Ucfnews.com, Ucffuture.com, Ucfindie.com

The timeline behind ucfnews.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION University of Central Florida v. Knight Publishing Inc. Claim Number: FA0505000485962 PARTIES Complainant is University of Central Florida (“Complainant”), represented by Youndy C. Cook, 4000 Central Florida Blvd., Millican Hall Suite 360, Orlando, FL 32816-0015. Respondent is Knight Publishing Inc. (“Respondent”), 3361 Rouse Rd. #200, Orlando, FL 32817. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <ucfnews.com>, <ucffuture.com> and <ucfindie.com>, registered with Dotster. PANEL The undersigned 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. Mr. Hugues G. Richard, Mr. Houston Putnam Lowry, Chartered Arbitrator, and Mr. Karl V. Fink as Panelists. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 31, 2005. On May 31, 2005, Dotster confirmed by e-mail to the National Arbitration Forum that the domain names <ucfnews.com>, <ucffuture.com> and <ucfindie.com> are registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On June 3, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 23, 2005 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@ucfnews.com, postmaster@ucffuture.com and postmaster@ucfindie.com by e-mail. A timely Response was received and determined to be complete on June 23, 2005. On June 27, 2005, Complainant filed additional submissions in due time, complying with Supplemental Rule 7. On June 29, 2005, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Mr. Hugues G. Richard, Mr. Houston Putnam Lowry, Chartered Arbitrator, and Mr. Karl V. Fink as Panelists. On July 4, 2005, Respondent filed additional submissions in a timely manner, complying with Supplemental Rule 7. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant submits as follows: 1. Identical and/or Confusingly Similar: Complainant asserts it has common law rights in the UCF and UNIVERSITY OF CENTRAL FLORIDA marks as well as statutory rights in both marks through registration of the marks with the U.S. Patent and Trademark Office. The <ucfnews.com>, <ucffuture.com> and <ucfindie.com> domain names are confusingly similar to the UCF trademark held by Complainant, because each disputed domain name incorporates Complainant’s UCF trademark. For each of the disputed domain names, Respondent has simply added one generic word to Complainant’s mark and varied the generic top-level domain. Neither the addition of the generic word “news,” “future” or “indie” nor the attachment of a different gTLD to Complainant’s mark is sufficient to distinguish Respondent’s domain names – nor do they avoid the confusingly similar element. Complainant has widely become known to the public in general as UCF and UNIVERSITY OF CENTRAL FLORIDA and has continuously used both marks to identify a variety of educational and entertainment services provided it. 2. Rights or Legitimate Interests: Respondent is commonly known by the name of its publication, the “Central Florida Future” and not as “ucfnews” or “ucffuture” or “ucfindie.” Respondent does not provide independent content at the <ucffuture.com> and at the <ucfindie.com> domain names since both of them resolve to the <ucfnews.com> website. Respondent cannot argue that it is commonly known by domain names that it effectively holds passive. Respondent’s use of the disputed domain names is for commercial purposes. Respondent publishes a newspaper periodical which solicits and accepts paid advertising. Thus, Respondent does not have legitimate rights in the domain names in question. 3. Registration and Use in Bad Faith: Respondent’s knowledge of Complainant’s mark and its website’s failure to disclaim a relationship with Complainant in an effective fashion are evidence of bad faith registration and use. Moreover, Respondent registered the disputed domain names and incorporated Complainant’s mark with the intent to commercially benefit (i.e, paid advertising) from the goodwill associated with Complainant’s mark. B. Respondent Respondent does not claim to have any interest specifically in regards to the disputed domain, <ucfindie.com>. At no point has the <ucfindie.com> domain name been published, marketed, or used by Respondent for any website, e-mail, or other purpose and Respondent has no plans to use the domain name for any purpose nor renew its registration expiring January 7, 2006. For the remaining <ucffuture.com> and <ucfnews.com> domain names, Respondent submits as follows: 1. Identical and /or Confusingly Similar: Complainant does own a trademark registration for the UCF mark and has exclusive rights within the scope of that trademark. However, ‘news’ or ‘newspapers’ are not included in the scope of any issued registrations or pending trademark applications of Complainant. Respondent has continuously published on campus since the University first held classes in 1968, establishing the newspaper over a period of thirty-seven years as an accepted source of UCF news and information. As such, Respondent has obtained common law rights in the use of UCF mark with respect to ‘news’ or ‘newspapers.’ Therefore, the disputed domain names are not confusingly similar to Complainant’s trademark. 2. Rights or Legitimate Interests: Respondent argues that Complainant cannot help it build a reputation under a domain name over a period of seven years, then claim Respondent has no rights to those domain names and demand they be turned over to Complainant. Supplementing Respondent’s argument that it should share in a trademark for UCF with respect to ‘news’ or ‘newspapers,’ is the fact that by aiding Respondent in publicizing and marketing the disputed domain names for a number of years, Complainant has supported and encouraged Respondent’s use of the contested domain names and the underlying trademarks. Furthermore, Respondent is using the disputed domains to disseminate information on the University of Central Florida, which is a legitimate non-commercial use. 3. Registration and Use in Bad Faith: Even if Respondent had knowledge of Complainant’s trademark, the fact that the latter has helped publicize and market both Respondent’s domain names is indicative of Respondent’s absence of bad faith. Furthermore, Respondent has attempted to contact Complainant in order to listen to the latter’s suggestions pertaining to style changes or specific wording on the website that could serve to reduce any confusion Complainant believes may exist. Receiving no input from Complainant, Respondent has extended its disclaimer. Such attitude cannot constitute bad faith. C. Additional Submissions 1. Complainant <ucffuture.com> is not in active use and therefore cannot serve to establish legitimate rights. Complainant has not supported Respondent in its use of disputed domain names. 