National Merit Scholarship Corporation v. Fahad Muhammad / scholarships and jobs
Claim Number: FA2204001990967
Complainant is National Merit Scholarship Corporation (“Complainant”), represented by Peter G. Byrne of Morgan, Lewis & Bockius LLP, California USA. Respondent is Fahad Muhammad / scholarships and jobs (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalmeritgrants.com>, registered with NameCheap, 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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2022; the Forum received payment on April 4, 2022.
On April 5, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <nationalmeritgrants.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 April 6, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@nationalmeritgrants.com. Also on April 6, 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 May 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 official response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a not-for-profit organization that awards annual academic scholarships to college undergraduate students. Complainant submits that it has rights in the NATIONAL MERIT mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 2,297,680, registered on December 7, 1999). See Compl. Ex. 4. Respondent’s <nationalmeritgrants.com> domain name is identical or confusingly similar to Complainant’s NATIONAL MERIT mark as it incorporates the mark in its entirety, only adding the descriptive term “grants” and 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 NATIONAL MERIT mark, 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 offers competing goods and services.
Respondent registered and uses the <nationalmeritgrants.com> domain name in bad faith. Respondent has previously been found to have acted in bad faith, having a history of bad faith registrations. Additionally, Respondent attempts to attract users for commercial gain by displaying pay-per-click hyperlinks. Finally, Respondent used false information and a privacy service when registering the domain name.
B. Respondent
Respondent did not submit a formal Response, but sent an email to the Forum on April 16, 2022 in which it contended that it had developed the domain name, that there was no appropriate trademark for the mark, and that the domain name could be purchased for $50,000.
1. Complainant is a United States not-for-profit organization that awards annual academic scholarships to college undergraduate students.
2. Complainant has established its rights in the NATIONAL MERIT trademark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 2,297,680, registered on December 7, 1999).
3. Respondent registered the disputed domain name on November 12, 2018.
4. Respondent has caused the disputed domain name to be used so that the resolving website offers goods and services competing with those of Complainant.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the NATIONAL MERIT mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,297,680, registered on December 7, 1999). See Compl. Ex. 4. Registering a mark with the USPTO is sufficient to establish rights in the mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021). Therefore, the Panel finds Complainant has sufficiently established rights in the NATIONAL MERIT mark.
Respondent did not file a Response but forwarded a letter to the form which the Panel will regard as an expression of Respondent’s position on various issues and which the Panel will therefore take into consideration. One of the matters submitted in that letter is that there was in this case no appropriate trademark for the domain name. That is not correct. There was a relevant trademark that existed when the domain name was registered and which exists today. Complainant has therefore established the trademark interest that it must show to obtain standing in this proceeding and it has done that.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s NATIONAL MERIT mark. Complainant argues Respondent’s <nationalmeritgrants.com> domain name is confusingly similar to Complainant’s NATIONAL MERIT mark, as it incorporates the mark in its entirety, only adding the descriptive term “grants” and the “.com” gTLD. The mere addition of a descriptive term and a gTLD is not sufficient to differentiate a disputed domain name from a mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”).The Panel therefore finds the <nationalmeritgrants.com> domain name is confusingly similar to Complainant’s NATIONAL MERIT mark.
Respondent has submitted in its letter that it developed the domain name. That may be true, but if it had no right to register the domain name or use it and no right to copy Complainant’s name and trademark nor to offer competing services to those of Complainant, which is clearly the case, the development of the domain name gave rise to a domain name that is and was by definition confusingly similar to the trademark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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)).
(a) Respondent has chosen to take Complainant’s NATIONAL MERIT mark and to use it in its domain name adding only the generic word “grants” to the mark;
(b) Respondent registered the domain name on November 12, 2018;
(c) Respondent has caused the disputed domain name to be used so the resolving website offers competing goods and services;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <nationalmeritgrants.com> domain name because Respondent is not authorized to use the NATIONAL MERIT mark, nor is Respondent commonly known by the disputed domain name. Past panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by the disputed 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). If the available WHOIS information shows respondent uses the domain name, the respondent must also provide affirmative evidence that it is commonly known by the domain name. Here, the WHOIS information shows Respondent is known as “Fahad Muhammad / scholarships and jobs” and there is no other evidence to show Respondent is commonly known as the disputed domain name nor that Complainant authorized Respondent to use the mark. See Amend. Compl. Ex. 9. Therefore, the Panel finds Respondent is not commonly known by the <nationalmeritgrants.com> domain name;
(f) Complainant argues Respondent does not use the <nationalmeritgrants.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website offers competing services to those offered by Complainant. Using a domain name to redirect users to a website with competing goods and services is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). In this case, Complainant provides screenshots of the resolving website, showing Respondent offers competing scholarship services. See Amend. Compl. Ex. 2. As the Panel agrees, the Panel finds Respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or rebutted the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits Respondent has a pattern of bad faith registrations, as a prior Panel had already ruled in Complainant’s favor for another domain name which Respondent owned. Previously, panels have looked at a respondent’s past UDRP cases when analyzing bad faith. See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Here, Complainant provides a copy of the decision of a prior case against Respondent, where the Panel ruled Respondent registered a confusingly similar domain name. See Amend. Compl. Ex. 8. Therefore, the Panel has considered Respondent’s involvement in previous proceedings and finds that it contributes to showing bad faith registration.
Secondly, Complainant contends Respondent attempts to attract internet users for financial gain by hosting third-party pay-per-click hyperlinks at the resolving website. Using a domain name to redirect users to pay-per-click hyperlinks for the respondent’s financial gain indicates bad faith. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). In this case, the Panel notes the screenshots of the resolving website in evidence to show the links presented to users. See Amend. Compl. Exs. 2 & 6. Therefore, the Panel finds Respondent acted in bad faith.
Thirdly, Complainant submits that Respondent used a privacy shield when registering the domain name and provided false contact information. Using a privacy shield when registering a domain name is indicative of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Additionally, providing false contact information further supports a finding of bad faith. See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Here, Complainant provides evidence that a search for the alleged creator of the website, Alex Derm, is nonexistent. See Compl. Ex. 7. The Panel therefore finds Respondent registered and uses the domain name in bad faith.
It should also be said at this point that Respondent stated in its email letter that the domain name could be purchased for $50,000. That is the worst possible submission that Respondent could make. It shows that Respondent used the domain name in bad faith as it was trying to sell what it did not own and should not have acquired. It also shows that the original intention of Respondent was to register the domain name in bad faith. Respondent has thus proved an essential part of Complainant’s case.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationalmeritgrants.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: May 3, 2022
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