Duke University v. David Hanley
Claim Number: FA1609001692961
Complainant is Duke University (“Complainant”), represented by Susan Freya Olive of Olive & Olive, P.A., North Carolina, USA. Respondent is David Hanley (“Respondent”), represented by Eric Misterovich of Revision Legal, PLLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dukecareers.com>, registered with GoDaddy.com, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 8, 2016; the Forum received payment on September 8, 2016.
On September 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dukecareers.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2016 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@dukecareers.com. Also on September 14, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 17, 2016.
An additional submission from Complainant was received on October 25, 2016 and determined to be non-compliant with Supplemental Rule #7 due to its receipt after the deadline for submissions.
An additional submission from Respondent was received on October 27, 2016, and determined to have been received in a timely manner according to The Forum's Supplemental Rule #7.
On October 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the DUKE trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,317,603, registered on February 15, 2000). Complainant has common law rights in the DUKE CAREERS trademark for its use along with various employment related services dating back to at least as early as July 10, 2010. Complainant often uses its DUKE trademark in conjunction with additional terms, in connection with its services and goods, such as CAREERS, CARD, CAREER CENTER, MEDICINE, and UNIVERSITY. Respondent’s <dukecareers.com> domain name is confusingly similar and identical, respectively, to the DUKE and DUKE CAREERS trademarks.
Respondent is not commonly known by the <dukecareers.com> domain name as it has no relationship with Complainant or authority to use Complainant’s trademarks. Respondent fails to provide a bona fide offering of goods or services or a legitimate non-commercial or fair use because the resolving website attempts to mimic the look and feel of Complainant’s trademarks on a website designed to confuse Internet users about Complainant’s relationship to the website. Of the thousands of individuals per month seeking employment with the Complainant, many may be confused as to the origin, sponsorship, or approval of Respondent’s website content and commercial activities. Examples include Respondent’s website depicting a young adult (college-aged) wearing a blue DUKE CAREERS t-shirt.
Respondent uses the <dukecareers.com> domain name in bad faith because the resolving website is used in an attempt to create confusion by suggesting a connection between the website and Complainant through the display of Complainant’s trademarks and mimicry of Complainant’s use of such trademarks and the targeting of graduates of Complainant’s university. Respondent registered the <dukecareers.com> domain name in bad faith because it did so while aware or likely to be aware of Complainant’s rights in the DUKE and DUKE CAREERS trademarks based upon the longstanding use and fame of the trademarks.
B. Respondent
Complainant lacks common law rights in the DUKE CAREERS trademark through a lack of demonstrated secondary meaning. The <dukecareers.com> domain name is comprised of generic terms.
Complainant has provided no evidence aside from conclusory statements that Respondent is not commonly known by the <dukecareers.com> domain name. Complainant fails to demonstrate that Respondent attempts to impersonate Complainant or otherwise exploit Complainant’s trademarks. Respondent uses the <dukecareers.com> domain name to operate a legitimate job posting website. The domain name is comprised of generic terms, such that Respondent can have rights or legitimate interests in it.
The <dukecareers.com> domain name is comprised of generic terms such that its registration on such a basis did not target any of Complainant’s trademarks. Respondent’s use of the <dukecareers.com> domain name predates any possible common law rights of Complainant in the DUKE CAREERS mark. Complainant has provided no supportable arguments to show that Respondent has any knowledge of the DUKE trademark at the time of domain name registration. Complainant’s evidence supports that Respondent uses the resolving website to provide a legitimate job posting website and there is no evidence of targeting graduates of Complainant’s university or other bad faith use.
C. Additional Submissions
Complainant’s Additional Submission:
As stated above, and further explained below (see “Complainant’s Additional Submission of October 25, 2016”), the Panel will not consider the Complainant’s Additional Submission.
Respondent’s Additional Submission:
The Respondent shortly requested the Panel to reject Complainant’s additional submission because of its untimely filing.
Trademarks and Disputed Domain Name
The Complainant is the owner of the U.S. trademark registrations
U.S. No. 1,701,827 DUKE UNIVERSITY Logo (registered July 21, 1992)
U.S. No 1,702,350 DUKE UNIVERSITY STORES Word (registered July 21, 1992)
U.S. No 1, 702,830 DUKE UNIVERSITY Logo (registered July 28, 1992)
U.S. No 1, 713, 473 UNIVERSITAS DUKIANA ERUDITIO RELIGIO Logo (registered September 8, 1992)
U.S. No 2,026,492 DUKE Logo (registered December 31, 1996)
U.S. No 2,082,553 DUKE Logo (registered July 22, 1997)
U.S. No 2,092,314 DUKE Logo (registered August 26, 1997)
U.S. No 2,122,067 DUKE Logo (registered December 16, 1997)
U.S. No 2, 203,764 DUKE CENTER FOR LIVING Word (registered November 17, 1996)
U.S. No 2,317,603 DUKE Word (registered February 15, 2000)
U.S. No 2,415,817 DUKECARD Word (registered December 26, 2000)
U.S. No 3,157,222 DUKIE Word (registered October 17, 2006)
U.S. No 3,780,204 DUKEENGAGE Word (registered August 27, 2010)
U.S. No 3,878,213 DUKE Logo (registered November 16, 2010)
U.S. No 3,936,096 DUKE Word (registered March 29, 2011)
U.S. No 3,995,015 DUKE UNIVERSITY ATHLETICS EXCELLENCE LOYALTY DIVERSITY EDUCATION ACCOUNTABILITY SPORTSMANSHIP COMMITMENT INTEGRITY RESPECT D Logo (registered July 12, 2011)
U.S. No 4,172,132 DUKE Logo (registered July 10, 2012)
U.S. No 4,323,346 DUKE CHILDREN’S Word (registered April 23, 2013)
U.S. No 4,342,645 WASHINGTON DUKE INN & GOLF CLUB Word (registered May 28, 2013)
U.S. No 4,372,826 DUKE MEDICINE Word (registered July 23, 2013)
U.S. No 4,760,204 IRON DUKES Logo (registered June 23, 2015
The Respondent registered the <dukecareers.com> domain name in 2013.