2. Respondent Respondent used <ucffuture.com> as its original primary web domain before using <ucfnews.com>, therefore it has rights and legitimate interest in that disputed domain name. Since Complainant had no objection to the use of the disputed domains that it listed without comment, it did support Respondent in its use of the disputed domain names. FINDINGS Complainant contends that it has used the UNIVERSITY OF CENTRAL FLORIDA trademark or its abbreviation UCF since at least as early as 1978. Respondent’s <ucfnews.com> and <ucffuture.com> domain names were registered on October 2, 2002 and February 23, 1998, respectively. It is clear to both parties that Respondent is not affiliated with Complainant. However, the problem comes from the fact that they were until 1993. Respondent previously known as The FuTUre, before Complainant changed its name from Florida Technological University to the University of Central Florida in 1978, has continuously published on campus since the University first held classes in 1968, establishing the newspaper over a period of thirty-seven years as an accepted source of UCF news and information for University students, staff, and alumni. Respondent originated as the official student news publication of UCF until Complainant itself split off the newspaper and established it as an independent entity in 1993. Respondent used the <ucffuture.com> domain name as its primary web site since January 1998 but ceased to employ it in October 2002 due to misdirected e-mail communications and lost web traffic. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements on a balance of probabilities 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. Failure to prove one of the aforementioned criteria for the disputed domain name results in the dismissal of the complaint. Identical and/or Confusingly Similar Complainant has demonstrated that it has common law and/or statutory rights in the UCF and UNIVERSITY OF CENTRAL FLORIDA trademarks since it has used them since 1978. Furthermore, registration and application for registration of the marks with the U.S. Patent and Trademark Office clearly establish Complainant’s rights in the trademarks. The Panel finds that all three of the Respondent’s domain names are confusingly similar to the Complainant’s UCF mark. The addition of generic words such as “news”, “future” and “indie” to Complainant’s UCF mark is not sufficient to negate a finding of confusing similarity between the domain names and the mark. In Pfizer, Inc. v. Suger, WIPO Case No. D2002-0187, the Panel found that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark. In addition to adding generic words to the UCF mark, Respondent also added the generic top-level domain “.com” to the mark. Again, this addition is insufficient to conclude that there is no presence of confusing similarity. In Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), the Panel decided, “It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.” For these reasons, the Panel finds that Complainant has met the first criterion as per paragraph 4(a)(i) of the Policy in regards to <ucfnews.com>, <ucffuture.com> and <ucfindie.com>. Rights or Legitimate Interests Complainant contends Respondent does not provide independent content at the <ucffuture.com> site since it resolves to the disputed <ucfnews.com> site and therefore, Respondent cannot legitimately claim that its business operations would be hurt by being forced to give up a domain name that it does not actively use. The Panel finds that Respondent does have rights in the <ucffuture.com> domain name even if the latter resolves to <ucfnews.com>. Indeed, Respondent was once called “The FuTUre” and is now called “Central Florida Future;” hence, the disputed domain name, <ucffuture.com>, is related to Respondent’s historic evolution and appellation. Concerning the disputed domain name, <ucfnews.com>, Respondent has demonstrated it is using it in connection with its publication entitled “Central Florida Future” which has been published since 1968. Respondent’s main objective is to keep the university community informed, such purpose constituting a bona fide offering of goods and services. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the Respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name). For these reasons, the Panel finds that Complainant has not met the second criterion as per paragraph 4(a)(ii) of the Policy; i.e. absence of rights or legitimate interests of Respondent in regards to <ucfnews.com> and <ucffuture.com>. Respondent has admitted it does not have any specific interest concerning the <ucfindie.com> domain name, therefore the Panel finds that Complainant has met the second criterion as per paragraph 4(a)(ii) of the Policy in regards to that domain name. Registration and Use in Bad Faith The Panel’s finding that Complainant has not proved the matters required to be established under Paragraph 4(a)(ii) of the Policy in regards to the <ucfnews.com> and <ucffuture.com> domain names renders it unnecessary to consider Paragraph 4(a)(iii) of the Policy; the three enumerated criteria being cumulative. Respondent has not contested Complainant’s allegation of registration and use in bad faith in regards to the <ucfindie.com> domain name. Therefore, Complainant has proved the third criterion pertaining to the registration and use in bad faith of above-mentioned domain name as required by section 4(a)(iii) of the Policy. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED for the <ucfindie.com> domain name. Accordingly, it is Ordered that the <ucfindie.com> domain name be TRANSFERRED from Respondent to Complainant. Not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED for the <ucfnews.com> and <ucffuture.com> domain names. Accordingly, it is Ordered that the <ucfnews.com> and <ucffuture.com> domain names should remain registered in the name of Respondent. Mr. Hugues G. Richard, Presiding Panelist Mr. Houston Putnam Lowry, Chartered Arbitrator, and Mr. Karl V. Fink, Panelists Dated: July 13, 2005 NATIONAL ARBITRATION FORUM Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.