I just finished reading the decision for the UDRP involving Vertical Axis Inc (VA) vs. , The University of Texas System. Very good decision. Vertical Axis Inc wins the decision.
I enjoyed reading this so much, I posted a copy of the complete decision below.
NATIONAL ARBITRATION FORUM
DECISION
Board of Regents, The University of Texas System v. Vertical Axis Inc.
Claim Number: FA1004001322040
PARTIES
Complainant is Board of Regents, The University of Texas System (“Complainant”), represented by William G. Barber, Texas, USA. Respondent is Vertical Axis Inc. (“Respondent”), represented by Ari Goldberger, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is
PANEL
The undersigned certify that each has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., and Hon. Neil Brown, QC, as Panelists; Christopher Gibson as Presiding Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2010.
On May 4, 2010, Nameview Inc. confirmed by e-mail to the National Arbitration Forum that the
On May 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2010 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@texassports.org. Also on May 6, 2010, 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 May 26, 2010.
Complainant submitted an Additional Submission on June 1, 2010 that was deemed timely and in compliance with Supplemental Rule 7. On June 8, 2010, an additional submission of Respondent was forwarded to the panel, which had been received by the Forum in a timely manner in accordance with Supplemental Rule 7.
On June 7, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr. and Hon. Neil Brown, QC as Panelists, and Christopher Gibson as the Presiding Panelist.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that the Domain Name is identical or confusingly similar to Complainant’s trademarks, as well as to its website address for athletics at
Complainant and its flagship institution, The University of Texas at Austin (“UT”), use the marks TEXAS, UNIVERSITY OF TEXAS, TEXAS LONGHORNS, LONGHORNS, and others that include these terms extensively in connection with UT’s sports teams. Complainant asserts rights in the TEXAS marks through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,426,639 registered on January 27, 1987). Complainant states, in particular, that the mark TEXAS (e.g., Reg. No. 1,231,407) is an incontestable registration for “Entertainment Services-Namely, Providing College Athletic and Sporting Events.” All of these registrations are on the Principal Register of the United States Patent and Trademark Office and, except for Complainant’s TEXAS LONGHORNS registrations, all are incontestable.
Complainant further explains that UT’s licensing program is highly successful. Fans of UT and its athletics programs can purchase a wide variety of licensed products adorned with Complainant’s trademarks. UT’s athletics programs have been highly successful over the years, and the name TEXAS LONGHORNS has become one of the best-known names in the world of college sports. UT holds the record for the most collegiate licensing royalties earned in a single year, and has been the top U.S. university in terms of sales of licensed products for the past four years. These products are sold throughout the United States – via retail stores, websites, and catalogs – by more than 500 licensees. Complainant highlights that FORBES recently valued UT’s football program at $119 million, ranking it as the nation’s most valuable.
Complainant states that UT uses the domain name
Complainant contends that the Domain Name is identical or confusingly similar to Complainant’s UT marks and to its athletics website address. The Domain Name
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name, nor is Respondent making a legitimate noncommercial or fair use of the Domain Name. Respondent has not used, nor made any demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Domain Name
Complainant asserts that Respondent registered the Domain Name in bad faith. Respondent presumably is paid a fee or commission when Internet users visit the website at
UT’s attorneys sent Respondent a cease-and-desist letter on February 11, 2010. The attorney for Respondent responded, refusing to transfer the Domain Name. Complainant’s attorneys responded on April 9, 2010, refuting Respondent’s position, and again requested transfer of the Domain Name. However, Respondent’s attorney did not respond to the second letter. Instead, Complainant states that Respondent has continued its infringing activity despite being given notice of UT’s trademark rights. Not only is the Domain Name itself highly likely to cause confusion, but Respondent also displays link titles on its website and linked monetized pages that are clear references to UT and its goods and services.
Complainant states that Respondent has also engaged in a pattern of bad faith registration and use of others’ trademarks as Domain Names. Complainant cites fifteen prior UDRP decisions against Respondent and claims that these decisions show Respondent has registered domain names incorporating others’ well-known marks, in bad faith.
Respondent’s bad faith is thus evidenced by the fact that it owns no trademark or other intellectual property rights in the Domain Name; the Domain Name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the Domain Name in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the Domain Name; and Respondent’s Domain Name wholly incorporates the Complainant’s TEXAS mark.
