[Indexed as: The University of Wyoming v. David Horton]

[Indexed as: wyomingcowboys.com et al.]

WIPO Arbitration and Mediation Center
Administrative Panel Decision

Case No. D2000-0366
Commenced: 10 May 2000
Judgment: 16 June 2000

Presiding Panelist: Jeffrey M. Samuels

Domain name - Domain name dispute resolution policy - U.S. Trademark - Identical - Lack of legitimate right or interest - Confusingly similar - Bad faith registration - Bad faith use - University tuition.

Complainant was registrant of United States trademark, "Wyoming Cowboys," State of Wyoming mark, "UW," and many other trademarks involving the words "University of Wyoming," "Cowboy," "Cowboys," and "UW." Complainant registered the domain name "uwyo.edu." Respondent registered the domain names, "uwcomboys.com," "wyomingcowboys.com," "uwyo.com,"  "uwyoming.com" and "wyocowboys.com." Respondent did not contest Complainant's allegations.

Held, Names Transferred to Complainant.

It is clear that the domain names in dispute are either identical or confusingly similar to marks in which Complainant has rights. Also, Respondent did not have rights or legitimate interests in the domain names because there was no evidence that Respondent developed any websites using the domain names, made any bona fide use of the names, or indicated any intent to utilize the names for a bona fide business purpose. In addition, Respondent was not commonly known by the domain names. 

The domain names were registered and used in bad faith. Respondent knew that other schools had paid significant sums of money for the transfer of domain names and acting on such knowledge, offered to sell the domain names to Complainant in exchange of free tuition for his daughter, who was a student at Complainant University.  This was a sum far in excess of his out-of-pocket costs relating to the registration of the domain names. These facts were evidence of registration and use in bad faith.

Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to
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Cases referred to
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Panel Decision referred to
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Samuels, Panelist: -

1. Procedural Background

On May 2, 2000, the WIPO Arbitration and Mediation Center received from Complainant, The University of Wyoming, a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

The instant Administrative Proceeding was commenced on May 10, 2000. 

The domain names in dispute are as follows: "uwcomboys.com"; "wyomingcowboys.com"; uwyo.com"; uwyoming.com"; and "wyocowboys.com".

Respondent David Horton failed to respond to the complaint within the twenty (20) day period provided for in 5(a) of the Rules, and a "Notification of Respondent's Default," dated June 5, 2000, was forwarded by WIPO to Respondent.

2. Findings of Fact

Complainant, The University of Wyoming, is actively involved in trademark licensing activities that utilize the marks "University of Wyoming"; "Cowboy"; "Cowboys"; and "UW". The mark "Wyoming Cowboys" is registered with the U.S. Patent and Trademark Office and the mark "UW" is registered with the State of Wyoming. Complainant has registered the domain name "uwyo.edu".

The University of Wyoming has approximately 400 licensees who are authorized to use the school's marks on a wide range of products. See Affidavit of Shaun P. Ziegler.

In February and March 1999, Respondent, David Horton, registered with Network Solutions, Inc. the domain names in dispute.

On May 4, 1999, Complainant's Manager of Trademarks and Licensing contacted Mr. Horton by phone to ascertain his intentions regarding the domain names. During the course of such conversation, Mr. Horton stated that other schools around the country paid large sums of money to individuals who registered domain names similar to the schools' trademarks. See Annex C to Ziegler affidavit.

On June 24, 1999, Complainant's staff counsel, Susan C. Weidel, wrote to Respondent requesting that he "cease and desist" from further use of the domain names. Respondent did not respond to this letter, and Complainant's attorney, on September 14, 1999, again wrote to Mr. Horton threatening to take legal action. See Weidel Affidavit, Exhibits B and C.

On August 9, 1999, Ms. Weidel contacted Mr. Horton by phone to discuss the matter. At that time, Mr. Horton indicated that he did not plan to use the domain names for his own business purposes. Mr. Horton also indicated that he would consider relinquishing the domain names if the university would provide free tuition to his daughter, who attends the school. Mr. Horton told Ms. Weidel that he thought it would be less expensive for the school to pay his daughter's tuition than to sue him for recovery of the domain names.

3. Conclusions

In the instant administrative proceeding, Complainant must prove each of the following elements: (1) that Respondent's domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) that Respondent has no rights or legitimate interests in respect of the domain names in dispute; and (3) that Respondent registered and uses the domain names in dispute in bad faith. The Panel determines that Complainant has met its burden.

First, it is clear that the domain names in dispute are either identical or confusingly similar to marks in which Complainant has rights.

Second, there is no evidence that Respondent has developed any websites using the domain names, made any bona fide use of the names, or indicated any intent to utilize the names for a bona fide business purpose. Nor is he commonly known by the domain names. Thus, Respondent does not have rights or legitimate interests in respect of the domain names.

Finally, the record supports a determination that the domain names were registered and are being used in "bad faith." The unrebutted evidence establishes that Mr. Horton knew that other schools had paid significant sums of money for the transfer of domain names and that, acting on such knowledge, offered to sell the domain names in dispute to Complainant in exchange of free tuition for his daughter, a sum far in excess of his out-of-pocket costs relating to the registration of the domain names. These facts meet the test set forth in 4. b. (i) of the Policy.

4. Relief

In view of the above, the Panel orders that the contested domain names be transferred to Complainant. 
Jeffrey M. Samuels
Panelist
June 16, 2000
 

Domain Name Transferred