Wake Forest University v. Jerry Needham
Claim Number: FA0209000125751
PARTIES
Complainant
is Wake Forest University,
Winston-Salem, NC (“Complainant”) represented by John Berryhill. Respondent
is Jerry D. Needham, Kernersville,
NC (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wfubmc.com>,
<wfubmc.net>, <wfubmc.org> and <wfuhs.com>,
registered with Register.com.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Alan
L. Limbury as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 23, 2002; the Forum received a hard copy of the
Complaint on September 23, 2002.
On
September 23, 2002, Register.com confirmed by e-mail to the Forum that the
domain names <wfubmc.com>,
<wfubmc.net>, <wfubmc.org> and <wfuhs.com>
are registered with Register.com and that Respondent is the current registrant
of the names. Register.com has verified
that Respondent is bound by the Register.com registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
October 2, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 22,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@wfubmc.com, postmaster@wfubmc.net, postmaster@wfubmc.org
and postmaster@wfuhs.com by e-mail.
A
timely Response was received and determined to be complete on October 21, 2002.
On November 8, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Alan L. Limbury
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is an educational
institution located in North Carolina.
It owns federal U.S. Trademark Registrations for the marks WAKE FOREST
UNIVERSITY and WAKE FOREST UNIVERSITY BAPTIST MEDICAL CENTER. Complainant has long been known by the
acronym WFU and sells authorized merchandise adorned with the WFU mark.
The disputed domain names all
incorporate Complainant’s WFU mark and correspond to specific marks utilized by
Complainant in connection with the Wake Forest University Health Sciences
(WFUHS) and the Wake Forest University Baptist Medical Center (WFUBMC). They are thus identical or confusingly
similar to marks in which Complainant has rights.
Respondent is not a licensee
or affiliate of Complainant and is not authorized to utilize any of its
marks.
Respondent obtained a North
Carolina State Trademark Registration for WFUBMC under the pretense of using it
as an acronym for a “Web Forum for Unaffiliated Business Management
Consultants”. This may be disregarded
as a mere fig leaf, when one considers the collection of domain names which
Respondent has accumulated. An
applicant for a valid trademark in North Carolina must certify that the mark
does not conflict with the rights of other parties. Respondent, located in nearby Kernersville, North Carolina, was
aware of the operation of the Wake Forest University Baptist Medical Center and
its use of the WFUBMC mark prior to his application for his state trademark
registration. It is not credible that
Respondent would have coincidentally happened upon such a distinctive sequence
of six letters without knowledge of Complainant’s use of WFUBMC to identify its
services. It is even more incredible
that Respondent would also coincidentally happen to register another domain
name consisting of WFUHS for legitimate purposes. And, it is even more incredible yet that Respondent would have
registered not only the disputed domain names but also a large collection of
terms and acronyms associated with other ventures in which Complainant is a
participant, as well as terms associated with other North Carolina educational
institutions and entities, without a conscious intent to use these terms for
illegitimate purposes.
Respondent has not been using
the domain names for any bona fide offering of goods or services. Respondent initially operated a web page at <wfubmc.com>
stating that his fictitious web forum was “under development” and soliciting
offers to buy the domain name registration through <afternic.com> - a
domain name auction site. The disputed
domain names are listed "for sale" under Respondent's username
"jneedham" at <afternic.com>.
Shortly thereafter, at Complainant’s request, Respondent re-directed web
traffic to Complainant’s site at <wfubmc.edu>. More recently, after being notified of this dispute, Respondent
has returned to the pretense of operating a web forum, and has included a
“disclaimer” of association with Complainant.
This does not establish any legitimate interest. Respondent claims to have operated an email
list utilizing one or more of the domain names, but has provided no evidence of
such an email list. Again, any such
token and admittedly discontinued use was undertaken for the sole purpose of
constructing an artificial claim of a purported legitimate interest.
Bad Faith
In correspondence Respondent
acknowledged receipt of email intended for recipients at Wake Forest’s WFUMBC
having <wfubmc.edu> email addresses, stating: “It seems you lose a
great deal of productivity in these misdirected emails, not to mention
security/privacy breaches. I would be
open to a proposal to acquire these domain names in the best interest of the
institution.” Respondent later
offered to forward misdirected email to Complainant at a rate of $20 per email
address or for a flat fee of $5,000 per year for each domain and stated that he
was open to offers to buy the domain name registrations.