B. Respondent
Respondent argues that there is no basis for transferring the Domain Name to Complainant. Respondent emphasizes that the Complaint should be denied, firstly, because Complainant’s trademarks – none of which are for the term “texas sports” – are not identical or confusingly similar to the Domain Name. Complainant’s geographically descriptive mark for TEXAS does not give Complainant a monopoly on all terms incorporating “Texas,” the name of a U.S. state, regardless of whether the term contains a word for a good or service alleged to be covered by Complainant’s mark. Complainant’s suggestion that it has a right to the Domain Name containing the word “sports,” because its trademark covers the provision of “sporting events,” is overreaching. Complainant is essentially claiming that it is the only party entitled to use the name of the State of Texas in connection with sports or together with the word “sports.” Respondent asserts that Complainant is wrong on this. Everyone is lawfully permitted to use the name of the State of Texas in a descriptive manner, and such permitted use extends to domain names. In any event, Respondent argues that there is no confusing similarity between TEXAS and the Domain Name
Moreover, Respondent contends that its registration of the Domain Name was in good faith and establishes its legitimate interest because “texas sports” is a geographically descriptive term, and such terms can be registered in a domain name on a first come, first-served basis. Respondent states that it registered the Domain Name because it was a geographically descriptive term to which it believed no party could claim exclusive rights. The Domain Name incorporates the descriptive term “texas sports,” which is composed of the two generic words “Texas” and “sports.” Complainant does not have a registered trademark for the term TEXAS SPORTS, but only has trademarks for the word TEXAS and other marks incorporating TEXAS.
Respondent states that it registered the Domain Name based solely on it being geographically descriptive (and not because of Complainant’s trademark), a position which is corroborated by the more than 60 other geographically descriptive domain names Respondent has registered which incorporate the name of the State of Texas, such as
Respondent also claims that it uses the Domain Name in a descriptive manner, hosting it with
Respondent further contends that it has not engaged in bad faith registration or use. Respondent affirmatively states that it registered the Domain Name because it incorporated a common descriptive term, and that Respondent had no knowledge of Complainant’s TEXAS mark when it registered the Domain Name. According to Respondent, there is absolutely no evidence Respondent registered the Domain Name with Complainant’s trademark in mind, or that it had even heard of Complainant or its trademark when it registered the Domain Name. Respondent emphasizes that Complainant has never had a registered trademark for TEXAS SPORTS. Had Respondent conducted a search at the web site of the USPTO, it would have found many trademarks incorporating the name of the State of Texas. There are currently 1,941 registered and pending U.S. trademarks which incorporate “Texas.” Respondent would have also found compelling support for its right to register the Domain Name based on its geographic descriptiveness. For example, the USPTO database identifies a trademark for TEXAS SPORTS on the Supplemental Register, which was abandoned in 1988. The fact the trademark was on the Supplemental Register is evidence that the term TEXAS SPORTS is descriptive, as only marks refused registration on descriptiveness grounds are eligible for registration on the Supplemental Register. More recently, in 2008, there was an attempt to register TEXAS SPORTS TS. The USPTO examiner again deemed the term TEXAS SPORTS to be geographically descriptive, and required the applicant to disclaim the exclusive right to use “Texas Sports.” Presently, the mark TEXAS SPORTS MAGAZINE is registered on the Supplemental Register, with “sports magazine” disclaimed. The USPTO also refused a trademark application for TEXAS SPORTS SANDS, on the grounds that the mark was geographically descriptive. Further evidence of the descriptiveness of the term TEXAS is that each of Complainant’s trademarks incorporating the word TEXAS were registered pursuant to Section 2(F) of the Trademark Act. This means TEXAS is not inherently distinctive, but Complainant’s marks were permitted because secondary meaning was alleged. The fact remains, regardless of Complainant’s trademark rights, that the term Texas as used by Respondent is the descriptive name of a U.S. state and Complainant, thus, cannot interfere with that use.
Respondent argues that Complainant does not have the exclusive right to use the term TEXAS in connection with sports, and it does not have the exclusive right to use TEXAS SPORTS, for which it has no trademark. In addition to TEXAS SPORTS MAGAZINE, there are other trademarks for the word TEXAS for goods and services related to sports, such as TEXAS BOWL and TEXAS STATE. Further evidence of Complainant’s lack of exclusive rights to TEXAS SPORTS comes from the 1.5 million third-party uses of the term evidenced by Google search results, including “Texas Sports Builder,” “Texas Sports Writers Association,” “Texas Sports Reach,” and “Texas Sports Hall of Fame.”
