30th Jan 2014

 

national arbitration forum

 

DECISION

North Carolina State University at Raleigh v. The Ascot Group, Inc.

Claim Number: FA1311001529855

 

PARTIES

Complainant is North Carolina State University at Raleigh (“Complainant”), represented by William B. Cannon of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is The Ascot Group, Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wolfpack.com>, registered with Network Solutions, LLC.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

Ho-Hyun Nahm, Esq., The Honourable Neil Anthony Brown QC and Prof. Darryl C. Wilson

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2013; the National Arbitration Forum received payment on November 14, 2013.

On November 19, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <wolfpack.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 November 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 2013 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@wolfpack.com. Also on November 20, 2013, 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 December 24, 2013.

On December 27, 2013 the parties submitted Joint Request to Stay the Administrative Proceeding to the Forum. On the same date, the Forum issued ‘Order to Stay’ until January 10, 2014. On January 10, 2014, the Request to remove the Stay of Administrative Proceeding and the Order to Lift Stay of Arbitration were issued by the Forum.

On January 10, 2014, Complainant submitted an Additional Submission which was timely. On January 14, 2014, Respondent submitted an Additional Submission which was also timely.

On January 16, 2014, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. as the Chair of the three-member Panel along with The Honourable Neil Anthony Brown QC and Prof. Darryl C. Wilson as Panelists.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Policy ¶ 4(a)(i): Complainant’s Rights and the Confusingly Similar Domain Name

  • Complainant is a public research university that was founded in 1887. Complainant uses the WOLFPACK mark to designate its athletic teams. Complainant holds two federal trademark registrations for the WOLFPACK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,259,508 registered November 29, 1983) which protect the goods and services that use the WOLFPACK mark. Complainant uses the <gopack.com> domain name to promote its WOLFPACK brand goods, and achieves merchandise and ticket sales through this domain name.
  • Respondent’s <wolfpack.com> domain name is identical to the WOLFPACK mark as the inclusion of the generic top-level domain (“gTLD”) “.com” does not impact the analysis.

Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests

  • Respondent is “The Ascot Group” and its name does not bear semblance to the <wolfpack.com> domain name.
  • Respondent’s only use for the domain name is for the promotion of the domain name’s sale.
  • Respondent’s use of the colors red and white illustrates an attempt by Respondent to pass off as Complainant.

Policy ¶ 4(a)(iii) Respondent’s Bad Faith Use and Registration

  • Respondent requests between $60,000 and $75,000 for this domain name. The $60,000 offer appears on the website, while a July 5, 2007, letter indicates that Respondent initially sought $75,000 for the domain name. It is important to note that the July 5, 2007 letter was addressed to the Chancellor of Complainant-university, and was thus a targeted offer and not merely a general and public offer. See Compl., at Attached Ex. H.
  • Prior to hosting the “for sale” message on the <wolfpack.com> domain name’s website, Respondent used the domain name to host a directory to third-party businesses. Some of these links were either related to, or competed with, the WOLFPACK mark. See Compl., at Attached Ex. I. This conduct evidences prior bad faith disruption.
  • Respondent registered the <wolfpack.com> domain name with knowledge of Complainant’s rights in the WOLFPACK mark.

B. Respondent

Policy ¶ 4(a)(i):

· Respondent submits that Complainant has satisfied this prong, but notes that it is ultimately unimportant as Respondent prevails under Policy ¶¶ 4(a)(ii),(iii).

Policy ¶ 4(a)(ii):

· Respondent is involved in a business endeavor to promote and sell snowshoes. The WOLFPACK brand would identify these snowshoes, and Respondent purchased <wolfpackapparel.com> and <wolfpacksnowshoes.com> in June and July of 2001 to protect its prospective brand and ensure the business would have a home on the Internet. See Response, at Attached Exs. 7–8. Personal circumstances have arisen that placed the project on hold.