Respondent has recently
registered <wfu.us>;
<deacons.us> after the Wake Forest University “Demon Deacons”
sports team mascot and the Wake Forest University “Deacon” Athletic Club;
<targacept.us> after U.S. Trademark Registration No. 2,469,655 for
TARGACEPT in which Complainant has a financial interest; and
<ptrp.com/net/org> after the Piedmont Triangle Research Park, a community
research center in which Complainant is involved. Because of the separate USDRP governing “.us” domain names, a
further Complaint under that policy will be required for Complainant to recover
the infringing <wfu.us> domain name that Respondent has also registered,
thus compounding the cost to Complainant and further demonstrating the bad
faith of Respondent.
Complainant is not alone in
having been targeted by Respondent’s pattern of bad faith domain name
registrations. All of Respondent’s
domain names are offered for sale under the user name “jneedham” at the domain
auction site <afternic.com>.
Respondent appears to have a penchant for registering domain names
clearly associated with academic and other institutions prominent in North
Carolina. Among the domain names
offered for sale by Respondent are such names as <tarheel.us> and
<tarheels.us> after the University of North Carolina basketball team;
<uncg.us> for the University of North Carolina Greensboro campus;
<gborocollege.us> for Greensboro College; <naacp.us> for the
National Association for the Advancement of Colored People; and <rjr.us>
and <rjrt.us> for the R.J. Reynolds Tobacco Company.
It is simply not possible for
Respondent, a neighbor of Complainant, to have coincidentally registered domain
names incorporating WFUBMC and WFUHS, which just happen to be marks and
acronyms used by entities controlled by Complainant, without a conscious
predatory intent of the type the Policy is intended to redress.
The disputed domain names
have been registered and used in bad faith.
The present circumstances constitute perhaps one of the only disputes
under the Policy where Respondent has managed to satisfy all four of the
exemplary and alternative bad faith behaviors under Paragraph 4(b) of the
Policy. Respondent has at all times
offered the domain name registrations for sale and has further offered to rent
email addresses under such domains for $5,000 per year, thus satisfying Policy
¶ 4(b)(i). Respondent has engaged in a
pattern of blocking Complainant and others from registering their trademarks as
domain names in multiple top-level domains, under ¶ 4(b)(ii). Respondent has threatened to disrupt
Complainant’s business by suggesting that a security or privacy breach could
occur unless Complainant agrees to buy the domain names from Respondent, under
¶ 4(b)(iii). Respondent’s actions and
correspondence demonstrate that Respondent has registered and used the domain
names with a manifest intent to profit on the basis of consumer confusion,
under ¶ 4(b)(iv).
B.
Respondent
There
is insufficient evidence to support Complainant’s assertions. Complainant had insufficient interests in
the marks in dispute; Respondent is entitled to continued use of the marks
(domains) in dispute, and there is no evidence of bad faith registration and
use.
Complainant
has ignored prima facie evidence of legitimate use by Respondent. Many
of Complainant’s assertions are merely circumstantial. Any actual confusion is due to Complainant’s
actions. Complainant meets the criteria for attempted Reverse Domain Name
Hijacking.
Identical/Confusing
Similarity
Complainant
holds no State of North Carolina or Federal trademarks or service marks for
WFU, WFUBMC or WFUHS.
Within
the .com/net/org gTLD’s, there are 1,491 domains which “incorporate” the
Complainant’s claimed mark WFU, 99 of which begin with the string WFU. At least 8 of these are random 5 and 6
letter strings (non-words), some of which sites are in German and Chinese. It is unreasonable to assert that all of
these domains have Wake Forest University as their source. Multiple registrations for similar marks
have been shown to limit the scope of the Complainant’s rights. See,
e.g., D2000-1151 WIPO, “Goldline”.
Respondent admits that WFUBMC has fair renown in the local
area at present, but in the spring of 2000 when the registrations of the
domains in dispute were made, very few outside the employees of the Medical
Center itself or its close partners could connect the acronym WFUBMC to the
Medical Center, much less recite the name it stands for. This stands even today. Even local people who have affiliations with
Complainant are unaware of the meaning of the acronym WFUBMC.
These strings of letters are generic, are not words and can
have a near infinite number of meanings outside of association with Wake Forest
University (WIPO D200-0081), they are not distinctive nor solely associated
with the University and if they are becoming more so now, it was certainly not
the case in 2000. Unless one has a
business relationship with Complainant, the likelihood of recognition of their
acronym “mark” is low.
