University loses UDRP

January 22nd, 2003
By Demys News service

The University of Wisconsin has lost a UDRP dispute relating to eight domains closely corresponding with the abbreviated names of its various campuses. While the case again shows that evidence is key to a successful UDRP dispute, the Panellist also made useful suggestions of what might be required to show rights in a name if registered trade marks rights do not exist.

The case was brought by The Board of Regents of the University of Wisconsin System - the governing body for 13 universities and 13 colleges throughout Wisconsin with over 157,000 enrolled students under their care. They alleged in their complaint that the eight domains - uwec.com, uwec.org, uwosh.com, uwplatt.com, uwrf.com, uwsp.com, uwsp.org, uwsuper.com - corresponded directly to their existing domain names in the .edu space and were commonly used abbreviations of their various campuses. With, for example, "UWRF" being their abbreviation for "University of Wisconsin River Falls [Campus]".

In a twist to the dispute, the University claimed that there had been an attempt by the respondent at "cyber flying" - changing the registration details of the domains under dispute in an attempt to force the complainant to make a complaint in respect of each individual domain. The panellist noted that each of the domains were originally owned by the same entity - a domain broker based in Inverness, Scotland - and that each had been "sold" shortly after the complainant had written to the respondent about the domains. The buyers included the Croatian-based "Under Water Ecology Club" who purchased uwec.com and "Udo's World Society of Philosophers" who bought uwsp.com. The Panellist wryly observed that:

"The names of the new registrants, while imaginative, appear too good to be true: can it really be expected that eight such registrants should suddenly materialize on the same day and shortly after the Complainant had expressed its concern about the use of these domain names?"

The panellist held that the 8 respondents were in fact one and the same person and that he had jurisdiction to hear the case as one dispute. With this procedural matter out of the way the panellist went on to consider the merits of the complaint. Readers of Demys.net will be reminded that the UDRP is similar to a boxing match of three rounds - round one is the trademark round; round two is the no rights or legitimate interests round; round three is the bad faith round. The complainant must 'win on points' in all three rounds.

However, in this case the University was knocked out in the first round for lack of relevant trade marks or service marks, with the Panellist suggesting that the complainant did not show that the abbreviations, such as UWSP, were closely associated with the University, even though it had the same domains in the .edu space:

An Internet address alone does not provide the necessary evidence of trade or service mark use: there must be some indication on the relevant web pages that the goods or services advertised on those pages are being provided under those designations used as trade or service marks, i.e. to indicate that these goods or services have a particular provenance in the Complainant or in one of its constituent campuses.

He also helpfully suggested that the following would perhaps be indicative of more definite rights:

More prominent usage of the designations on the respective web pages

Evidence of the use of the designations in other hard copy publications, e.g. university prospectuses and other publications that highlight the designations in a prominent way, so as to indicate that the goods or services referred to in these publications are provided under that designation rather than, say, the designations "University of Wisconsin - Eau Claire".

Evidence of the use of these designations on specific goods provided by the complainant, e.g. on books, clothing, souvenirs, etc. It is not enough here to provide an Internet address incorporating one of these designations that will take the user to a campus bookshop - there must be some evidence that the books are being offered and sold under that designation.

Evidence of the volume of such uses. Even if any of the above can be shown to be trademark uses, there must be some evidence of the volume and extent of those uses. In the present proceeding, nothing of this kind was provided.

Therefore "with considerable reluctance, particularly in light of the Respondent's conduct", the Panellist concluded that "though it is likely that the second part of paragraph 4(a)(i) would have been met, i.e. that the domain names are identical or confusingly similar, the Complaint fails at this first hurdle."

Once again a UDRP decision demonstrates the importance of evidence gathering in a domain dispute - failure to find enough of the right kind of evidence can mean losing the case