Mesa State College v. Don't Panic Business Technologies
Claim Number: FA1106001393045
Complainant is Mesa State College (“Complainant”), represented by Ian V. O’Neill of Holland & Hart LLP, Colorado, USA. Respondent is Don't Panic Business Technologies (“Respondent”), represented by Jeremy J. Benisek, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coloradomesauniversity.com>, registered with GoDaddy.com, Inc.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2011; the National Arbitration Forum received payment on June 10, 2011.
On June 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <coloradomesauniversity.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@coloradomesauniversity.com. Also on June 21, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 21, 2011.
On July 27, 2011, an Additional Submission from Complainant was received by the Forum. However, because that Additional Submission did not comply with the fee requirements set forth in Supplemental Rule 7(b)(ii), the Panel will not consider the submission in the Panel's decision.
On July 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant was founded in 1925 as Grand Junction Junior College. Subsequently, the name changed to Mesa College (1937) and then to Mesa State College (1988). Currently, over 8,000 students are enrolled with Complainant.
- Over the last fifteen years, Complainant has been actively considering a new name, one that included the word, “University.” Complainant received much input from students, faculty, alumni and the public in general in reaching a decision regarding the name change. On April 26, 2011, after a widely attended public meeting, Complainant decided to change its name to Colorado Mesa University, which engendered state wide media coverage. That change was ratified by the Colorado state government and signed into law on June 7, 2011.
- Complainant believes that the owner of Respondent was a student at an associated campus of Complainant, and therefore well aware of the name-change process noted above. Complainant believes the owner to be Jeremy Benisek, as announced in a press release four days after registration of the disputed domain name.
- Complainant filed a trademark application with the United States Patent and Trademark Office (“USPTO”) on May 12, 2011 for the mark, COLORADO MESA UNIVERSITY.
- Respondent used a privacy shield to hide his true identity when registering the disputed domain name. Respondent registered the disputed domain name, <coloradomesauniversity.com>, on April 26, 2011, the same day that Complainant announced its selection of Colorado Mesa University as its new name.
- Respondent uses the disputed domain name for a website that offers advertising space to third party businesses within Complainant’s locale.
- Complainant has established common law trademark rights in its COLORADO MESA UNIVERSITY Mark. The disputed domain name is confusingly similar to Complainant’s mark. The disclaimer of association with Complainant found on Respondent’s website does not distinguish the name from the mark.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant and has not been given permission to use Complainant’s trademark.
- To Complainant’s knowledge, Respondent has not been commonly known as the disputed domain name. Moreover, Respondent does not use that name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Using the disputed domain name to solicit unrelated paid advertising and receive click-through fees based on third party linkages fails to constitute either of the foregoing legitimate activities. Finally, Respondent uses the disputed domain name to promote its own business.
- Respondent registered and is using the disputed domain name in bad faith. Respondent is attempting to intentionally attract, for commercial gain, Internet users to its site by creating the likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that site and the products and/or services offered there.
- Respondent was well aware of the announcement that Complainant intended to use its mark from the time of announcement forward, as there was extensive media coverage of that event within Respondent’s resident locale. Respondent’s disclaimer on its website does not dispel Respondent’s bad faith intentions and actions in registering and using the disputed domain name.
B. Respondent
- Respondent provides information technology, web design and social and online marketing to individuals and businesses in the Grand Junction, Colorado area. Respondent also furnishes computer and photography services to nonprofit organizations.
- Respondent researched domain names that might include Complainant’s “Mesa State College” name, and found many abusive registrations, as Respondent did with respect to other Colorado universities and colleges. Since Respondent determined that Complainant had registered only <mesastate.edu>, Respondent concluded that Complainant would not object to Respondent’s registration of the disputed domain name, which includes the term “university” along with “Colorado Mesa” (i.e., Complainant would be content to register only <coloradomesa.edu>).
- Complainant did register <coloradomesa.edu> and redirected that domain name to Complainant’s other domain name, <mesastate.edu>, as Respondent assumed Complainant would.
- Respondent is developing another Colorado business under the name, “Colorado Mesa Marketing D.B.A.,” to be used in connection with products and services marketed under the “Colorado Mesa” theme. Following that theme, Respondent has registered, in addition to the disputed domain name, <coloradomesagrandjunction.com>, <coloradomesaphotography.com> and <coloradomesamall.com>.
- Respondent’s use of a privacy shield is a common business practice to reduce the reception of Internet spam.
- Respondent has had twenty meetings with various businesses in connection with their involvement with Respondent’s website found at the disputed domain name. Moreover, Respondent activated that website 34 days after registration of the name, not four days later as asserted by Complainant.
- Respondent provides appropriate contact information at its website. All offers of purchase of the disputed domain name have been declined by Respondent, as per the terms of usage at that website.
