The Pennsylvania State University v. Milen Radumilo
Claim Number: FA2005001894602
Complainant is The Pennsylvania State University (“Complainant”), represented by Amanda DeFord of McGuireWoods LLP, Virginia. Respondent is Milen Radumilo (“Respondent”), British Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <givetopsu.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 1, 2020; the Forum received payment on May 1, 2020.
On May 4, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <givetopsu.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@givetopsu.org. Also on May 7, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is the flagship university for the Commonwealth of Pennsylvania, founded in 1855. Complainant has rights in the PSU mark through its registration of the mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,276,801, registered May 8, 1984).
2. Respondent’s <givetopsu.org>[i] domain name is identical or confusingly similar to Complainant’s mark as it consists of Complainant’s mark and the generic terms “give” and “to” as well as the “.org” generic top-level domain (“gTLD”).
3. Respondent lacks rights or legitimate interests in the <givetopsu.org> domain name. Respondent is not commonly known by the domain name, nor has Complainant granted license or any other rights to Respondent to use the PSU mark.
4. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent redirects users to download a malicious browser extension.
5. Respondent registered and uses the <givetopsu.org> domain name in bad faith. Respondent offers to sell the domain name for a sum that exceeds Respondent’s costs.
6. Respondent has a history of registering domain names which infringe on well-known marks. Respondent uses the domain name to misdirect users to a malicious browser extension that tracks and sells their personal information.
7. Respondent registered the domain name with Complainant squarely in mind.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PSU mark. Respondent’s domain name is confusingly similar to Complainant’s PSU mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <givetopsu.org> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the PSU mark through its registration of the mark with the multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,276,801, registered May 8, 1984). Registration of a trademark with multiple trademark agencies is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Therefore, Complainant has rights in the PSU mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <givetopsu.org> domain name is identical or confusingly similar to Complainant’s mark as it consists of Complainant’s mark and the generic terms “give” and “to” as well as the “.org” gTLD. Similar changes in a registered mark fail to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel holds that the <givetopsu.org> domain name is confusingly similar to the PSU mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <givetopsu.org> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <givetopsu.org> domain name as Respondent is not commonly known by the domain name, nor has Complainant granted license or any other rights to Respondent to use the PSU mark. WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <givetopsu.org> domain name lists the registrant as “Milen Radumilo,” and there is no other evidence to suggest that Respondent is authorized to use the PSU mark. Therefore, the Panel finds Respondent is not commonly known by the <givetopsu.org> domain name per Policy ¶ 4(c)(ii).
Complainant also argues Respondent fails to use the <givetopsu.org> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent redirects users to download a malicious browser extension. Use of a domain name incorporating the mark of another to direct Internet users to malicious software is not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Complainant provides a screenshot of the resolving webpage of the <givetopsu.org> domain name which displays links to download an app called “Securify” as well as articles detailing the Securify extension and it security risks. The Panel holds that Respondent does not use the <givetopsu.org> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant states that Respondent registered and uses the <givetopsu.org> domain name in bad faith as Respondent offers to sell the domain name for a sum that exceeds Respondent’s costs. An offer to sell a domain name incorporating the mark of another for costs in excess of out-of-pocket registration costs can indicate bad faith registration and use per Policy ¶ 4(b)(i). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Complainant provides a screenshot of an auction showing for sale for $9888.00 USD. The Panel holds that Respondent registered and uses the <givetopsu.org> domain name in bad faith per Policy ¶ 4(b)(i).
Complainant argues that Respondent registered and uses the <givetopsu.org> domain name in bad faith as Respondent uses the domain name to misdirect users to a malicious browser extension that tracks and sells their personal information. Use of a domain name to distribute malicious software can indicate bad faith registration and use per Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). Complainant provides a screenshot of the resolving webpage of the <givetopsu.org> domain name which displays links to download an app called “Securify” as well as articles detailing the Securify extension and its security risks. The Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Complainant submits that Respondent registered and uses the <givetopsu.org> domain name in bad faith as Respondent registered the domain name with Complainant squarely in mind. Actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complaint has shown to the Panel that the PSU mark has no meaning other than as an identifier of Complainant and that Respondent registered the domain name specifically to target Complainant. The Panel agrees and holds that Respondent registered the <givetopsu.org> domain name with actual knowledge of Complainant’s rights in the mark and in bad faith.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <givetopsu.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 5, 2020
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