The Trustees of Columbia University in the City of New York v. Walter Shustikov
Claim Number: FA2103001937864
Complainant is The Trustees of Columbia University in the City of New York (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Walter Shustikov (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cuarts.com>, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 24, 2021. The Forum received payment on March 24, 2021.
On March 25, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cuarts.com> 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 March 26, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2021 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@cuarts.com. Also on March 26, 2021, 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 April 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
Complainant, The Trustees of Columbia University in the City of New York, operates COLUMBIA UNIVERSITY in New York City, one of the most famous and preeminent universities in the world. Complainant has rights in the COLUMBIA UNIVERSITY mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s domain name is confusingly similar to Complainant’s COLUMBIA UNIVERSITY mark as it is an abbreviation of that mark and merely adds the generic term “arts” as well as the generic top-level domain (gTLD) “.com”.
Respondent lacks rights or legitimate interests in the domain name, which was previously owned by Complainant. Respondent is not commonly known by the domain name nor has Respondent been authorized by Complainant to use the COLUMBIA UNIVERSITY mark. Respondent has not used the <cuarts.com> domain name in connection with a bona fide offering of goods or services as Respondent is using it to resolve to a website impersonating Complainant, including by using Complainant’s Columbia University name, copying text, images, and other content from Complainant’s prior legitimate website at the <cuarts.com> domain name, purporting to offer services as Complainant, soliciting memberships to Complainant’s arts initiative, and speaking as if the site were an official website associated with Complainant. By resolving the domain name to a website designed to impersonate Complainant, Respondent is using it in a manner that is likely to mislead consumers into mistakenly believing that the domain name is authorized, operated or owned by Complainant. Such fraudulent use of a domain name to impersonate and create a false connection with Complainant is not a legitimate use of the domain name or bona fide offering of goods and services.
Respondent registered and uses the <cuarts.com> domain name in bad faith. Respondent registered the domain name with actual knowledge of Complainant’s rights in the COLUMBIA UNIVERSITY mark and has used it to pass himself off as Complainant in order to phish for user information. Respondent opportunistically registered the domain name after Complainant’s registration lapsed and illegitimately reproduced copyrighted materials of Complainant on the <cuarts.com> webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the COLUMBIA UNIVERSITY mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 1,524,893, registered February 14, 1989).
The <cuarts.com> domain name consists of the letters “cu”, which may be understood as an abbreviation of numerous names, including that of COLUMBIA UNIVERSITY, with the added generic term “arts” and the inconsequential generic top-level domain (gTLD) “.com”, which may be ignored.
As in the case of Blackstone TM L.L.C. v. Sergei Hromichkov, FA 1895177 (Forum June 3, 2020), the COLUMBIA UNIVERSITY mark may not immediately spring to mind when considering the <cuarts.com> domain name alone, nor is it apparent when making the usual side-by-side comparison of the <cuarts.com> domain name with the COLUMBIA UNIVERSITY mark that the former is necessarily confusingly similar to the latter. However, the use to which Respondent has put the domain name, namely to impersonate Complainant by copying the content of Complainant’s former website to which the same domain name resolved when registered to Complainant, persuades the Panel that Respondent’s domain name is confusingly similar to Complainant’s COLUMBIA UNIVERSITY mark.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <cuarts.com> domain name was originally registered by Complainant on April 11, 2005 and was allowed to lapse in about 2014. It is unclear when it was registered by Respondent. As mentioned, the domain name resolves to a website impersonating Complainant, with content copied from Complainant’s former website at the domain name.
These circumstances, coupled with Complainant’s assertions, constitute a prima facie case that Respondent lacks rights and legitimate interests in the <cuarts.com> domain name under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show he does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the <cuarts.com> domain name under Policy ¶ 4(a)(ii).
Complainant has established this element.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
In light of the use to which the domain name has been put, the Panel finds that that Respondent was well aware of Complainant’s COLUMBIA UNIVERSITY mark when registering the <cuarts.com> domain name and did so intentionally to attract, for commercial gain, Internet users to the website to which the domain name resolves, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website.
The Panel therefore finds that Respondent registered and is using the <cuarts.com> domain name in bad faith under Policy ¶4(b)(iv).
Complainant has established this element.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cuarts.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: April 26, 2021
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