, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On August 9, 2013, the Registrar transmitted by e-mail to the Center its verification response confirming Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 16, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 6, 2013. The Response was filed with the Center on September 6, 2013.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 13, 2013. 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 paragraph 7 of the Rules. 4. Factual Background
Complainant is one of the oldest and most prestigious schools in the world. Founded in 1701, Complainant has been known as YALE COLLEGE or YALE UNIVERSITY for more than 300 years. Complainant holds various trademark registrations for the marks YALE, YALE COLLEGE, and YALE UNIVERSITY to identify and distinguish its various educational and related services.
The Domain Name was registered in December 1998. It is not clear from the record when Respondent, as opposed to some prior registrant, first registered the Domain Name.
The entire substantive response by Respondent is as follows:
“The URL was acquired for the purpose of establishing a tribute website to provide factual content and opinion regarding Yale University and the positive experiences enjoyed there by my son, Alexander Keller (Yale 2011). It is not intended to be used for any other purpose, and the planned website will include a clear disclaimer that the site is not associated with Yale University. I believe that this is a fair and permitted use of the URL.”
No exhibits are annexed to this Response.
According to Complainant, Respondent is a “notorious cybersquatter.” Complainant provided annexes to the Complaint indicating that Respondent and its aliases have been sued in various fora, including a federal court in New Jersey (plaintiff was Wal-Mart Stores, Inc.), in which the court entered a permanent injunction against Respondent, who had registered several domain names incorporating the Wal-Mart mark.
In another case, an administrative proceeding filed under the Policy, Respondent was ordered to transfer the domain name to the complainant polling organization. In that case, Respondent alleged:
“Respondent, Amish Country Store is the name utilized by Eric R. Keller to register and develop , and thus Eric R. Keller and Amish Country Store shall be considered the Respondent. Eric R. Keller is the father of Eric Gallup Keller, age 15, who is the first great-grandchild of the late George H. Gallup, founder of the Gallup Organization.”
Complainant also alleges that Respondent was sued for cybersquatting by Brach’s Confections, Inc. in federal court in the state of Illinois, United States of America.
Respondent has not denied any of the foregoing allegations about his role in these other cybersquatting cases.
The website to which the Domain Name resolves currently is parked at a GoD page which states, among other things, “Want to buy this domain?” In prior years, the Domain Name resolved to a slightly more developed website featuring a picture of several purported students. In 2011, the site contained various links, including: Yale University, student loans, Syracuse University, Howard University, University of Illinois, Northwestern University. In 2012, these links were removed, but the site stated “BUY THIS DOMAIN.” 5. Parties’ Contentions A. Complainant
The relevant assertions in the Complaint are recorded above. Complainant maintains that it has satisfied all three elements under the Policy and is therefore entitled to a transfer of the Domain Name. B. Respondent
Respondent’s entire Response is quoted above. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant clearly holds rights, through registration and use, in the famous mark YALE UNIVERSITY. The Domain Name is identical to the mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel does not accept Respondent’s assertion that the Domain Name was registered in order to pay “tribute” to Complainant and reflect the pleasant experiences of Respondent’s alleged son. There is simply no evidence that this claim is anything but a pure fabrication. The “son” was a 2011 graduate, and in two years, there apparently have been no preparations to set up even a rudimentary “tribute” site. Moreover, this unsupported claim is belied by the other evidence that Respondent is a serial cybersquatter. Respondent did not even deny the allegations to this effect.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
It is undisputed that Respondent was aware of the famous YALE family of marks at the time he registered the Domain Name. The record contains some evidence that Respondent has sought to sell the Domain Name on the open market. Again, Respondent has not denied that his website has repeatedly contained offers to sell the Domain Name. Given the unquestionable fame of the YALE UNIVERSITY mark, the offers to sell the Domain Name, the patently implausible story offered by Respondent, and Respondent’s undisputed history as a serial cybersquatter, the Panel concludes that Respondent has registered and used the Domain Name in bad faith under the Policy.
Specifically, the Panel finds that Respondent registered the Domain Name in order to prevent Complainant from reflecting its famous YALE UNIVERSITY mark in a domain name in the coveted “.com” space. The Panel also finds that Respondent has engaged in a pattern of such preclusive conduct and hence is in bad faith under paragraph 4(b)(ii) of the Policy.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: September 26, 2013
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