President and Fellows of Harvard College, Harvard Business School Publishing Corporation v. LeEl Technology.com
Case No. D2007-1536
1. The Parties
The Complainant is President and Fellows of Harvard College, Cambridge, Massachusetts, United States of America; Harvard Business School Publishing Corporation, Boston, Massachusetts, United States of America, represented by Bromberg & Sunstein, LLP, United States of America.
The Respondent is LeEl Technology.com, Lakewood, California, United States of America, appearing pro se.
2. The Domain Name and Registrar
The disputed domain name <harvardbusinessreview.mobi> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2007. On October 19, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On October 20, 2007, GoDaddy.com, Inc. transmitted by email to the Center its verification response providing the registrant contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2007. The Response was filed with the Center on November 14, 2007.
The Center appointed William R. Towns as the sole panelist in this matter on November 23, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant President and Fellows of Harvard College1 operates Harvard University, the oldest institution of higher learning in the United States. Harvard University owns Harvard Business School Publishing Corporation, a non-profit entity that publishes the Harvard Business Review, a well-known journal that has been in print since 1922.
The Complainant is also the owner of numerous federal registrations for the mark HARVARD and other HARVARD-formative marks issued by the United States Patent and Trademark Office (USPTO), including the following marks: HARVARD BUSINESS REVIEW, HARVARD BUSINESS SCHOOL, and HARVARD BUSINESS SCHOOL PUBLISHING. The Complainant licenses the use of its marks to Harvard Business School Publishing Corporation, which also operates a website at “www.harvardbusinessreview.com”.
The Respondent buys and sells domain names. The Respondent registered the disputed domain name <harvardbusinessreview.mobi> on July 12, 2007. The disputed domain name currently is parked by the domain name registrar, GoDaddy.com, Inc.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that it owns hundreds of HARVARD-formative trademark registrations, and numerous registrations for HARVARD BUSINESS-formative trademarks, including the federally registered marks HARVARD BUSINESS REVIEW, HARVARD BUSINESS SCHOOL, and HARVERD BUSINESS SCHOOL PUBLISHING. The Complainant’s subsidiary, Harvard Business School Publishing Corporation, publishes the Harvard Business Review, a journal in print since 1922. The Complainant asserts that it first used the HARVARD mark in 1638, and that its HARVARD BUSINESS REVIEW and other HARVARD-formative marks are well-known and famous.
The Complainant contends that the disputed domain name is identical to its HARVARD BUSINESS REVIEW mark, and confusingly similar to the Complainant’s numerous HARVARD-formative marks, including the marks HARVARD, HARVARD BUSINESS SCHOOL, HARVARD BUSINESS SCHOOL PUBLISHING, and HARVARD BUSINESS REVIEW. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant maintains that it has not licensed or otherwise authorized the Respondent to use its marks, and that the Respondent is not commonly known by the disputed domain name. The Complainant also contends that the Respondent has made no active use of the disputed domain name since its registration. Further, according to the Complainant, the Respondent flagrantly refused to accept delivery of or to read the Complainant’s notice letter of September 12, 2007, requesting that Respondent voluntarily transfer the disputed domain name to the Complainant.2 The Complainant argues that this conduct underscores the Respondent’s lack of rights or legitimate interests in the disputed domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent must have been aware of the Complainant and its famous HARVARD BUSINESS REVIEW and HARVARD-formative marks. The Complainant argues that there is no plausible explanation why someone with no affiliation with the Complainant would register a domain name consisting entirely of the Complainant’s HARVARD BUSINESS REVIEW mark. The Complainant further argues that bad faith may be inferred from the Respondent’s failure to make any active use of the disputed domain name, and the Complainant asserts that the Respondent’s registration of the disputed domain name prevents mobile device users from reaching the natural mobile device interface for the Complainant’s preexisting “www.harvardbusinessreview.com” website.
The Complainant also alleges that the Respondent refused to voluntarily transfer the domain name to the Complainant, and that the Respondent falsely accused Complainant’s counsel of attempting to acquire the domain name to sell to the Complainant at a higher price,3 which the Complainant contends is further evidence of bad faith.