Complainant has provided no evidence that the marks are
famous or widely known or recognized outside of this geographical area and the
health services industry. Respondent
asserts that Complainant’s common law rights in WFUBMC are not superior to any
other trade/service mark holder or Respondent’s right to use the mark in a
non-related class.
Respondent performed due diligence, searching for gTLD’s and
trade/service marks at the State and Federal levels for both WFUBMC and WFUHS
before registering the domains in dispute.
Respondent
has rights by virtue of Service Mark No. T-16119 State of North Carolina, dated
05/15/2000, for the acronym WFUBMC and by virtue of actual use. Requirements to prove actual use included
physical specimens & proof by publication, which should be accorded a very
strong presumption ( Nat. Arb. Forum FA 98415).
The
relevant domains and their registration dates are as follows: <wfubmc.edu> 01/06/1998, <wfubmc.com> 04/07/00, <wfubmc.net>
06/17/00, <wfubmc.org> 06/17/00.
These dates indicate that Respondent applied for service mark in a
timely fashion, and upon receiving the same, took steps to further protect his
mark by registering the other available gTLD’s. In addition, Respondent, lending further credibility to his
efforts to protect his mark currently in use by acquiring ALL of the desirable
gTLD’s that use the mark, registered <wfubmc.us>.
Respondent
wanted a “nonsense” (unrelated to any company) domain name to operate an
anonymous web discussion forum that provides users an alias (not linked to
their personal id’s or employers’ domains) for frank and open discussion of
sometimes-sensitive issues. Being in
the arena of business consulting, and being unaffiliated with the Big 5/4, the
name Web Forum for Unaffiliated Business Management Consultants was
adopted.
The
additional domains were registered both to protect the mark and also to provide
email aliases which could differentiate users as working in the non-profit,
ISP, or commercial arenas. This makes
administration easier as some postings are only relevant to users of a
particular interest. The forum was born
and continues operation to this day, with many security practitioners
participating and appreciating the anonymity of their queries and posts. It has served as a soundboard for many
activities, some of which concern research for doctoral candidates’
dissertations (anonymous surveys and the like). This predates, though operates similarly to “Yahoo Groups”. It was originally run on a free listserv
(automated software), but when the free service was discontinued (and due to
security considerations), the service was brought in-house and handled
manually. Lack of appearance on a
website or search engine does not imply non-existence. As a small company, resources were not
available to advertise what is essentially a free service. In fact, it was impossible to advertise the
forum at the domains <wfubmc.com/net/org> from 2000 through May
2002, as ALL web traffic was forwarded to Complainant at their request. By the same token, no commercial gain by
confusion can be construed by this activity.
Moreover, any actual confusion that took place was precipitated by
Complainant.
In
summary, Respondent claims prima facie and actual interest in the
domains. They are used in a bona fide offering of services and may be used for
development of actual sites in the future.
Complainant fails to carry the burden that Respondent has no rights or
legitimate interests in the domain names at issue. Furthermore, Complainant seeks to expand the Policy beyond
prohibited behavior predicated on trademarks to making subjective judgments
about which uses of domain names are worthy and which uses are not.
With respect to <wfuhs.com>, bad faith registration
and use has not been established at all, as no use whatsoever has been
established. Nat. Arb. Forum FA 95564
(Beaumont) finds that no established use cannot be found to be “bad faith” use. Moreover, no evidence has been presented
that Respondent should have been aware of Complainant’s intended use of this
acronym. As previously stated, there
are no registered marks for that string, nor are there any other existing
domain registrations utilizing the mark, including <wfuhs.edu>. Complainant’s use of “wfuhs” post-dated
Respondent’s registration.
With respect to <wfubmc.com/net/org>, Complainant admitted in
email to Respondent “We spoke a few years ago…and you were kind enough to
redirect these domains back to www.wfubmc.edu.” This corroborates Respondent’s assertion that his interest in the
domains was for the email addresses for use with his Service Mark, and his
disinterest in the web traffic. It also
exemplifies Respondent’s attempts, even early in this engagement, to be as
cooperative as possible.
Generally
speaking, for all domains held by Respondent (without service marks),
intentions are: primary purpose is use of email/future development of sites;
secondary is sale of email identities (similar to <netidentity.com> or
<mail.com>) or public service (free) use of email forwarding identities;
tertiary is sale of domain to any interested party, not a particular markholder
or their competitor(s). Respondent does
not deny that ALL of his 300+ domain name registrations are available for sale,
including the primary business domain, <hyperhedron.com>, belying any
targeting of Complainant. The auction
listings are “make offer”, rather than for exorbitant figures above actual
costs.
