University wins 'AllAmerican' domain names
In American University v Cook, a National Arbitration Forum (NAF) panel has ordered the transfer of five domain names featuring the phrase 'AllAmericanUniversity' to the complainant. The panel held that (i) the addition of the word 'all' to the complainant's AMERICAN UNIVERSITY mark did not distinguish the domain names, and (ii) the registrant was using them in bad faith to sell allegedly forged college diplomas.
American University (AU), which is based in Washington DC, was chartered by an act of the US Congress in 1893. It holds several US and Community trademark registrations for AMERICAN UNIVERSITY. It filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) with NAF against Richard Cook following his registration of the domain names 'AllAmericanUniversity.com', '.net', '.org', '.biz' and '.info'. Cook used four of the five domain names to sell allegedly fraudulent undergraduate and graduate level diplomas.
A three-member panel determined that AU had established common law rights in the AMERICAN UNIVERSITY mark through use in commerce since 1893 and statutory rights through its US and Community trademark registrations. The panel found that the addition of the word 'all' to the AMERICAN UNIVERSITY mark did not sufficiently distinguish the domain names to eliminate the risk of confusion. Furthermore, the panel viewed the use of the domain names to sell allegedly forged diplomas as neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use under the UDRP. Cook's use of the disputed domain names was likely to deceive internet users as to their source and affiliation, which the panel also considered to be bad-faith use.
Accordingly, the panel ordered that the five domain names be transferred to AU.
James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC
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