DECISION
United Negro College Fund, Inc. (UNCF) v. Lynn Tolliver Jr./Bobby Rush
Claim Number: FA0008000095412
PARTIES
The Complainant is United Negro College Fund, Inc., Fairfax, VA, USA ("Complainant"). The Respondent is Lynn Tolliver, Jr./Bobby Rush, Cleveland, OH, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "UNCF.COM", registered with Network Solutions Inc ("NSI").
PANELIST(s)
The Panelists certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as panelists in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/15/2000; The Forum received a hard copy of the Complaint on 08/14/2000.
On 08/17/2000, NSI confirmed by e-mail to The Forum that the domain name "UNCF.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On 08/18/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 09/07/2000 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@uncf.com by e-mail.
On September 18, 2000, pursuant to Complainant’s request to have the dispute decided by a Three Member panel, The Forum appointed Honorable James A. Carmody, Honorable James P. Buchele and Daniel B. Banks, Jr. as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant:
1 - Complainant is a New York non-profit corporation whose principal goal is to improve the educational opportunities for minorities.
2 - Complainant is the owner of the service marks UNCF & Design, U.S. Trademark Registration No. 1,979,895 and "A MIND IS A TERRIBLE THING TO WASTE" UNCF & Design, U.S. Trademark Registration No. 1,696,481.
3 - Complainant has used and continues to use the acronym "UNCF" for United Negro College Fund.
4 - Complainant has used the UNCF service mark and trade name in connection with a variety of goods and services since its inception in 1944.
5 - In addition to the U.S. Trademark Registrations, Complainant has developed significant recognition and goodwill in its UNCF trademarks.
6 - Based on its extensive use in commerce throughout the United States and abroad, Complainant claims it has developed common law rights in its UNCF trademark and trade name.
7 - Complainant has expended substantial sums of money to promote its goods and services worldwide.
8 - Complainant has a substantial membership composed of some thirty-nine (39) private, accredited, four-year historically black colleges and universities and receives a substantial amount of donations to its college fund annually to support and fund its programs.
9 - Complainant also has sales of ancillary goods bearing its marks including T-shirts, hats, coffee mugs and other items.
10 - Complainant operates a web site using the letter "UNCF" and it is likely that people interested in Complainant's business will try to access Complainant through those domain letters.
11 - Respondent registered the domain name UNCF.COM that is identical to Complainant's famous trademark and trade name.
12 - Respondent registered the domain name on October 2, 1996, which was subsequent to Complainant's registration of its service mark and trade names.
13 - Respondent's retention of the domain name UNCF.COM will cause confusion with Complainant's trademark and trade name.
14 - Respondent has no right or legitimate interest in the domain name because Respondent is not affiliated with nor does Respondent have any relationship with Complainant.
15 - Respondent does not conduct any business, offer any services or provide any content on its UNCF.COM site nor does Respondent own or operate any business under the name UNCF.
16 - Complainant has made several good faith efforts to resolve this matter however Respondent has been unwilling to discuss any resolution except to offer to transfer the domain name if Complainant would provide Respondent with documentation supporting a four million dollar ($4,000,000) tax credit and lifetime membership to UNCF.
17 - Respondent is the owner of over fifty (50) domain names, some of which contain the names of famous people and entities. Respondent has demonstrated a pattern of conduct and bad faith by registering such domain names for the sole purpose of preventing the owners of the trademarks and trade names from using them in other domain names and selling such domain names for an exorbitant profit.
18 - Respondent has demonstrated bad faith in this case by attempting to sell the domain name in question to Complainant and/or by preventing Complainant from using its trademark in a domain name.
B. Respondent: Respondent's response was in the form of an e-mail statement, which was very limited in scope. The substantive matters contained in that response are as follows:
1 - Respondent secured the name UNCF.COM before there were any laws in regards to domain names.
2 - Respondent states that he secured as many names as he possibly could and that people sold the domain names
3 - Respondent admits that he asked for the tax credit and lifetime membership set out in Complainant's claims.
4 - Respondent states that he has sold domain names.
5 - Respondent states that he is not using the domain name UNCF.COM as Untied Negro College Fund.
6 - Respondent did not dispute Complainant's claim that Respondent has no right or legitimate interest in the name UNCF nor did Respondent refute the claim that he attempted to sell the name for a four million ($4,000,000) tax credit and a lifetime membership in UNCF.
7 - Respondent did not respond to the claim that he has registered over fifty (50) domain names, some of which contain the names of famous people and entities and that he has sold these names for profit.
8 - Respondent did not respond to the claim that he has a demonstrated pattern of conduct in reserving domain names for later sale to a trademark owner or preventing the owners of the trademarks and trade names from using them in other domain names.
FINDINGS
After consideration of the foregoing, the Arbitrator finds as follows:
1 - That the domain name in question is identical to Complainant's registered service mark and trade names.
2 - That the evidence supports a finding that Respondent has no rights or legitimate interest in respect of the domain name.
3 - That the evidence supports a finding that the Respondent has registered and is using the domain name in bad faith.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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 Complainant owns the U.S. trademark registration for the mark "UNCF". The Respondent’s domain name is identical to the Complainant’s registered mark. 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).
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the domain name. The Respondent has made no offering of goods or services in connection with the domain name, is not commonly known by the Complainant’s registered mark, and has not used the domain name for a fair or noncommercial use. Policy ¶ 4.c.(i) – (iii). See Fanuc Ltd v. Machine Control Services, FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that
Respondent had no rights or legitimate interest because Respondent does not own the registered mark, has no permission from the Complainant to use the mark, nor is affiliated with the Fanuc business in any way).
Registration and Use in Bad Faith
The Complainant contends that the Respondent is using the domain name in bad faith. The Complainant contends that Respondent registered the domain name for the purpose of selling it to the Complainant for valuable consideration in excess of out of pocket costs. The evidence is clear that the Respondent registered as many domain names as he possibly could and that his intent was to sell those names. He has engaged in a pattern of such conduct and admits that he offered to transfer the domain name in question for four million ($4,000,000) and a lifetime membership in UNCF. Policy ¶ 4.b.(i). See Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding Respondent’s offer to sell the domain name for $100,000 constitutes bad faith).
DECISION
Based on the foregoing, it is the unanimous decision of the panel that the domain name UNCF.COM be transferred to Complainant.
Daniel B. Banks, Jr., Chairperson
Dated: September 28, 2000