National Arbitration Forum

DECISION

The University of Houston System v. Salvia Corporation

Claim Number: FA0602000637920

PARTIES

Complainant is The University of Houston System (“Complainant”), represented by Dona G. Hamilton, of University of Houston System, 311 E Cullen Building, University of Houston, Houston, TX 77204. Respondent is Salvia Corporation (“Respondent”), represented by Anatoly Ostrovsky, P.O. Box 96, Riga, Latvia LV 1050.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kuhf.com>, registered with Dstr Acquisition Vii, Llc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra J. Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 6, 2006.

On February 6, 2006, Dstr Acquisition Vii, Llc confirmed by e-mail to the National Arbitration Forum that the <kuhf.com> domain name is registered with Dstr Acquisition Vii, Llc and that the Respondent is the current registrant of the name. Dstr Acquisition Vii, Llc has verified that Respondent is bound by the Dstr Acquisition Vii, Llc 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 February 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 6, 2006 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@kuhf.com by e-mail.

A timely Response was received and determined to be complete on February 28, 2006.

A timely Additional Submission was submitted by Complainant on March 3, 2006. Respondent then submitted a timely Additional Response on March 7, 2006. Both Additional Submissions have been fully considered by the Panel.

On March 7, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <kuhf.com> domain name is confusingly similar to Complainant’s KUHF mark.

2. Respondent does not have any rights or legitimate interests in the <kuhf.com> domain name.

3. Respondent registered and used the <kuhf.com> domain name in bad faith.

B. Respondent makes the following assertions:

1. Complainant has not established trademark rights in the <kuhf.com> domain name.

2. Respondent has rights and legitimate interests in the <kuhf.com> domain name.

3. Respondent did not register and has not used the <kuhf.com> domain name in bad faith.

C. Additional Submissions were filed by both parties centering on the nature of common law trademark rights, which is discussed below.

FINDINGS

Complainant is the University of Houston and KUHF is the call name for its non-profit, listener-supported public radio station, continuously operated under that name since 1950. Complainant owns the <kuhf.org> and the <kuhf.net> domain names.

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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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

The Panel finds that Complainant has established common law trademark rights in KUHF by virtue of continuous commercial use for more than 55 years. Complainant submitted many pages of exhibits evidencing the widespread, long-standing public recognition of its radio station KUHF and its specialized programming, a long list of prominent national and local financial supporters, and the FCC designation of the call letters KUHF to Complainant’s radio station.

Respondent tries to argue that Complainant has not established common law rights in “Internet commerce”. However, there is no special category “Internet commerce” in trademark law. Despite Respondent’s arguments, it is not necessary for Complainant to establish trademark rights in every jurisdiction in the world, nor to file for every imaginable domain name which could be used to find its radio station. To establish common law trademark rights, one must establish commercial use and give sufficient evidence that the mark functions to identify the source of the goods or services, which Complainant has done. In fact, Respondent’s own submissions show that KUHF is known as the radio station of the University of Houston as far and wide as Latvia, where Respondent resides. It would be impossible for any Complainant to establish commercial use across every corner of the Internet. To the extent that it is possible to show “Internet commerce”, Respondent has confirmed that for us by posting many references and links related to the well-established radio station KUHF on its own website. Among those is a reference to KUHF’s nationally syndicated signature program entitled “Engines of Our Ingenuity”. See Australian Trade Commission v. Matthew Reader, Case No. D2002-0786 (WIPO November 12, 2002) (finding that “even if secondary meaning had been acquired only in a limited geographical area, Complainant would nevertheless have established sufficient common law trademark rights within the meaning of Paragraph 1(a)(i) of the Policy. The Policy makes no distinction between localized and widespread trademark rights, and there is no requirement that a Complainant own a famous mark to invoke the protections of the Policy). See also UEFA v. Fuzi Furniture, Case No. D2000-0710 (WIPO October 22, 2000) (finding complainant need not establish exclusive rights across all territorial boundaries, only a bona fide basis for making the complaint).

Respondent’s disputed domain name features Complainant’s entire KUHF mark and simply adds the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is irrelevant when determining whether a domain name is identical to a mark for purposes of Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Respondent points out that Complainant sometimes refers to its mark as KUHF-FM, rather than just KUHF. The Panel finds that Complainant’s use of “FM” in connection with KUHF falls into the same category of generic addition to a mark, as it is simply a uniform indicator of one of two major radio bands. For purposes of this case, it makes no difference if Complainant adds the “FM” or not, when using KUHF since, either way, Respondent’s domain name <kuhf.com> cannot be distinguished from Complainant’s KUHF mark.. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). See generally Clear Channel Communications, Inc. v. Russx Casting Company aka ForSale, FA 100145 (Nat. Arb. Forum Nov. 16, 2001) (finding common law rights in KVUU and WGIR, where those marks had been used to identify radio stations since 1983).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

There is no dispute that Respondent is using the <kuhf.com> domain name to operate a website featuring links to various commercial websites, some of which compete with Complainant and some of which contain adult-oriented material, from which Respondent presumably receives referral fees. Such commercial use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).

Respondent did not give any explanation for why it chose the letters KUHF to conduct any sort of legitimate business. Respondent is not licensed to register domain names featuring Complainant’s KUHF mark, nor is it commonly known by the disputed domain name <kuhf.com>, for purposes of Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

Complainant alleges that Respondent registered the domain name containing a known trademark for the purpose of selling the name for a price in excess of Respondent’s out-of-pocket costs. See also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Since Respondent is using a domain name which is virtually identical to Complainant’s mark, Internet users may become confused as to Complainant’s sponsorship of or affiliation with the resulting website, further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

Further, in the absence of any other possible explanation for Respondent choosing the letters KUHF, meaningless except as Complainant’s call letters, this Panel finds it very likely that Respondent did intend to sell for profit the domain name <kuhf.com> to Complainant when it registered the domain name. This is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).

Finally, the Panel notes that Respondent appears to have engaged in a pattern of cybersquatting, still further evidence of bad faith. See Louis Vuitton Malletier S.A. v. Salvia Corporation, FA 600968 (Nat. Arb. Forum Jan. 5, 2006) where this same Respondent was ordered to transfer the domain name <vuiton.com> to the complainant in that case.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <kuhf.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra J. Franklin, Panelist
Dated: March 21, 2006

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