Respondent asserts its registration of the Domain Name was entirely in good faith. Respondent registered the Domain Name on March 4, 2006 – more than 4 years ago. Respondent urges that Complainant’s long delay in initiating this UDRP action raises the inference that Complainant did not believe Respondent had engaged in bad faith registration or use. There is no evidence that Respondent has used the Domain Name in bad faith. All links that have appeared on
Respondent finally contends that it has not violated the Policy and that Complainant’s allegations constitute an abuse of the proceedings. Complainant is essentially arguing that it is the only party entitled to use the word “sports” with the word “Texas,” despite the fact that Complainant does not possess a trademark for the term TEXAS SPORTS. Complainant has used tactics that overreach the limited protection to which it is afforded in connection with its weak, geographically descriptive TEXAS mark. The fact that Complainant is located in Texas makes a finding of geographic descriptiveness irrefutable. According to Respondent, it is well-established under the UDRP that geographically descriptive trademarks do not entitle their owner to domain names containing identical or similar geographical terms. In fact, the mere registration of a geographically descriptive term, ipso facto, resolves the issues of bad faith registration and legitimate interest in Respondent’s favor. Accordingly, Respondent contends that in addition to denying the Complaint, the Panel should issue a decision finding that Complainant has engaged in Reverse Domain Name Hijacking because there is absolutely no basis for this claim and Complainant should have so known.
C. Additional Submissions
In its Additional Submission, the Complainant presses its case by reiterating the arguments presented in the Complaint and responding to Respondent’s assertions. Complainant emphasizes that the Domain Name is confusingly similar to its TEXAS trademark and that Respondent has no rights or legitimate interests in the Domain Name, which is being used to this day in connection with a search directory page displaying links with titles likely to be associated with Complainant. Complainant further stresses that, despite Respondent’s knowledge of the Complainant’s trademark rights, Respondent continues to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the UT marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website. Finally, Complainant argues that, although Respondent contends there can be no bad faith without proof that the Domain Name was registered to profit from Complainant’s trademark rights, in this case Respondent has continued its infringing activity despite being given notice of those rights. As the owner of the infringing Domain Name, Respondent is ultimately responsible for the content on the related website and could have easily removed offending pages, but has not done so.
Respondent, in its Additional Submission, seeks to refute Complainant’s allegations. Regarding Complainant’s arguments about confusing similarity, Respondent asserts that, without an additional modifier, consumers seeing the mark TEXAS will not think only about Complainant or its mark, but will think of the State of Texas. If the word “sports” is combined with the word Texas, consumers are not likely see the term as designating Complainant’s sports. Instead, they will see it as designating sports generally in connection with the State of Texas. In this regard, Respondent emphasizes that Complainant has referred to confusingly similarity with Complainant’s domain name
Moreover, Respondent states that it has not intended for its web site to display sponsored results related to Complainant’s services. The display of the links are controlled by Yahoo!’s technology, the advertisers bidding on keyword terms, and the particular search queries conducted by users. The results shown on Respondent’s web site are the same results that are displayed across the Yahoo! network when TEXAS FOOTBALL or TEXAS SPORTS is searched for, including on Complainant’s own web page. Accordingly, Respondent’s use of the Domain Name to display PPC links related to the descriptive meaning of the Domain Name constitutes use of it in connection with the bona fide offering of goods and services, thus establishing Respondent’s rights and legitimate interest. Finally, Respondent states that it did in fact remove links to “Long Horns” and “Texas Long Horns” from its web site after it received the cease and desist letter from Complainant. Respondent concludes that it did not target Complainant’s trademarks, and the key to this case is that the Domain Name
FINDINGS
Complainant is the Texas State Board established for the purpose of governing The University of Texas System, which consists of highly regarded institutions of higher education and health institutions throughout the State of Texas.
The University of Texas at Austin is the Complainant’s flagship educational institution. In addition to providing educational services, UT actively participates in many collegiate sports, including football, baseball, basketball, cross-country, golf, rowing, soccer, softball, swimming and diving, tennis, track and field, and volleyball. UT’s sports teams have been referred to as the LONGHORNS since the adoption of UT’s mascot in 1916.
Complainant owns a number of trademark registrations, including the following:
• TEXAS: U.S. Reg. Nos. 1,231,407; 1,428,420; 1,426,639; 1,421,130; 1,424,077; 1,446,255; and 1,439,917.
• UNIVERSITY OF TEXAS: U.S. Reg. No. 1,340,787.
• THE UNIVERSITY OF TEXAS: U.S. Reg. No. 1,351,805.
• LONGHORNS: U.S. Reg. Nos. 1,231,408; 1,342,737; 1,450,737; 1,452,071; 1,454,864; and 1,456,574.
• TEXAS LONGHORNS: U.S. Reg. Nos. 3,665,961 and 3,665,962.
UT uses the marks TEXAS, UNIVERSITY OF TEXAS, TEXAS LONGHORNS, LONGHORNS, and other marks that include these terms in connection with its sports teams.
