Fla. college paper wins rights to Internet domain names

FLORIDA — An independent student newspaper at the University of Central Florida has rights to two domain names despite the fact that each incorporates a university trademark, an arbitration panel ruled on July 13 following a university request that the domains be transferred to its possession.

The Central Florida Future maintained possession of www.ucffuture.com and www.ucfnews.com, both of which include the university’s “UCF” trademark, because the panel found the paper’s “main objective is to keep the university community informed, such purpose constituting a bona fide offering of goods and services.”

In addition, the panel noted that although the paper is an independent publication, it served as the school’s official student newspaper and had a right to the trademark until 1993. The Future argued that after becoming independent, the school helped the paper promote itself by assigning it a campus phone number that spelled UCF-News. The Future further argued it has published since the university opened in 1968 and is accepted as the university’s student newspaper, giving it a right to use “UCF.”

While the Future does not employ ucffuture.com as its primary Web site, the panel did not object to the domain because it said it is part of the paper’s “historic evolution and appellation.”

In order for the university to gain possession of a name, the panel had to find that the names were confusingly similar to the university’s mark, of no legitimate interest to the paper and used in bad faith. The panel found the names confusingly similar, but said because the Future had legitimate rights to the names they were not held in bad faith.

Youndy Cook, the associate general counsel for the University of Central Florida, said in an e-mail that the case began as part of the school’s branding campaign in which it is examining its brand image and working to strengthen it.

“As part of this university-wide effort, we have been looking at how the UCF name is being used around the university and outside the university,” Cook said.

Because the university believed that the Future’s domain names created confusion, Cook said, the university asked the paper to use a domain name that they would not consider an infringement. The university suggested the paper use www.centralfloridafuture.com, a domain name also held by the Future.

“[The Future] rejected all overtures and suggestions of the university, except for placing a small disclaimer on their Web site,” Cook said.

The Internet Corporation for Assigned Names and Numbers, an organization responsible for ensuring that Internet addresses are unique and that Internet users can find valid addresses, requires domain name registrants to consent to arbitration proceedings. The university brought their case before that arbitration panel after negotiation attempts with the paper failed.

A third disputed domain name in the case, www.ucfindie.com, was ordered to be transferred from the paper to the University of Central Florida. The paper admitted having no plans to use the site and acquired it when the Future merged with the UCF Indie, a former student publication.

“The university is disappointed that the arbitration panel did not side fully with the university’s position on the Central Florida Future’s infringing domain name usage,” Cook said. “The university is assessing whether additional steps will be taken.”

The university’s next step, if it chooses to pursue the domain names further, would be to file a trademark infringement suit in federal court.

–Mike Hart

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