- While others have used domain names similar to Complainant’s MESA STATE COLLEGE mark to tarnish that mark and the community in which Complainant resides, Respondent has used the disputed domain name for that community’s betterment.
- Complainant has never properly notified Respondent of any objections with respect to the disputed domain name. Respondent included a disclaimer and link to Complainant’s domain name, <mesastate.edu>, as a sign of good faith.
- Respondent did not register the disputed domain name in bad faith and has no intention to cyber-squat on trademarks or confusingly similar business names. Respondent registered the disputed domain name to make sure it did fall into the hands of those would use it simply as a generic advertising service.
- As lately as recent weeks, the media in Complainant’s locale still refers to Complainant as “Mesa State College” not “Colorado Mesa University.” A press release and related media coverage does not establish common law rights in a trademark.
- Respondent is not a university, and any confusion in that regard is swiftly dispelled upon visitation to the website connected with the disputed domain name.
- University is a generic term, and Colorado and Mesa County are where Respondent resides. The usage of “university” is pertinent in guiding local residents and incoming students to resources and services available in Colorado and Mesa County.
- Complainant has engaged in a pattern of misleading statements as to Respondent’s website launch and client endeavors.
Complainant is a higher education institution that has been in existence in Grand Junction, Colorado, United States of America since 1925. It has changed its name several times and until recently was known as Mesa State College. On April 26, 2011, after a long period of public input, its trustees decided to change the name once more to Colorado Mesa University; a decision ratified by the state government in July 2011. In May 2011, Complainant filed a trademark application with the USPTO for the mark, COLORADO MESA UNIVERSITY.
Respondent, a resident of the Grand Junction area, is the registered owner of the disputed domain name, <coloradomesauniversity.com>; registration having occurred on April 26, 2011. Respondent uses the name for a website that carries advertisements for businesses located in and around Grand Junction, offers links to third party websites, and provides information of interest with respect to that locale. Respondent’s website includes a disclaimer of affiliation with Complainant.
Paragraph 15(a) of 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 Complainant has rights; and
(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.
The Panel finds that the disputed domain name, <coloradomesauniversity.com>, is identical to the COLORADO MESA UNIVERSITY trademark, as the lack of capitalization, omission of spaces between terms and inclusion of the gTLD, .com, are not features that distinguish the name from the mark for purposes of Policy ¶ 4(a)(i). See Bond & Co. Jeweler, Inc. v. Texas International Property Associates, FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (“The elimination of…the space between the two words of Complainant’s mark, as well as the addition of a gTLD, insufficiently establish distinctiveness form the mark pursuant to Policy ¶ 4(a)(i).”); and Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (“The disputed domain name <hannoverre.com> is identical to Complainant’s HANNOVER RE mark, as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.”).
Complainant concedes that it does not own a valid registration for the COLORADO MESA UNIVERISTY mark. Moreover, the Panel notes that mere application for registration with the USPTO, as has been proffered by Complainant, does not provide a presumption of rights in that mark. See La Mafafa, Inc. dba Cultura Profética v. Domains Real Estate, D2009-0534 (WIPO July 1, 2009) (“...submission of an application for registration of the trademark does not establish rights in a trademark.”); see also Indianapolis Downs, LLC v. Philip Mazzone c/o Muzzhound and listmytimeshare, FA 1244694 (Nat. Arb. Forum Mar. 11, 2009) (“It is well established by prior decisions under this Policy that a pending application for trademark registration does not establish rights for the purposes of Policy ¶ 4(a)(i).”).
Thus, for Complainant to succeed in these proceedings, Complainant must convince the Panel that Complainant possesses common law rights in the COLORADO MESA UNIVERSITY mark. See S.N.C. Jesta Fontainebleau v. Po Ser, D2009-1394 (WIPO Nov. 21, 2009) (“The Complainant has no registered trade mark rights, so the question is as to whether or not it has unregistered common law trade mark rights or their equivalent for the purpose of the UDRP.”); see also Indianapolis Downs, supra, (“Policy ¶ 4(a)(i) does not require proof of a registered trademark if Complainant can demonstrate its common law rights through secondary meaning.”).