· Respondent registered the domain name to capitalize on the common usage of the phrase “wolfpack.” The term is widely used independent of Complainant’s American-based college-level sports endeavors. The term “wolfpack” has significant meaning beyond identifying a group of North Carolina sports teams, namely that it could mean a pack of wolves. For example, the term “wolfpack” was used to refer to groups of German submarines during World War II. More recently, the term “wolfpack” has entered the public psyche as identifying the protagonists in the film series “The Hangover,” in which the protagonists (referring to themselves as the “wolfpack”) engage in a series of comical antics. From this it is clear that the term “wolfpack” brings a variety of meanings to a given consumer’s mind, but it is very unlikely consumers in general will think only of Complainant’s sports teams when they see the term “wolfpack.”

Policy ¶ 4(a)(iii):

· Respondent has sought to sell its domain name to various individuals over the year. The offer made in 2007 to Complainant was by no means exclusive, and Respondent merely made a series of offers person-to-person for a time. Complainant cannot show Respondent’s bad faith for offering the domain name absent evidence of intent, at registration, to sell this domain name directly to Complainant. Respondent is within its rights in seeking to sell off the <wolfpack.com> domain name for its generic value. There are over twenty-five trademarks that are now, or have previously been, registered for use of the term WOLFPACK with the USPTO. Such extensive third-party use further illustrates the relatively non-exclusive rights Complainant holds in the mark and as such this weighs against a finding of Respondent’s bad faith. See Response, at Attached Ex. 5.

· As Respondent registered the domain names in hopes of cultivating a snowshoe selling business, there is no requisite bad faith at registration as mandated by the Policy. Respondent had good intents in promoting a line of products when Respondent first registered the domain names, although subsequent events have prevented the snowshoe business from actually taking off.

· Respondent registered the domain name to capitalize on the common usage of the phrase “wolfpack.” Absent direct proof that the public identifies the term “wolfpack” with Complainant’s North Carolina sports program, Respondent is within its rights to fairly use that term in domain names.

Laches:

· Complainant has waited over fifteen full years to initiate this claim against Respondent. A lengthy delay such as this one illustrates the lower likelihood that Complainant saw bad faith in Respondent’s conduct. It is suspicious that this identical domain name only came to Complainant’s attention so as to file a UDRP Complaint some decade-and-a-half after Respondent’s initial registration.

Reverse Domain Name Hijacking:

· There is simply no evidence showing that Respondent intended to target Complainant’s trademark in registering this domain name. The filing of this dispute is a “Plan B” approach with Complainant abusing the UDRP to circumvent the free market process of buying and selling non-infringing domain names.

Respondent registered the <wolfpack.com> domain name on November 21, 1997.

C. Additional Submissions

a) Complainant’s Additional Submission

· Complainant submitted an undisputed timeline of events from November 19, 1983 when Complainant obtained its first US trademark registration for the WOLFPACK mark to May 28, 2011 when Respondent updated the website resolved by the disputed domain name.

· Respondent sent its first unsolicited demand letter to Complainant on December 30, 2002, a mere five years after registration. Respondent made explicitly false statements to the Panel, claiming in its Response that (a) Respondent did not target Complainant, and (b) Respondent’s first pursuit of a sale of <wolfpack.com> came “15 years” after registration.

· It is axiomatic that a registrant’s bad faith actions reveal the registrant’s original intent when registering the domain name. Self-serving affidavits cannot become “get out of jail free” cards in UDRP proceedings.

· Panels have consistently found bad faith registration based on inferred actual knowledge of a famous trademark – even in cases where the trademark was much less famous than Complainant’s WOLFPACK mark.

· The majority rule is clear: “the doctrine of laches does not apply as a defense” in UDRP proceedings. Even if the Panel were to consider laches, Respondent has failed to prove that Complainant’s alleged delay prejudiced Respondent, and prejudice is a necessary element of laches. In this case, there has been no prejudice to Respondent. The theory of laches is inapplicable here because of the shifting and progressive nature of the bad faith acts at issue.

· In the present case, Respondent has not used the disputed domain name to reference a “wolfpack” in the dictionary sense. Respondent’s actions display a specific intent to target the Complainant’s trademark.