UT operates a website for its athletics programs at
The Domain Name was registered by Respondent on March 4, 2006.
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 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.
In this case, however, the Panel considers that it need only address two of these points to reach its decision.
Identical and/or Confusingly Similar
Paragraph 4(a)(i) of the Policy is satisfied when a complainant is able to prove two necessary elements: first, that the complainant has rights in a trademark or service mark, and second, that the domain name in dispute is identical or confusingly similar to the trademark or service mark on which the complainant relies.
Here, the Panel finds that Complainant has established rights in several registered trademarks including TEXAS, TEXAS LONGHORNS, THE UNIVERSITY OF TEXAS, and LONGHORNS. However, Complainant has not specifically asserted, nor is there any evidence to suggest, that it has common law or registered trademark rights in the term “Texas Sports” or in its
The Domain Name
The Panel finds that where a trademark is comprised of a descriptive term, as in the present case where Complainant’s TEXAS mark also refers to the State of Texas, even small differences in the domain name might be sufficient to eliminate a finding of confusing similarity. Respondent has cited Tire Discounters, Inc. v. TireDiscounter.com, FA 679485 (Nat. Arb. Forum June 14, 2006), in which the complainant’s mark TIRE DISCOUNTERS differed by only one letter from the disputed domain name
Here, the difference is not just a single letter, but the addition of the descriptive word “sports,” which serves to distinguish the Domain Name from Complainant’s TEXAS and other trademarks. Similarly, in Deer Valley Resort Company v. Intermountain Lodging and Reservation Center, FA 474344 (Nat. Arb. Forum June 27, 2005), the Panel determined that the complainant’s DEER VALLEY trademark was not confusingly similar to the disputed domain name,
In sum, the Panel considers that consumers and Internet users understand that “Texas Sports” is a descriptive term referring to sports in Texas, and will not necessarily assume that
Registration and Use in Bad Faith
The Panel’s decision regarding lack of confusing similarity is further bolstered by the Panel’s finding that the Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel agrees with Respondent that there is no sufficient evidence that Respondent registered the Domain Name while targeting Complainant’s trademark. The Panel is persuaded that Respondent registered the Domain Name as part of its wide-spread effort to register many geographically related domain names. The fact that Respondent continued using the Domain Name after receiving notice of Complainant’s trademark rights is not evidence of bad faith, if Respondent was entitled to use the Domain Name in the first place and used it in a manner that was not abusive, which is the case here. Because the Domain Name is comprised of common descriptive terms, the Respondent was free to register and use them, so long as Respondent did not target the Complainant or its trademarks. See, e.g., Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”).
Reverse Domain Name Hijacking
Respondent contends that, in addition to denying the Complaint, the Panel should issue a decision finding that Complainant has engaged in Reverse Domain Name Hijacking because there is no basis for the Complainant’s claim and Complainant should have known this.
Paragraph 15(e) of the Rules requires the Panel to declare that the Complaint was brought in bad faith and as an abuse of the administrative proceeding if it finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or primarily to harass the domain name holder.
Thus, the Panel is required to form an opinion on the motivation of the Complainant in bringing the Complaint.
In the opinion of the Panel, the Complainant, at the time it filed the Complaint, was entitled to have regard to the fact that it had trademark rights in the term TEXAS, which comprised part of the Domain Name, covering college athletic and sporting events.
In addition, as the Complainant focused its case on Respondent’s use of the Domain Name in connection with a pay-per-click landing page site, it was entitled to have regard to the fact that there are numerous UDRP decisions in which such use by a respondent has been found to constitute bad faith use, particularly when the complainant has a distinctive trademark and has been targeted by the respondent.
The other factor that must be taken into account is that sometimes, in such cases, there is information in the possession of the respondent and it is not until the Complaint is filed and the respondent puts in its submission that the panel finds that the respondent has a clear-cut defence and finds in its favour, as the panel has found in the present case.
Accordingly, having regard to all the circumstances in the present case, although the Panel has found that the Domain Name is not confusingly similar to Complainant’s trademarks and that the domain name was not registered and used in bad faith, the Panel finds that this is not a case of Reverse Domain Name Hijacking.
DECISION
For all the above reasons, and having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Christopher S. Gibson, Panel Chair
Neil Anthony Brown, Honorable Tyrus R. Atkinson, Jr., Esq., Panelists
Dated: June 25, 2010
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Those bastard Longhorns, it their fault that the Utes are leaving the Mountain West!
You’re right, it was a good decision.
Troy,
I agree. I do wish they put reverse hijacking in the decision.
larry