B. Respondent
The Response is submitted by the CEO of LeEL Technology Inc. According to the Respondent, LeEL Technology is a technology company that, among other services, buys and sells generic domain names. The Respondent states that it is fully aware of the policies of ICANN pertaining to the purchase and sale of protected domain names, and that he and/or his company owns more than 6000 premium generic “.mobi” domain names, including more than 500 of these in an educational portfolio.
According to the Respondent, the company is preparing to launch a private auction to the educational industry to bid on its educational portfolio, and further indicates that the Complainant is included on the list to be invited to the auction. The Respondent acknowledges that the Complainant is the oldest institution of higher learning in the United States, and states that the Complainant’s HARVARD mark is among the world’s most famous and well-known trademarks. The Respondent reiterates that its company policy is the same as that of ICANN when it comes to proper conduct in domain name registration, and that it takes umbrage at the allegations made against it in this proceeding, contending that this complaint was fabricated by the Complainant’s attorneys.
The Respondent denies that it has violated any ICANN policies, and maintains that it did not know the disputed domain name was in its portfolio until after it was contacted by the Complainant’s attorneys. The Respondent maintains that since it is now aware that the disputed domain name is in this portfolio, it will not in any way contest or try to keep the Complainant from the disputed domain name.
The Respondent denies refusing to accept delivery of the Complainant’s notice letter, maintaining that it is its policy not to open attachments to unsolicited emails, and maintains that Federal Express refuses to make deliveries to its CEO at the address provided in the registrant contact details provided by the registrar because of other prior events.4 The Respondent specifically denies ever asking for money from the Complainant for the transfer of the domain name. According to the Respondent, it was only because the Complainant’s attorney Peter J. Karol falsely accused him of asking for money that he sent an email in response claiming (falsely the Respondent now admits) that attorney Karol was attempting to acquire the disputed domain name to sell to the Complainant at a higher price.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,
WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <harvardbusinessreview.mobi> is identical to the Complainant’s registered HARVARD BUSINESS REVIEW mark, and confusingly similar to the Complainant’s HARVARD mark and HARVARD-formative marks. The Complainant beyond question has established rights in its marks through registration and use. At a minimum, the Complainant’s marks are entitled to a presumption of validity by virtue of their registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047.
The Respondent does not contest that the disputed domain name is identical to the Complainant’s HARVARD BUSINESS REVIEW mark. Further, The Respondent does not dispute the Complainant’s rights in the HARVARD-formative marks, and affirms that the Complainant’s HARVARD mark is one of the most well known and famous marks in the world.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, the Complainant is required to make a prima facie showing under paragraph 4(a)(ii) of the Policy in order to shift the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name under paragraph 4(c). It is undisputed that the Complainant has not authorized the Respondent to use the Complainant’s marks or register domain names appropriating these marks. There is no indication that the Respondent is commonly known by the disputed domain name, and no evidence of any active use of the disputed domain name by the Respondent.
Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph 4(a)(ii). The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, supra; Compagnie de Saint Gobain v. Com-Union Corp.,
WIPO Case No. D2000-0020.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not brought to the attention of the Panel any circumstances sufficient to bring this case within any of the safe harbors of paragraph 4(c). Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name. The Respondent has made no use of the disputed domain name with an active website. The Panel notes that the Respondent claims to be in the business of buying and selling generic domain names, but in this instance the Respondent does not claim, nor could it credibly be claimed, that the disputed domain name is generic. It is undisputed that the Respondent registered a domain name identical to the Complainant’s HARVARD BUSINESS REVIEW mark. According to the Respondent, the disputed domain name was acquired to be auctioned off with other domain names in what the Respondent describes as an “education portfolio”. The Respondent obviously is aware of the Complainant. Moreover, the Respondent acknowledges that the Complainant’s HARVARD mark is among the most well-known and famous marks in the world.
The Respondent claims not to have been aware or registering the disputed domain name until after being contacted by the Complainant’s attorneys. Even assuming this to be the case, the Respondent still has demonstrated no rights or interests in the disputed domain name. Further, paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.5 See Media General Communications, Inc. v. Rarenames, WebReg,
WIPO Case No. D2006-0964.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230.