Complainant’s Additional Submission of October 25, 2016
According to the Forum’s Supplemental Rule 7, a party may submit additional written statements and documents to the Forum and the opposing party(s) within five (5) Calendar Days after the date the Response or the original submission was received by the Forum.
In this case, the five (5) Calendar Days ended on October 22, 2016. As this day was a Saturday, the deadline is automatically extended to the next working day, namely Monday, October 24, 2016.
However, the Complainant did not file the Additional Submission until the day after, October 25, 2016. This date is in fact also clearly shown by the Complainant’s own documentation on when the Additional Submission was filed.
The Panel therefore notes that the Respondent’s Additional Submission was received after the deadline for submissions.
Accordingly, the Panel will not consider this Additional Submission.
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.
Complainant claims to have rights in the DUKE trademark through its registration with the USPTO (e.g., Reg. No. 2,317,603, registered on February 15, 2000). Accordingly, the Panel finds that Complainant has rights in the DUKE mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
While Complainant does not contend to own a USPTO registration for the DUKE CAREERS trademark, it does claim to hold common law rights in the mark. When a complainant can establish common law rights, registration is not required. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant claims to have common law rights in the DUKE CAREERS trademark for its use along with various employment related services dating back to at least as early as July 10, 2010. For a complainant to have common law rights in a trademark, secondary meaning must be demonstrated. Complainant has provided acceptable evidence to demonstrate common law rights in the DUKE CAREERS trademark, and the Panel finds this evidence sufficient to establish seconday meaning. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards).
The Panel finds that Respondent’s <dukecareers.com> domain name is confusingly similar and identical, respectively, to the DUKE and DUKE CAREERS trademarks. The term “careers” is generic, and so its addition to the DUKE trademark does not differentiate the domain name and trademark.
The relevant part of the disputed domain name is “dukecareers”, as it has been well established in previous UDRP cases that the added top-level domain – being a required element of every domain name – may be disregarded when assessing whether or not a mark is identical or confusingly similar.See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis), see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
While Respondent contends that the <dukecareers.com> domain name is comprised of common and generic terms and as such cannot be found to be identical or confusingly similar to Complainant’s trademark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the trademarks and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Accordingly, the Panel finds the <dukecareers.com> domain name confusingly similar to the DUKE trademark pursuant to Policy ¶ 4(a)(i), despite the addition of the generic term “careers” and gTLD.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant maintains that Respondent is not commonly known by the <dukecareers.com> domain name as it has no relationship with Complainant or authority to use Complainant’s trademarks, it has not argued being so known, and nothing about Respondent’s personal name, “David E. Hanley,” suggests such. The Panel finds that Respondent is not commonly known by the disputed <dukecareers.com> domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant alleges that Respondent fails to use the <dukecareers.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website attempts to mimic the look and feel of Complainant’s trademarks on a website designed to confuse Internet users about Complainant’s relationship to the website, which has resulted in actual confusion by Internet users and human resource professionals.
The Panel finds Complainant’s arguments and evidence sufficient, and thereby concludes that Respondent does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Further, the Panel finds that the generic nature of the trademark and domain name does not afford Respondent rights or legitimate interests in the domain name. Contra Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”).
Complainant asserts that Respondent uses the <dukecareers.com> domain name in bad faith because the resolving website is used in an attempt to create confusion by suggesting a connection between the website and Complainant through the display of Complainant’s trademarks and mimicry of Complainant’s use of such trademarks and the targeting of graduates of Complainant’s university. Complainant urges that Respondent’s use of the domain name includes postings for jobs purported to be at Complainant’s university, increasing the likelihood for Internet users seeking Complainant to be directed to Respondent’s website and that Respondent’s metatags and underlying source code include the term “Duke” standing alone, in order to drive traffic to the <dukecareers.com> domain name. The Panel finds that Complainant’s evidence is sufficient to show that Respondent attempts to profit through the attraction of Internet users to the <dukecareers.com> domain name, and thereby finds that Respondent’s use of the domain name is in bad faith according to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Complainant maintains that Respondent registered the <dukecareers.com> domain name in bad faith because it did so while aware or likely to be aware of Complainant’s rights in the DUKE and DUKE CAREERS trademarks based upon the longstanding use and fame of the trademarks. Complainant urges that Respondent was so aware due to the DUKE trademark’s use for over a century, the USPTO registrations and common law rights of the DUKE and DUKE CAREERS trademarks. Respondent argues that its use of the <dukecareers.com> domain name predates any possible common law rights of Complainant in the DUKE CAREERS trademark. While the Panel can accept that there may well be some logistics in the Respondent’s argumentation here, the way Respondent has used the disputed domain name still clearly indicates that Respondent registered and used <dukecareers.com> with knowledge of Complainant’s prior rights to the DUKE trademark/s.
The Panel concludes that Respondent registered the <dukecareers.com> domain name with actual, rather than merely constructive knowledge, of Complainant’s rights in at least the DUKE trademark/s. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dukecareers.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 9, 2016
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