Generally, duration of continuous usage is a key factor in determining common law rights in a trademark. In this case, Complainant concedes that it had been using the COLORADO MESA UNIVERSITY mark for less than two months prior to filing the Complaint; not a very long time in the Panel’s estimation. However, there are other factors that are to be considered in a common law rights determination according to a consensus of prior UDRP rulings. Those factors include the amount of sales revenue generated under the mark, and the degree of publicity/advertising and media coverage given the mark. See The Gourmet Depot v. DI S.A. / Administration Dom, FA1378760 (Nat. Arb. Forum June 21, 2011); see also Amsec Enterprises, L.C v. Sharon McCall, D2001-0083 (WIPO Apr. 3, 2001) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
In this case, given that Complainant is a non-profit public institution, examining sales data is not relevant. As to publicity, Complainant has asserted, without contradiction, that it held a large public event immediately prior to declaration of its new name – and trademark – which gained considerable media attention, on at least a local level. Thus, within the local Grand Junction market, there would appear to the Panel to be considerable brand recognition for this change in name even within such a short period of time. As held in many previous Policy cases, common law rights may obtain even when mark recognition is limited to a relatively small geographical region. See Al Ghurair Group LLC v. Ghurair Group, D2004-0532 (WIPO Nov. 4, 2004) (“…it is important to note that the Policy makes no distinction between localised and wide spread trademark rights.”); see also Australian Trade Commission v. Mathew Reader, D2002-0786 (WIPO Nov. 12, 2002) (“Even if secondary meaning had been acquired only in a limited geographical area, Complainant would nevertheless have established sufficient common law trademark rights with the meaning of Paragraph [4](a)(i) of the Policy.”).
Yes, as Respondent has contended, to this day elements of the Grand Junction media may still refer to Complainant by its old name, Mesa State College. However, the Panel believes that complete brand reorientation need not happen over-night in order to support a successful claim that the relevant portion of the public now recognizes and identifies a previously established institution by a new name. Complainant has been operational since 1925 and is a mainstay of its community. That community would be highly sensitive to such a name change and would have a very rapid awareness of its occurrence. Therefore, taking all this evidence into consideration, the Panel finds that Complainant has narrowly established within its immediate vicinity, where Respondent resides also, common law rights in its COLORADO MESA UNIVERSITY mark.
Accordingly, the Panel rules that Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant makes out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name by asserting that Complainant has granted Respondent no permission to use Complainant’s trademark, to which said name has been found by the Panel to be confusingly similar. Respondent must therefore come forward with specific evidence to establish those rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent contends that it is currently developing a business – designed to operate under a “Colorado Mesa” theme – called “Colorado Mesa Marketing D.B.A.;” and that the disputed domain name would be one of a cluster of similar names owned by Respondent to provide products and services under that new business. However, Respondent has provided scant evidence to support that claim. Instead, both Complainant and Respondent agree that the disputed domain name is currently used to host a website that provides advertisements and website links for third parties that are unrelated to Complainant’s educational mission. The Panel concludes that Respondent receives remuneration from such use. In line with prior UDRP decisions, the Panel finds this use to constitute neither “a bona fide offering of goods and services” per Policy ¶ 4(c)(i) nor “a legitimate noncommercial or fair use” of the disputed domain name per Policy ¶ 4(c)(iii). See QVC, Inc. v. Network Websites.com and John T. Clark, D2006-0349 (WIPO May 29, 2006) (“The Panel assumes that Respondent earns payment in exchange for exposing Internet users seeking Complainant to unrelated advertisements…Such use of the disputed domain names is not in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii).”); see also MBNA America Bank, N.A. v. Vertical Axis, Inc., FA 133632 (Nat. Arb. Forum Jan. 6, 2003) (“Respondent uses its domain name to re-direct Internet users into accessing websites containing pop-up advertisements and a series of links to other commercial websites. Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).”).
Respondent, Don’t Panic Business Technology, does not contend, and there is no reason otherwise for the Panel to believe, that it has been commonly known as the disputed domain name, <coloradomesauniversity.com>, per Policy ¶ 4(c)(ii).
Respondent does argue that “university” is a generic term, open to anyone for use in a domain name. Moreover, Respondent contends that, since it is a resident of both the state of Colorado and the county of Mesa, it is particularly appropriate that Respondent be allowed to own the disputed domain name. The Panel, on the other hand, determines that while “university” is a generic term, the combination of words, “Colorado Mesa University,” is a distinctive term identifiable with one specific entity, Complainant, and worthy of trademark consideration. See OWN LLC v. Public Domains, FA 1382736 (Nat. Arb. Forum May 17, 2011) (finding that the combination of “own” and “tv” is not a generic term); see also PetWarehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) (“…it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community.”)
Furthermore, Respondent is not using the disputed domain name for services that a reasonable person would associate with the term, “university.” See HSBC Fin. Corp. v. Clear Blue Sky Inc., D2007-0062 (WIPO June 4, 2007) (the learned panel commented on legitimacy of use of a disputed domain name based on its generic quality that, “…the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark.” [emphasis added]); and Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (finding that respondent had rights or legitimate interests in a disputed domain name composed of generic terms since “The [disputed] domain [name] is…being used to describe the content of the site.”). Ergo, the Panel does not find Respondent's line of reasoning persuasive in supporting its rights or legitimate interests in the disputed domain name.