In this case, the Respondent states that it acquired the disputed domain name to sell it at auction. The disputed domain name is identical to the Complainant’s HARVARD BUSINESS REVIEW. The Respondent does not deny being aware of the Complainant and its marks, and acknowledges the distinctiveness and fame of the Complainant’s HARVARD mark. Such circumstances are highly indicative of bad faith registration and use. As noted in Research In Motion Limited v. Dustin Picov,
WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products or services, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. See also Paula Ka v. Paula Korenek,
WIPO Case No. D2003-0453.
As noted above, the Respondent claims that it did not realize the disputed domain name was in its portfolio. It is not clear to the Panel how the Respondent managed to overlook this particular domain name, given that the Respondent was preparing to sell it at an auction targeting the Complainant and other educational institutions.6 In any event, paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to third party trademarks in violation of the Policy. Registering a domain name that is identical to the distinctive trademark of another with the intention of selling the domain name for profit, without exploring in a meaningful way the possibility of third-party rights, is inconsistent with this good faith requirement. The Panel holds that the Respondent cannot consistent with the Policy shield its conduct by closing its eyes to whether the domain name being registered is identical or confusingly similar to the trademark of another. See Media General Communications, supra; Mobile Communication Service Inc. v. WebReg, RN,
WIPO Case No. D2005-1304.
In the Panel’s opinion, only through “willful blindness”7 could the Respondent claim to have been unaware of having registered a domain name that, far from being generic, consists entirely of the Complainant’s HARVARD BUSINESS REVIEW mark. See e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,
WIPO Case No. D2007-1141. The Panel concludes, in light of the factors discussed above, and given the particular circumstances of this case, that such “willful blindness” on the part of the Respondent constitutes bad faith under the Policy. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,
WIPO Case No. D2007-0062. See also Media General Communications, supra; Mobile Communication Service supra.
Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <harvardbusinessreview.mobi> be transferred to the Complainant.
William R. Towns Sole Panelist
Dated: December 7, 2007
1 The Complaint names two parties as complainants: (1) Presidents and Fellows of Harvard College (the corporate name of Harvard University); and (2) Harvard Business School Publishing Corporation. Presidents and Fellows of Harvard College owns the HARVARD-formative marks identified in the Complaint and licenses the use of these marks to its subsidiary, Harvard Business School Publishing Corporation. As used herein, “the Complainant” means Presidents and Fellows of Harvard College unless otherwise indicated.
2 The Complainant notes that its notice letter was sent to the Respondent both as an email attachment and by Federal Express. According to the Complainant, the Respondent refused delivery from Federal Express. Further, the Complainant asserts that the Respondent, after receiving the email, contacted one of its attorneys, Peter J. Karol, by telephone, at which time the Respondent indicated that he had not opened the email attachment and that he would not do so.
3 According to the Declaration of the Complainant’s attorney Peter J. Karol, the Respondent flatly stated that he would not transfer the domain name for free. Thereafter, according to the Karol Declaration, the Respondent made false accusations that Karol was attempting to acquire the disputed domain name from him so that Karol could sell the domain name to the Complainant for a higher price.
4 According to the Respondent, the unsolicited email received from attorney Karol stated “please see the attachment”, and the Respondent thereupon contacted Karol by telephone to inquire what the subject of the email was. The Respondent claims that Karol never identified himself as the Complainant attorney during that conversation, and that Karol would not tell the Respondent what the email attachment was, but insisted that the Respondent open it. At that point, according to Respondent, the conversation ended.
5 Paragraph 2 of the Policy, “Your Representations”, is incorporated by reference in the registration agreements of ICANN-approved registrars, and provides as follows:
By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights. (emphasis added).
6 The Respondent does not explicitly state that it acquires domain names through automatic bulk registrations, nor has its representative provided any evidence regarding the circumstances under which it registered the disputed domain name. The circumstances of this case, including the Respondent’s questionable claim not to have even been aware of the registration of the disputed domain name, are strongly evocative of opportunistic bad faith registration and use of the domain name.
7 See WIPO, Cybersquatting Remains on the Rise with further Risk to Trademarks from New Registration Practices (Press Release, March 12, 2007).
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