Respondent
has never demanded any sum exceeding actual costs. Demanding a price is not “bad faith” if legitimate interest
exists (WIPO D2000-1654, “Etam”). As a
small business owner, Respondent is in no position to “blackmail”, “strong-arm”
or “threaten” such a large institution.
Respondent, though well aware of WFU, was not aware of, nor had he
visited the Medical Center until October of 2000, six months after registration
of <wfubmc.com>. Neither
the fact that there was a site located at <wfubmc.edu> in 1998 nor that
Complainant used the acronym in an internally published magazine, lend any
credibility to the supposition that Respondent was aware of Complainant’s use
of the acronym mark.
In
correspondence Complainant suggested that Respondent stop receiving mails at
all for these domains. Respondent
refused as he asserts legitimate use.
As a method of accommodating the needs of all concerned, Respondent
offered email-forwarding services for a price.
This is an AT COST price, and there was no attempt by Respondent to
profit. The prices quoted are market
prices to have a third party accept ALL mail for the domains and to provide
mailboxes to individual users (some for Complainant and some for
Respondent). Network Solutions provides
this service for $30/year, NetIdentity $25, and <mailix.net>, $20. This solution would allow Respondent to
continue his web forum uninterrupted, would relieve Respondent of any liability
concerning the emails to Complainant’s users (as Complainant states,
“Respondent would be responsible”), and would be “transparent” to Complainant’s
users, thus satisfying their needs as well.
Complainant requested terms for acquisition of the domains in dispute.
The
registration was not intended to prevent Complainant’s use of the mark. The .edu extension is specifically reserved
for their use. If they choose to also
use gTLD’s, they can easily register, for example, wfu-bmc.edu and then
register ALL of the corresponding gTLD’s.
As for the accusation of a pattern of behavior, no evidence has been
produced to demonstrate “targeting” of medical centers or educational
institutions (e.g., unchealthcare.net/ us/biz/info are available). Respondent does own some domains that could
be construed as being related to “colleges”, but the intent is for fan sites,
vanity emails, or future development by alumni or fans, not for sale to the
institutions themselves or their “competitors”.
Complainant
provides no reason why Respondent is not entitled to rely on inaction by
Complainant. Two years and three months
transpired during which Complainant could have registered the domains in
dispute.
The “.us”
domains are recent registrations (May 2002 vs. April 2000), follow a different
set of rules and procedures, and a sunrise period was offered to trademark
holders. These differences indicate
that these registrations are not demonstrative of Respondent’s intent, nor
illuminative of his mindset regarding the domains currently in dispute at the
time of their registration two years prior.
As to a “pattern of behavior”, it seems presumptuous for Complainant to
declare what the various acronyms may represent, or that “tarheel” must refer
to a specific basketball team rather than any resident of the State of North
Carolina. Again, within the
.com/net/org realm, there are 467 current registrations that contain the word “deacon”. Respondent requests that the .us domain
evidence be given appropriate weight and relevancy, as they are not under this
Policy’s jurisdiction, are subject to a separate dispute resolution procedure,
and were not available at the time of the registrations in dispute.
At the
time of registration, Respondent was acting under the bona fide belief that no
conflict would occur with his marks.
Respondent
and Complainant are not competitors.
They are different types of entities and participate in completely
different lines of business, and therefore, the intent to disrupt a
competitor’s business is not possible.
Respondent’s
references to security/privacy breaches were not intended as threats. They were references to previous telephone
conversations in which Complainant was given pro bono education and advice from
Respondent (as a Security Professional) as how best to educate their users and
partners from transmitting sensitive materials to the incorrect domains. During this discussion Complainant was
advised that the only proof against such is proper pre-launch planning for new
domains, or acquisition of possible confusing domains if such pre-planning was
not accomplished. At no time has any
information been transmitted to a third party.
All misdirected emails have either been returned to sender, sent to an
authority in the proper domain, or simply deleted. Respondent had also informed employees of Complainant that he had
no obligation to forward web traffic, forward email, or to warn senders of
misdirected email, that the only obligation was to delete them in order to
prevent accidental distribution of information.
