University of Richmond v. Hulmiho Ukolen
Claim Number: FA2203001989140
Complainant is University of Richmond (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Hulmiho Ukolen (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universityofrichmond.com>, registered with Gransy, s.r.o..
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2022; the Forum received payment on March 22, 2022.
On March 23, 2022, Gransy, s.r.o. confirmed by e-mail to the Forum that the <universityofrichmond.com> domain name is registered with Gransy, s.r.o. and that Respondent is the current registrant of the name. Gransy, s.r.o. has verified that Respondent is bound by the Gransy, s.r.o. 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 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2022 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@universityofrichmond.com. Also on March 24, 2022, 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 19, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 a liberal arts university in Richmond, Virginia. Complainant asserts rights in the UNIVERSITY OF VIRGINIA trademark through its registration of the trademark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 2,665,932, registered on December 24, 2002). Respondent’s <universityofrichmond.com> domain name is identical or confusingly similar to Complainant’s UNIVERSITY OF RICHMOND trademark, as it incorporates the trademark in its entirety, only adding the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the UNIVERSITY OF RICHMOND trademark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website hosts pay-per-click hyperlinks that redirect users to competing and unrelated websites.
Respondent registered and uses the <universityofrichmond.com> domain name in bad faith. Respondent attempts to attract users for commercial gain by redirecting users to competing pay-per-click links. Similarly, Respondent had actual notice of Complainant’s rights in the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,665,932 UNIVERSITY OF RICHMOND (word), registered December 24, 2002 for goods and services in Intl Classes 16, 25 and 41, filed September 18, 2001 and claiming first use in commerce since 1921 for services in Intl Class 41;
No. 3,533,460 UNIVERSITY OF RICHMOND (fig), registered November 18, 2008 for goods and services in Intl Classes 14, 16, 21, 24, 25 and 41; and
No. 3,824,444 RICHMOND (logo), registered July 27, 2010 for goods in Intl Class 25.
The disputed domain name <universityofrichmond.com> was registered on February 2, 2002.
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 asserts rights in the UNIVERSITY OF RICHMOND trademark through its registration of the trademark with the USPTO (e.g., Reg. No. 2,665,932, registered on December 24, 2002). When a complainant registers a trademark with the USPTO, it is sufficient to establish rights in the trademark. See H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel find that Complainant has sufficiently established rights in the UNIVERSITY OF RICHMOND trademark.
Complainant argues Respondent’s <universityofrichmond.com> domain name is identical or confusingly similar to Complainant’s UNIVERSITY OF RICHMOND trademark, as it incorporates the trademark in its entirety, only adding the “.com” gTLD. The mere addition of a gTLD is not sufficient to differentiate a disputed domain name from a trademark. See David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Respondent arrives at the disputed domain name by simply taking Complainant’s mark in its entirety and adding the g TLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark.”). The Panel therefore find that the <universityofrichmond.com> domain name is in fact identical to Complainant’s UNIVERSITY OF RICHMOND trademark.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent lacks rights and legitimate interests in the <universityofrichmond.com> domain name because Respondent is not authorized to use the UNIVERSITY OF RICHMOND trademark, nor is Respondent commonly known by the disputed domain name. A respondent may be found to not be commonly known by a domain name, under ¶ 4(c)(ii), where the identifying WHOIS information is unrelated to the domain name See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information shows Respondent is known as “Hulmiho Ukolen” and there is no evidence to suggest that Complainant has authorized Respondent to use the UNIVERSITY OF RICHMOND trademark. Therefore, the Panel find that Respondent is not commonly known by the <universityofrichmond.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the <universityofrichmond.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website hosts third-party links, both competing and unrelated to Complainant’s business. Using a disputed domain name only to host miscellaneous hyperlinks is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). In this case, Complainant provides evidence of some of the websites users may be redirected to if they visit Respondent’s website. Therefore, the Panel find that Respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use.
Complainant first asserts Respondent registered and uses the disputed domain name in bad faith because Respondent attempts to attract users for commercial gain by hosting a website with pay-per-click hyperlinks. Using a disputed domain name to host a website with pay-per-click competing and unrelated hyperlinks may indicate bad faith. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). As noted above, the Complainant has provided screenshots of the websites users are redirected to if they click the links offered in the resolving website. Therefore, the Panel agrees with Complainant’s conclusion that Respondent commercially benefits from hosting the hyperlinks, and the Panel find that Respondent acted in bad faith.
Complainant further contends that Respondent had actual notice of Complainant’s rights in the UNIVERSITY OF RICHMOND trademark, as evidenced by the fame of the trademark and Respondent’s host of competing websites. Previously, panels have found actual notice by looking at the notoriety of the trademark, as well as respondent’s use of the trademark. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). In the present case, Complainant provides evidence of the trademark’s fame and notoriety, as well as Respondent’s redirecting websites to competing businesses.
As noted initially, the disputed domain name was registered on February 2, 2002, whereas the oldest registration date for the Complainant’s trademark is December 24, 2002.
However, the Complainant has proved use of the UNIVERSITY OF RICHMOND trademark in commerce since at least 1920. Further, the filing date of the No. 2,665,932 UNIVERSITY OF RICHMOND word trademark is September 18, 2001, which is close to 5 months before the registration date of the disputed domain name.
A Respondent can in fact be found to have registered in bad faith when further facts indicates that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent trademark rights. Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge, (iii) further to significant media attention, or (iv) following the complainant’s filing of a trademark application. In the present case, although the Complainant had no registered trademark rights at the time the Respondent registered <universityofrichmond.com>, the Complainant has proved that the trademark was long before that date rather well-known by use for certain goods and services. In addition, the Complainant had a pending trademark application pre-dating the registration date of the disputed domain name.
Taking also into consideration the Respondent’s behavior, the use of the disputed domain name, and the fact that Respondent chose to not reply to the Complaint, further indicates that Respondent also had actual notice of Complainant’s rights in the UNIVERSITY OF RICHMOND trademark. The Panel therefore find both registration and use in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universityofrichmond.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 28, 2022
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