· Respondent, who repeatedly made unsolicited offers to sell a domain name to the owner of a federal trademark registration identical to the disputed domain name, acted in bad faith.

b) Respondent’s Additional Submission

· It does not constitute bad faith to offer common word domain names for sale.

· There is absolutely no evidence Respondent targeted Complainant with respect to registration and its use of the disputed domain name. The fact that many parties have been contacted as potentially interested parties severely undercuts Complainant’s claim that it was targeted.

· Complainant has not refuted and cannot refute the following points:

1) Wolfpack is a generic name;

2) Respondent registered the disputed domain name because of its inherent value as a single word “.com” domain name;

3) Working from the meaning of “Wolfpack,” Respondent took action to create, and brand, a snowshoe and apparel business; and

4) Complainant took no action for 15 years despite its knowledge of its purported claim.

FINDINGS

Complainant established that it had rights in the marks contained in the disputed domain name.

The disputed domain name is identical to Complainant’s WOLFPACK mark.

Respondent has no rights to or legitimate interests in the disputed domain name.

Respondent has not registered the disputed domain name in bad faith.

Complainant has not engaged in reverse domain name hijacking.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant is a public research university that was founded in 1887. Complainant claims that it uses the WOLFPACK mark to designate its athletic teams. Complainant argues that it holds federal trademark registrations for the WOLFPACK mark with the USPTO (e.g., 1,259,508 registered November 29, 1983) which protect the goods and services that use the WOLFPACK mark. Complainant notes that it uses the <gopack.com> domain name to promote its WOLFPACK-brand goods, and Complainant achieves merchandise and ticket sales through this domain name. The Panel agrees that it has been determined that national trademark registrations, such as those issued by the USPTO, are dispositive evidence as to Policy ¶ 4(a)(i) rights in a mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).

Complainant next argues that Respondent’s <wolfpack.com> domain name is identical to the WOLFPACK mark as the inclusion of the gTLD “.com” does not impact the analysis. The Panel also agrees that the domain name is identical to the WOLFPACK mark under Policy ¶ 4(a)(i). See, e.g., Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

The Panel determines that the Complainant has satisfied this element.

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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); see also 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.”).

 

Complainant notes that Respondent is “The Ascot Group” and that this name does not bear semblance to the <wolfpack.com> domain name. The Panel notes that Respondent identifies itself by the name “The Ascot Group, Inc.,” and further notes that Respondent does not seem to allege anywhere that it is “known as” the disputed domain name. Therefore the Panel agrees there is no reason to continue an inquiry as to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

Complainant next argues that Respondent’s only use for the disputed domain name is for the promotion of the domain name’s sale. The Panel notes that the domain name presently resolves to a website wherein Respondent promotes the sale for the amount of $60,000, or for best offer. See Compl., at Attached Ex. F. Prior panels have found that there is a lesser likelihood that the respondent has made a bona fide offering when the domain name’s primary purpose is to bring attention to the owner’s sale of the domain name. See, e.g., Groupe Auchan v. Slawomir Cynkar, D2009-0314 (WIPO May 11, 2009) (noting that “Respondent’s offer to sell or rent the domain names does not give rise to any right or legitimate interest”).

The Panel finds the evidence to weigh in favor of the Complainant here. While “wolfpack” is recognized as a common dictionary term (albeit a derogatory word when typed without a space between the words) there is no indication that the Respondent is using or has used the term in a non-trademark sense. In fact Respondent has not used the term at all publicly in connection with any goods or services and did solicit Complainant for purchase of the mark at a price that may be seen by some as high. Nor is Respondent in the business of purchasing and selling domain names; thus the Panel see the Respondent’s actions as limited to targeting based on the offers for sale including the one made directly to Complainant. Overall the Panel finds the Respondent’s evidence of demonstrable preparations to use fairly weak, relying so heavily as it does on Respondent’s own Declaration.

