WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

President and Fellows of Harvard College, Harvard Business School Publishing Corporation v. Mr. Oezyurt

Case No. D2007-1538

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 Mr. Oezyurt, United States of America, appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <harvardbusiness.net> 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 confirming that the Respondent is listed as the registrant and providing the 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 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2007. The Response was filed with the Center on November 15, 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 also owner 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 (collectively “the HARVARD marks”). The Complainant licenses the use of the HARVARD marks to Harvard Business School Publishing Corporation, which also operates a website at “www.harvardbusinessreview.com”.

The Respondent registered the disputed domain name <harvardbusiness.net> on March 30, 2006. The disputed domain name currently is parked on what appears to be a pay-per-click portal site containing advertising and sponsored links related to Harvard University and the Harvard Business Review, and links to other websites related to business schools or business education programs. Several of the sponsored links are specifically identified by reference to the Complainant’s registered marks HARVARD BUSINESS REVIEW and HARVARD BUSINESS SCHOOL, and resolve to websites where Harvard business publications are offered.

5. Parties’ Contentions

A. Complainant

The Complainant states that it owns hundreds of HARVARD-formative trademarks 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 marks are well-known and have become famous.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s numerous HARVARD marks, including HARVARD BUSINESS SCHOOL, HARVARD BUSINESS SCHOOL PUBLISHING, and HARVARD BUSINESS REVIEW. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because (1) the Complainant has not licensed or otherwise authorized the Respondent to use its marks, and (2) the Respondent is not commonly known by the disputed domain name. The Complainant further contends that the Respondent is using the disputed domain name to confuse and divert Internet users seeking information about the Complainant and/or Complainant’s educational services and publications to the Respondent’s “copycat” website. For all of the foregoing reasons, the Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent declares that he did not register the domain name for business or commercial purposes and that he has not used the domain name for business or commercial purposes. According to the Respondent, the disputed domain name is being parked as a courtesy by the domain registrar GoDaddy.com Inc., and it is the registrar and not the Respondent who is responsible for the website content.

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 the 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 <harvardbusiness.net> is confusingly similar to the Complainant’s HARVARD marks, including HARVARD, HARVARD BUSINESS REVIEW, HARVARD BUSINESS SCHOOL, and HARVARD BUSINESS SCHOOL PUBLISHING. 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 USPTO. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. The Panel further finds that the Complainant’s HARVARD marks are well-known and have achieved some degree of fame.

In the Internet context of paragraph 4(a)(i) of the Policy, the question of identity or confusing similarity is evaluated based solely on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Café, WIPO Case No. D2000-0068. Based on such a comparison, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s marks.

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). The Complainant’s marks are distinctive and well-known. 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. Further, there is evidence that the disputed domain name is being used with what appears to be a pay-per-click portal site.

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 denies any intent to use the disputed domain name for commercial purposes, but otherwise offers no explanation why he registered the domain name. The Respondent claims that the domain name is being parked as a courtesy by the domain registrar, but denies any active use of the disputed domain name since its registration in March 2006, and is silent as to any contemplated use of the domain name. Thus, the Respondent has failed to demonstrate rights or legitimate interests in the disputed domain name within the meaning of the Policy.²

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.

The Panel believes that a fair inference can be drawn from the circumstances of this case that the Respondent registered and is using the disputed domain name in a bad faith attempt to profit from the attractive quality of the Complainant’s HARVARD mark. The Respondent does not deny being aware of the Complainant, and such awareness reasonably can be inferred from the Respondent’s registration of a domain name incorporating the Complainant’s well-known and distinctive HARVARD mark. Further, the disputed domain name is being used in connection with an apparent pay-per-click portal website with sponsored links consisting of the Complainant’s HARVARD BUSINESS REVIEW and HARVARD BUSINESS SCHOOL marks. 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.

The Panel notes the Respondent’s denial of any responsibility for the website content, and the claim that he has done nothing more than park the disputed domain name with the domain registrar, GoDaddy.com, Inc..³ Even assuming this to be the case, the Respondent’s unexplained failure to make any active use of the disputed domain name since its registration does not preclude a determination of bad faith registration and use in the circumstances of this case. The Respondent has offered no explanation of why he registered the disputed domain name, which incorporates the Complainant’s well known HARVARD mark, and he is silent regarding any actual or contemplated active use of the domain name. As noted in Telstra Corporation Limited supra, passive holding of a domain name can be considered as bad faith where it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate. See also Salomon Smith Barney, Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668. For the reasons discussed above, this Panel cannot in the circumstances of this case conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would be legitimate.

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 <harvardbusiness.net> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: December 11, 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 Although the Respondent denies any active use of the disputed domain name, the Panel notes that the use of a domain name confusingly similar to another’s trademark to generate pay-per-click revenue based on the attractive quality of the mark does not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. See Educational Testing Service (ETS) v. International Names Ltd., WIPO Case No. D2007-0449. Further, use of a domain name incorporating another’s mark to generate pay-per-click revenue is preclusive of any legitimate noncommercial or fair use of the domain name under paragraph 4(c)(iii) of the Policy. See Bata Brands S.à.r.l v. Charles Power, WIPO Case No. D2006-0191.

³ The Respondent is silent as to whether the website generates pay-per-click revenue.