Respondent
has not attempted to attract or confuse Internet users for commercial
gain. Quite the opposite is true: as previously presented, the majority of the
time Respondent has held the domains in question, ALL web traffic has been
forwarded to Complainant at Complainant’s request.
Any actual
confusion was created by Complainant’s inaction in registering the domains in
question, and perpetuated by their request to forward web traffic, as well as
failure to educate their user base and partners as to the difference between
domain extensions. Such potential
confusion is a fact by the nature of the system, and it is not the burden of
domain holders who receive unwanted mail to educate all possible senders as to
their folly.
Complainant
admits that its IT Security Officer requested web traffic be redirected.
As
Complainant alleges actions “akin to blackmail”, the activity by Complainant is
akin to entrapment. They fail to
register the domains they desire, engender and foster confusion by their
actions, then file a complaint against Respondent for cooperating with their
requests.
Respondent
never intercepted emails, but was the unwilling recipient of the spam that is
generated to Complainant’s user base of several thousand, plus forwards, chain
mail, personal email, porn, dating services, foreign wife programs, hoax virus
alerts, job database search results, etc. Respondent has taken the time, effort and
expense to either forward important mail, or reply to sender, finally setting
up an auto-responder to warn senders of misdirected mail that it was not
reaching their intended recipients, and directing them to send to USERNAME@wfubmc.edu instead, in order to mitigate the confusion perpetuated by
Complainant.
Respondent
fails to see how the actual chain of use which was the “under construction
page”, followed by redirection to Complainant’s main site, followed by a
disclaimer page with direct link to Complainant’s main site, constitutes “bad
faith registration and use”. The
disclaimer was placed after notice of the dispute, but this has been shown to
not constitute bad faith (WIPO D2000-1151).
Complainant’s
use on the face does not interrupt business and Respondent, not Complainant, is
the only one demonstrated to have made multiple attempts to correct any
confusion. There should be no consumer
confusion as there are no similarities in offerings of goods or services. There is no real excuse for any confusion,
for if the Medical Center is as presently as famous as Complainant implies,
everyone who corresponds with them would know that they are affiliated with
Wake Forest University, and therefore they utilize the “.edu” extension as
opposed to the publicly available .com/net/org.
Respondent
insists no bad faith was present at time of registration, nor was any bad faith
present in the use of the domains. In fact Respondent repeatedly protected the
interests of Complainant. There was no
intent to profit on the part of Respondent.
Any discussions of compensation were in reference to actual costs to
provide services to eliminate the conflict between the parties. In fact, there is lost productivity and time
that has been suffered by Respondent.
Complainant has failed to show an attempt to profit by sale, failed to
show a pattern to prevent registrations, failed to show competitor status and
subsequent interruption, and failed to show intent to profit commercially from
confusion.
Respondent
has demonstrated that there was no bad faith use by virtue of cooperation,
disclaimers and other efforts to prevent and rectify confusion, despite
ridiculous and unsubstantiated claims of wrongdoing.
FINDINGS
The Panel finds Complainant to have
established all elements necessary to entitle it to the relief which it seeks.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being used in
bad faith.
Identical and/or Confusingly Similar
Essential or virtual identity is
sufficient for the purposes of the Policy:
See The Stanley Works and
Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000‑0113),
Toyota Jidosha Kabushiki Kaisha d/b/a
Toyota Motor Corp. v. S&S Enters. Ltd. (WIPO Case No. D2000-0802); Nokia Corp. v. Nokiagirls.com a/k/a IBCC
(WIPO Case No. D2000-0102) and Blue Sky
Software Corp. v. Digital Sierra Inc. (WIPO Case No. D2000-0165). The gTLDs may be disregarded.
The test of confusing similarity under
the Policy is confined to a comparison of the disputed domain name and the
trademark alone, independent of the other marketing and use factors, such as
the “Sleekcraft factors,” AMF Inc. v.
Sleekcraft Boats, 599 F.2d
341,346 (9th Cir. 1979), usually considered in trademark
infringement or unfair competition cases. See BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR, D2001-1480
(WIPO March 26, 2002); Koninklijke
Philips Elecs. N.V. v. In Seo Kim, D2001-1195 (WIPO Nov. 12, 2001); Energy
Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19,
2001); Vivendi Universal v. Mr. Jay
David Sallen and GO247.COM, Inc.,
D2001-1121 (WIPO Nov. 7, 2001) and the cases there cited. See also
the similar approach adopted by the U.S. Federal court in Northern Light
Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. Mar 31,
2000).