For all the reasons above, the Panel rules that Complainant has shown that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent contends that Complainant has not established trademark rights in the COLORADO MESA UNIVERSITY mark and thus Respondent did not register and is not using the disputed domain name in bad faith. As reasoned above, the Panel disagreed with Respondent’s position and found that Complainant had established common law trademark rights in said mark by the time this Complaint was filed. However, the Panel does note that Respondent registered the disputed domain name on April 26, 2011, the same day Complainant announced, after a public meeting on the issue, that it was changing it name to Colorado Mesa University. So, arguably, this registration occurred before Complainant had established its common law rights in a trademark corresponding to that changed name. Generally, prior UDRP panels have found bad faith registration not to exist if a disputed domain name was registered before establishment of the corresponding trademark or service mark. See Kim Laube & Co. Inc. v. RareNames, WebReg, FA 1291282 (Nat. Arb. Forum Dec. 22, 2009) (“Panels have generally found that the registration of a domain name prior to the establishment of trademark rights will negate a claim of bad faith registration…”); see also Meeza QSTP-LLC v. Torsten Frank / medisite Systemhaus GmbH, D2009-0943 (WIPO Sept. 15, 2009) (“As a general rule, when a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant’s non-existent right.”).
However, Policy panels have found some exceptions to the general rule when it appears that a respondent has been well aware of an impending announcement of new name or band by an established entity. See Collective Media, Inc. v. CKV / COLLECTIVEMAEDIA.COM, D2008-0641 (WIPO July 31, 2008) (“For a finding of bad faith under paragraph 4(a)(iii) of the Policy, there must be some evidence that the Respondent was aware of the Complainant and sought to take advantage of its mark.”); see also Meeza QSTP-LLC, supra (“In certain situations, however, when the respondent is aware of the complainant and the circumstances indicate that the aim of the registration was to take advantage of potential complainant rights, bad faith can be found.”).
In such cases, those panels have determined that bad faith existed in the form of abusive opportunism. See AOL LLC v. Fry, FA 1112246 (Nat. Arb. Forum Jan. 21, 2008) (“finding registration and use of a disputed domain name in “opportunistic” bad faith, “...particularly so because the domain name registration was effected on the same day as the announcement of the intended acquisition of Tacoda by Complainant.” [emphasis added]); see also The London Metal Exchange Ltd. v. Hussain, D2000-1388 (WIPO Dec. 15, 2000) (holding that the disputed domain name was registered in “opportunistic” bad faith, “[p]articularly so when the domain name registration was effected within hours of an announcement concerning a reorganization of the Complainant.” [emphasis added]); see also Thomson Canada Ltd. v. Hyon-chol, FA 1107033 (Nat. Arb. Forum Jan. 17, 2008); see also Konica Corp., Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, D2003-0112 (WIPO Mar. 31, 2003).
In this case, the Panel believes that Respondent is guilty of just this sort of opportunism, as registration of the disputed domain name occurred on the exact same day that Complainant disclosed its long anticipated name change. Respondent admits to being part of the community that had been made well aware by Complainant that such a change would happen, and undoubtedly knew of the forum at which the announcement would be made. In the Panel’s opinion, Respondent pounced quickly, in bad faith, at that opportunity.
Respondent argues that it acquired the disputed domain name to protect Complainant’s new trademark from being swept up by some other third party, who would have undoubtedly derogated the mark by linking it to some kind of unsavory content – as opposed to Respondent’s content, which Respondent contends is uplifting. However, the Panel sees only that Respondent is interested in its own commercial gain, which it obtains through Internet user confusion regarding Complainant’s connection with Respondent’s website and presumed endorsement of the advertisements and links found there.
Respondent contends further that its prominent disclaimer of affiliation with Complainant – pasted on Respondent’s website – should relieve it of any findings of bad faith registration or usage. However, the Panel agrees with the prevailing opinion of UDRP panels that a disclaimer does not prevent Internet user attraction to and perusal of a website based upon deception, and therefore fails to mitigate such bad faith. See Caterpillar Inc. v. Admin Office c/o Brisbane Technologies, FA 1344352 (Nat. Arb. Forum Oct. 14, 2010) (“…the addition of such a disclaimer does not mitigate the gravity of the offense…because Internet users are likely confused as to Complainant’s possible affiliation with the disputed domain name long before they encounter Respondent’s disclaimer.”); see also Toyota Motor Sales, U.S.A., Inc. v. Pick Pro Parts Inc., D2005-0562 (WIPO July 20, 2005) (“…the trademark disclaimers displayed on Respondent’s website actually hurt its case.”).
In accordance with the foregoing, the Panel decides that Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coloradomesauniversity.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: August 8, 2011
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