Therefore, the Panel determines that Respondent does not have rights or legitimate Interests under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent claims that it has sought to sell its domain name to various individuals over the years, and that the sale of generic domain names is not illegitimate. Respondent argues that the offer made in 2007 to Complainant was by no means exclusive, as Respondent merely made a series of offers person-to-person for a time. Respondent contends that Complainant cannot show Respondent’s bad faith for offering the domain name absent evidence of intent, at registration, to sell its domain name to Complainant. Respondent is within its rights in seeking to sell off the <wolfpack.com> domain name for its generic value. In Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000), the panel found that the resale of a generic domain name was not in bad faith, as the domaining business has become a prevalent enterprise that is widely accepted. The Panel here agrees that Respondent did not act in Policy ¶ 4(b)(i) or Policy ¶ 4(a)(iii) bad faith in attempting to sell the <wolfpack.com> domain name, as the Panel believes the domain name is generic.

Policy ¶ 4(b)(i) does not outlaw attempted sales, even to those who might or should want to buy the domain name and a decision that it is bad faith would go against many decisions and accepted practice in domain name arbitration and would not be well received. Policy ¶ 4(b)(i) says in effect that a proposed sale to the Complainant or a competitor shows something about the intention of the Respondent at the time of registration . The Respondent cannot possibly have shown bad faith when it was offering the disputed domain name to anyone who might be interested. In any case it is not at all persuasive to say an offer made today or recently tells us anything, one way or the other, about the Respondent’s intention at the time it registered the disputed domain name in the present case.

Complainant claims that a screenshot for the website resolved by the disputed domain name as it appeared in 2007 shows that the Respondent knew ofthe Complainant and was aiming at it. The Panel cannot see at <archive.org> where there is a screenshot for 2007 at all or as exhibited by the Complainant. Nor is there a link on <archive.org> to the way the disputed domain name was used at any time on any occasion where the Complainant’s name or initials (NC) were used or anything similar to justify the Complainant’s allegations.

Even if thescreenshot is there, the exhibit shows that there was only a transitory evocation of the Complainant or its services and that seems very slight after such a long ownership of the disputed domain name by the Respondent.

 

The Panel cannot accept the Complainant’s allegations that “due to the fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant’s rights at the time of its registration of the disputed domain name.” The Panel does not think there is sufficient evidence for a determination that the Complainant’s mark is famous. Even if Respondent had knowledge of the mark, that would not preclude the Respondent from registering a common ordinary term such as the Complainant’s mark.

Respondent argues that it registered the domain name to capitalize on the common usage of the phrase “wolfpack.” Respondent claims that absent direct proof that the public substantially identifies the term “wolfpack” with Complainant’s North Carolina-based sports program, Respondent is within its rights to use that term fairly in domain names. Respondent further asserts that there are over twenty-five trademarks that are now, or have previously been, registered for use of the term WOLFPACK with the USPTO. Respondent suggests that such extensive third-party use of the phrase “wolfpack” further illustrates the relatively non-exclusive rights Complainant holds in the mark and as such this weighs against a finding of Respondent’s bad faith. See Response, at Attached Ex. 5. As the Panel findsthatarespondentis free to register a domain name consisting ofcommon termsand that the domain name currently in dispute contains such common terms,thePanel also findsthat Respondent did not registerthe disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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.”); see alsoTarget Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

The Panel concludes that there is not enough to support Complainant’s assertion that Respondent registered the domain in bad faith. The timing delay, the common nature of the mark, the fact that there was a general offer to sell prior to the targeted offer, all add up to insufficient proof to hold that the Complainant satisfied this element.

Laches

The Panel does not feel the need to review the issue of Laches as it finds no bad faith registration.

Reverse Domain Name Hijacking

As the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) and ¶ 4(a)(ii), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <wolfpack.com> domain name REMAIN WITH Respondent.

Ho-Hyun Nahm, Esq.,

The Honourable Neil Anthony Brown QC

and Prof. Darryl C. Wilson, Panelists

Dated: January 30, 2014