The Pennsylvania State University v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2105001944047
Complainant is The Pennsylvania State University ("Complainant"), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Domain Admin / Whois Privacy Corp. ("Respondent"), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pennstatenetimpact.com>, registered with Internet Domain Service BS Corp.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2021; the Forum received payment on May 6, 2021.
On May 7, 2021, Internet Domain Service BS Corp confirmed by email to the Forum that the <pennstatenetimpact.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@pennstatenetimpact.com. Also on May 7, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is the flagship public university of the Commonwealth of Pennsylvania. It was founded in 1855 and now has 24 campuses, 34,000 faculty and staff members, and over 100,000 students. Complainant owns and uses PENN STATE and various other marks in connection with its educational and athletic programs. Complainant has continuously owned and used the PENN STATE mark, either as a word mark or a design mark, since at least as early as 1908 and around the world since at least as early as 1985. Complainant owns longstanding United States trademark registrations for PENN STATE along with several international registrations.
Complainant permits students involved in its recognized student organizations to use its PENN STATE mark and to register and own domain names incorporating the mark. One such organization is Penn State Net Impact, a recognized chapter of the Net Impact organization, made up primarily of students from Complainant's Smeal College of Business.
Respondent registered the disputed domain name <pennstatenetimpact.com> in November 2020. Complainant states that the domain name was previously owned and used by Penn State Net Impact, but that the registration lapsed after the students running the organization failed to renew it. The domain name is being used to host a website that is substantially identical to the one formerly hosted at the same domain name by Penn State Net Impact, but with the addition of text encouraging visitors to engage in online gambling and links to commercial gambling websites. Complainant states that Respondent is not commonly known by the disputed domain name and is not affiliated in any way with Complainant or its recognized student organization.
Complainant contends on the above grounds that the disputed domain name <pennstatenetimpact.com> is confusingly similar to its PENN STATE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <pennstatenetimpact.com> incorporates Complainant's registered PENN STATE trademark, adding the generic terms "net" and "impact" (together comprising the name of a Penn State student organization) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., President & Fellows of Harvard College v. Rudy Afriyadi, FA 1841891 (Forum June 5, 2019) (finding <harvardsmhl.org> confusingly similar to HARVARD, where "SMHL" was acronym for a Harvard student organization); Easy Online Solutions, Ltd. d/b/a MojoHost v. Scott Larsen, Mojo Impact Web Services, Mojo Impact Marketing Solutions, D2020-2689 (WIPO Dec. 4, 2020) (finding <mojoimpacthosting.com> confusingly similar to MOJOHOST); Equifax Inc. v. Domain Administrator, China Capital Investment Ltd., D2017-1880 (WIPO Nov. 7, 2017) (finding <equifaximpact2017.com> confusingly similar to EQUIFAX); Baylor University v. Domain Administrator c/o Fundacion Private Whois, FA 1541455 (Forum Mar. 4, 2014) (finding <baylornet.com> confusingly similar to BAYLOR). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to host a misleading website designed to attract users seeking Complainant or its recognized student organization and then, the Panel infers, to profit by diverting them to unrelated commercial gambling websites. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., President & Fellows of Harvard College v. Rudy Afriyadi, supra (finding lack of rights or interests in similar circumstances); Unknown AB v. Gabor Burnac / Cutts Media Kft, FA 1795276 (Forum Aug. 16, 2018) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name, registered in the name of what the Panel infers to be a privacy registration service, incorporates Complainant's registered mark without authorization. It is being used for a website that mimics that of Complainant's recognized student organization, seeking to attract Internet users by creating confusion with Complainant or the student organization and then diverting them to unrelated commercial gambling websites. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Licensing IP International S.à.r.l. v. Domain Admin / Whois Privacy Corp., FA 1935837 (Forum Apr. 7, 2021) (finding bad faith in similar circumstances); President & Fellows of Harvard College v. Rudy Afriyadi, supra (same); Unknown AB v. Gabor Burnac / Cutts Media Kft, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pennstatenetimpact.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 2, 2021
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