Hebrew University of Jerusalem v. NA NA / NA
Claim Number: FA2010001916677
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hebrewuniversity.us>, registered with Tucows Domains Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2020; the Forum received payment on October 13, 2020.
On October 13, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <hebrewuniversity.us> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the Policy).
On October 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 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@hebrewuniversity.us. Also on October 15, 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 November 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration 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
Complainant is an institute of higher education located in Israel. Complainant has rights in the HEBREW UNIVERSITY and HEBREW UNIVERSITY OF JERUSALEM marks through its registration with the Israel Ministry of Justice (“IMJ”). (e.g Reg. 125,731, filed Feb. 14, 1999). Complainant also claims common law rights in the marks. Respondent’s <hebrewuniversity.us> domain name is identical or confusingly similar to the marks as it incorporates them either entirely or the dominant portion of the mark, and adds the “.us” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <hebrewuniversity.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its HEBREW UNIVERSITY and HEBREW UNIVERSITY OF JERUSALEM marks in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempted to pass off as Complainant and phish for user information on the disputed domain name’s resolving website. Respondent currently inactively holds the disputed domain name’s resolving website.
Respondent registered and uses the <hebrewuniversity.us> domain name in bad faith. Respondent attracted internet users for commercial gain by passing off as Complainant and phishing for user information on the disputed domain name’s resolving website. Respondent currently inactively holds the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Hebrew University of Jerusalem (Complainant), of Jerusalem, Israel. Complainant is the owner of a domestic registration for the mark HEBREW UNIVERSITY OF JERUSALEM which it has continuously used since at least as early as 1999 in connection with its provision of research and educational services. Complainant also claims USA common law rights in its mark as well as the mark HEBREW UNIVERSITY dating back to 1925 based on numerous factors including, but not limited to, the establishment of the American Friends of Hebrew University nonprofit cooperation in 1925, thousands of American publications identifying the Complainant, grants received from American institutions, faculty exchanges with various schools, and recognition by the USA Department of Education as a Title IV school for financial aid processing purposes since 2005.
Respondent is indicated as NA NA / NA (Respondent), of Hialeah, FL, USA. Respondent’s registrar’s address is listed Ontario, Canada. The Panel notes the <hebrewuniversity.us> domain name was registered on or about Jan. 1, 2020.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the HEBREW UNIVERSITY and HEBREW UNIVERSITY OF JERUSALEM marks through its registration with the IMJ. (e.g Reg. 125,731, filed Feb. 14, 1999). Registration with a national trademark authority is generally sufficient in establishing rights in a mark under Policy ¶ 4(a)(i). See Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018) (“Registration of a mark with governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant also claims common law rights in the HEBREW UNIVERSITY and HEBREW UNIVERSITY OF JERUSALEM marks. Common law rights may suffice in lieu of a registered trademark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Complainant has submitted copious examples of its recognition as a continuous longstanding educational presence in the USA in support of its claim to common law rights.
Complainant essentially argues it has established secondary meaning in the HEBREW UNIVERSITY and HEBREW UNIVERSITY OF JERUSALEM marks. Secondary meaning is generally required to establish USA common law rights in a mark and may be established under Policy ¶ 4(a)(i) through factors such as longstanding use of the mark, holding an identical domain name, advertising, and widespread recognition. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”). Complainant provides numerous sources that demonstrate its enduring recognition and use of the marks for several decades including its international status as a ranked educational institution, its recognition as an grant receiving institution by the National Science Foundation, its recruitment and exchanges of students and professors in the United States, and its appearance on the websites of numerous American institutions, among other exhibits. The Panel here finds the breadth and depth of undisputed information provided by Complainant satisfies the evidentiary requirements necessary to substantiate a claim of common law rights in the USA under Policy ¶ 4(a)(i).
Complainant argues that the <hebrewuniversity.us> domain name is identical or confusingly similar to Complainant’s HEBREW UNIVERSITY and HEBREW UNIVERSITY OF JERUSALEM marks as it incorporates the marks in their entirety, or the dominant portion of the marks, and adds the “.us” gTLD. Adding the “.us” gTLD to a mark is generally insufficient in differentiating a disputed domain name from a mark it fully or largely incorporates under Policy ¶ 4(a)(i). See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD); see also Reebok Int’l Ltd. v. Ohno, FA 511463 (Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain). The disputed domain name fully incorporates the HEBREW UNIVERSITY mark and incorporates the arguably dominant portion of the HEBREW UNIVERSITY OF JERUSALEM mark, and adds the “.us” gTLD to the end of the marks. The Panel here finds that the disputed domain name is identical or confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Respondent raises no contentions regarding Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <hebrewuniversity.us> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the HEBREW UNIVERSITY mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). 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 the disputed 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 disputed domain name lists the registrant as “NA NA / NA” and there is no other evidence to suggest that Respondent was authorized to use the HEBREW UNIVERSITY mark or was commonly known by the disputed domain name. The Panel here finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Complainant argues that Respondent has not used the <hebrewuniversity.us> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempted to pass off as Complainant and phish for confidential user information on the disputed domain name’s resolving website. Attempting to pass off as a Complainant and phish for user information is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) or (iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). The disputed domain name previously resolved to a website that purported to offer online certification courses through Complainant’s university and urged internet users to impute various contact and payment information to enroll or receive information. The Panel here finds Respondent did not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv).
Complainant argues that Respondent lacks rights and legitimate interests in the <hebrewuniversity.us> domain name, as it currently inactively holds the disputed domain name. Inactively holding a disputed domain name may demonstrate lack of rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Complainant claims the disputed domain name currently resolves to an inactive website. The Panel here finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent raises no contentions regarding Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <hebrewuniversity.us> domain name in bad faith as it previously attempted to attract internet users to the disputed domain name’s resolving website by passing off as Complainant and phishing for user information. Attempting to pass off as a Complainant and phishing for user information may be considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). The Panel again notes Complainant’s screenshots of the disputed domain name’s previous resolving website, which featured Complainant’s mark and purported to offer courses through Complainant’s university, while urging users to input personal and financial information to receive details about enrollment and courses. The Panel here finds Respondent registered and uses the disputed domain name for bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered and uses the <hebrewuniversity.us> domain name in bad faith by currently inactively holding it. Inactively holding a disputed domain name may be considered indicative of bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (FORUM June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Complainant argues that the current website resolves to an inactive webpage. The Panel here finds the inactivity supports the conclusion that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the applicable usTLD Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <hebrewuniversity.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 23, 2020
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