None of the disputed domain names is
identical or confusingly similar to either of Complainant’s registered marks
WAKE FOREST UNIVERSITY (registered since August 2, 1983 with a date of first
use in commerce of 1967) and WAKE FOREST UNIVERSITY BAPTIST MEDICAL CENTER (registered
since February 15, 2000 with a date of first use in commerce of November 11,
1997), nor does Complainant so assert.
Numerous
cases under the Policy have decided that the Policy affords protection to those
having common law trademark rights as well as to those having rights in
registered trademarks: Cedar Trade
Assocs., Inc., v. Gregg Ricks (Nat. Arb. Forum Case No. 93633); Bennett Coleman & Co. Ltd. v. Steven S.
Lafwani (WIPO Case No. D2000-0014); SeekAmerica
Networks Inc. v. Tariq Masood (WIPO Case No. D2000-0131) and Passion Group Inc. v. Usearch, Inc.
(eResolution Case No. AF-0250).
Complainant
claims common law trademark rights in the acronyms WFU, WFUBMC and WFUHS. The
relevant date for determining whether a Complainant has rights in a mark, for
the purposes of the Policy, is the date of filing the Complaint: eGalaxy
Multimedia Inc v. T1 (Nat. Arb. Forum FA 101823). The fact that a
Complainant’s trademark rights may not have been in existence at the date of
registration of the disputed domain name is relevant to the issues of
legitimacy and bad faith.
There is evidence that Complainant
registered the domain name <wfu.edu> on March 3, 1986 and that it sells
merchandise adorned with the WFU acronym. There is evidence that the Wake
Forest University Baptist Medical Center conducts research and provides medical
services and is known by the acronym WFUBMC. There is evidence that Wake Forest
University Health Sciences is an arm of Complainant, which conducts research
and is known by the WFUHS acronym. The Panel finds Complainant has common law
trademark rights in each of the acronyms WFU, WFUBMC and WFUHS.
The Panel finds each of the domain names <wfubmc.com>,
<wfubmc.net> and <wfubmc.org> to be identical to
Complainant’s WFUBMC mark and the domain name <wfuhs.com> to be
identical to Complainant’s WFUHS mark.
Although all the disputed domain names
incorporate the entirety of Complainant’s mark WFU, the Panel finds none of
them identical to that mark.
The issue of confusing similarity to the
WFU mark is not as easy to resolve as in the case of Arizona State University
(WIPO Case No. D2001-0445), to which Complainant refers. There the domain name comprised the mark ASU
followed by the recognizable word ‘nudes’. Here each domain name, considered on
its own, may appear to those unfamiliar with Complainant’s WFU mark to be a
jumble of letters with no meaning.
However, as mentioned, determination of the issue of confusing
similarity requires comparison of the domain name with Complainant’s mark, thereby
assuming familiarity with the mark. Upon such a comparison, the Panel concludes
that each of the disputed domain names is confusingly similar to Complainant’s
WFU mark.
Complainant has established this element
of its case.
Rights or Legitimate Interests
Complainant had rights in the trademark
WFU prior to registration of the disputed domain names. This is demonstrated by Complainant’s
registration of the domain name <wfu.edu> in 1998 (Response, Exhibit B);
Respondent’s failure to deny Complainant’s assertion that Complainant has long
been known by the acronym WFU and Respondent’s admission that he was “well
aware of WFU”. That admission was made
in the context of a denial of awareness of the Medical Center until October
2000, 6 months after Respondent registered <wfubmc.com>. The Panel
infers from that context that Respondent was well aware of WFU to denote
Complainant and its services before he registered any of the disputed domain
names.
At Complainant’s website
<wfubmc.edu>, the acronym WFUBMC has been used since November 1998 to
denote the Wake Forest University Baptist Medical Center and its services. It was so used in the fall/winter 1999 issue
of Visions, the Center’s publication for alumni, faculty and friends. The Panel
finds Complainant had common law trademark rights in that acronym prior to
Respondent’s registration of any of the disputed domain names.
There is no evidence of use by
Complainant of the WFUHS mark prior to Respondent’s registration of the <wfuhs.com>
domain name.
Respondent
is not affiliated with nor authorized by Complainant to use either of the WFU
and WFUBMC marks nor to register domain names incorporating those marks.
Neither of those acronyms is a common word or name such as would clothe with
legitimacy the first to register it as a domain name: Cf. Rusconi Editore
S.p.A. v. FreeView Publ’g Inc. (WIPO Case No. D2001-0875;
<donna.com>). These circumstances
are sufficient to constitute a prima
facie showing by Complainant of absence of rights or legitimate interest in
the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by
concrete evidence that it does have rights or legitimate interests in that
name: Do The Hustle, LLC v. Tropic Web (WIPO
Case No. D2000-0624) and the cases there cited.
Respondent
argues that the acronym WFU is generic but the Panel finds it is neither
generic nor descriptive. It is capable of becoming distinctive and has been
shown, prior to registration of any of the disputed domain names, to have
become distinctive of Complainant and its goods and services, at least in North
Carolina, where both Complainant and Respondent are located.
Respondent registered the domain name <wfubmc.com>
on April 7, 2000. On May 15, 2000 his company, Hyperhedron LLC, registered in
North Carolina the State trademark “Acronym, WFUBMC and Web Forum for
Unaffiliated Business Consultants”, claiming first use anywhere on [sic] April
2000 in relation to “services related to providing centralized commercial communications”. Respondent registered the domain names <wfubmc.net> and <wfubmc.org> on June 17,
2000 and <wfuhs.com> on November 27, 2001.
The North Carolina trademark was
registered in the name of the company Hyperhedron LLC, not Respondent, who
cannot therefore claim himself to have been known by or to have acquired
trademark rights in the name WFUBMC. Respondent nevertheless seeks to rely on
that trademark registration as demonstrating his own bona fide use of the 3
disputed <wfubmc> domain names for the purposes of an anonymous
web discussion forum. Respondent argues in relation to that trademark
registration that “requirements to prove actual use included physical
specimens and proof by publication, which should be accorded a very strong
presumption”, citing Nat. Arb. Forum Case No. FA 98415. In that case, the
learned 3-member Panel said:
“Even
assuming arguendo that the Respondent's trademark filing was legitimate, a
trademark filing, in and of itself, does not constitute sufficient demonstrable
preparations to use a domain name in connection with a bona fide offering of
goods and services.”
Despite
himself having cited that case and therefore being on explicit notice (apart
from the terms of paragraph 4(c) of the Policy) of the need to provide evidence
to support any assertions he wished the Panel to accept, Respondent has not
produced to this Panel the evidence of use since April 2000 of the mark WFUBMC
which he says had to be produced to the North Carolina Department of the
Secretary of State in order to register that acronym as a trademark, nor any
evidence of use of or preparations to use any of the disputed <wfubmc> domain names for the purpose of an anonymous web discussion
forum.
Respondent
says it was impossible to advertise the forum at the <wfubmc>
domains from April 2000 through May 2002, as all web traffic was forwarded to
Complainant at its request. It appears therefore that it was as early as April
2000, within days of the registration of the <wfubmc.com> domain
name, that Complainant requested Respondent to forward to it web traffic
received by Respondent that was intended for Complainant and that Respondent
complied with this request.
Thus
Respondent, aware of Complainant’s WFU trademark, registered the domain name <wfubmc.com>
in April 2000 and within days began to receive email intended for Complainant.
Shortly thereafter, Respondent agreed to forward that traffic to Complainant.
Under
these circumstances even if, as Respondent asserts, he was unaware of the
Medical Center and its acronym WFUBMC when he registered the <wfubmc.com>
domain name, it is inconceivable that he was unaware of them by the time he
chose to register (in the name of his company) the trademark WFUBMC and (in his
own name) the <wfubmc.net> and <wfubmc.org> domain
names.
The
Panel concludes that the trademark registration and the <wfubmc.net>
and <wfubmc.org> registrations were designed to bolster, if
possible, Respondent’s position in any dispute or negotiations with
Complainant.
Respondent asserts having ascertained
that WFUHS was not a registered trademark before registering the domain name <wfuhs.com>
and says that no evidence has been presented that Respondent should have been
aware of Complainant’s intended use of this acronym at the time Respondent registered
it as a domain name on November 27, 2001. Be that as it may, Respondent was
then well aware not only of Complainant and its WFU mark but also of the
Medical Center also. He knew that email
intended for Complainant was being received at Respondent’s <wfubmc.com>
website. Respondent asserts that no use of the <wfuhs.com> domain
name has been established by Complainant but makes no effort himself to
demonstrate any bona fide use of that domain name.
In State
Farm Mut. Auto. Ins. Co. v. Rocky E. Faw (Nat. Arb. Forum FA 94971) the
respondent was found to have no legitimate interests in respect of the domain
name where he had not used nor developed the domain name for a legitimate
non-commercial or fair purpose and was not using the domain name in connection
with a bona fide offering of goods or services. See also Leland Stanford
Junior Univ. v. Zedlar Transcription & Translation (Nat. Arb. Forum FA
94970).
Complainant, having succeeded in shifting
to Respondent the onus of establishing rights or legitimate interests in the
disputed domain names and in the absence of any evidence from Respondent
demonstrating any such rights or legitimate interests, the Panel finds that
Complainant has discharged its burden of establishing this element of its case.
Registration and Use in Bad Faith
Respondent had every reason to believe
registration of the domain name <wfubmc.com>, incorporating as it
did the acronym WFU, which he knew to be a mark of Complainant, would be likely
to cause confusion with that mark. By
the time he registered the other two <wfubmc> domain names and <wfuhs.com>,
Respondent was aware that <wfubmc.com> had in fact caused
immediate confusion with both the WFU and WFUBMC marks, neither of which have
descriptive quality: Cf. Goldline
Int’l, Inc. v. Gold Line, (WIPO
Case No. D2000-1151). The Panel
finds Respondent registered all of the disputed domain names with Complainant
in mind.
As to Respondent’s purpose in doing so,
shortly after having registered the <wfubmc.com> domain, actual
confusion occurred and Respondent complied with Complainant’s request to
forward misdirected email to Complainant. When Respondent was asked in May 2002
what his proposal would be for Complainant to acquire the <wfubmc/com/net/org>
domains, he said he could provide forwarding services for $20/year/user, or for
a flat fee of $5,000 annually per domain. He then stated: “In light of the
opportunity costs, lost productivity, security risks and privacy risks that are
continuously being incurred by the Institution with the status quo, I believe
this to be a bargain. Of course an offer for complete acquisition would be
considered”.
Respondent says the references to
security/privacy breaches were references to previous telephone conversations
in which Respondent, as a Security Professional, had given Complainant pro
bono education and advice as to how best to educate their users and
partners from transmitting sensitive materials to the incorrect domains.
Respondent says that during this discussion, “Complainant was advised that
the only proof against such is proper pre-launch planning for new domains, or
acquisition of possible confusing domains if such pre-planning was not
accomplished”.
Having found each of the disputed domain
names to be confusingly similar to Complainant’s WFU mark, that Respondent was
well aware of that mark at the time he registered those names and that his
account of why he registered them is not supported by any evidence before the
Panel, the Panel concludes that, as a Security Professional, at the time he
registered each of the disputed domain names, Respondent had every reason to
expect his conduct in so doing would cause Complainant to incur the opportunity costs, lost productivity,
security risks and privacy risks to which he referred in that subsequent
telephone conversation, and that his purpose in registering each of the
disputed domain names was to achieve that very result. Further, Respondent knew
that, by registering the disputed domain names, he would be depriving
Complainant of the opportunity itself to engage in “proper pre-launch planning
for new domains”, with the consequence that, as he saw it, acquisition of the
disputed domains from him would be the only course open to Complainant to
prevent continued exposure to those risks.
This leads the Panel to conclude that Respondent registered
each of the disputed domain names primarily for the purpose of selling, renting
or otherwise transferring the domain name registrations to Complainant for
valuable consideration. This
consideration was to be in excess of Respondent’s documented out-of-pocket
expenses directly related to the domain names, as evidenced by the fees he
proposed for rental in 2002 which, while claiming they were at cost, he
nevertheless described as “market prices” and compared with similar market
rates charged by others (not with their out-of-pocket expenses).
Under paragraph 4(b)(i) of the Policy, this finding is
evidence of both bad faith registration and bad faith use for the purposes of
paragraph 4(a)(iii). Accordingly, Complainant has established this element of
its case. The fact that the disputed domain names, along with numerous others,
are listed for sale under Respondent’s name with Afternic.com serves to
reinforce this conclusion.
There is no basis for a finding of reverse
Domain Name Hijacking.
Pursuant to paragraph
4(i) of the Policy and paragraph 15 of the Rules, the Panel directs that the
domain names <wfubmc.com>, <wfubmc.net>,
<wfubmc.org> and <wfuhs.com> be TRANSFERRED to
Complainant.
Alan L. Limbury, Panelist
Dated: November 27, 2002.
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page