President and Fellows of Harvard College v. Michael S. George / Harvard Business Council
Claim Number: FA2207002003542
Complainant is President and Fellows of Harvard College (“Complainant”), represented by Andrew J. Avsec, Illinois, USA. Respondent is Michael S. George / Harvard Business Council (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harvardcouncil.org> and <harvardawards.org>, 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.
Sozos-Christos Theodoulou as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2022; the Forum received payment on July 8, 2022.
On July 13, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <harvardcouncil.org> and <harvardawards.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@harvardcouncil.org, postmaster@harvardawards.org. Also on July 18, 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.
A timely Response was received and determined to be complete on August 5, 2022.
Additional Submission by Complainant was received on August 10, 2022. Panel finds that Additional Submission complies with Forum Supplemental Rule 7.
On August 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sozos-Christos Theodoulou 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, President and Fellows of Harvard College, is an esteemed institution of higher learning. Complainant has rights in the HARVARD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,608,533, registered July 31, 1990). See Compl. Annex M. Respondent’s <harvardcouncil.org> and <harvardawards.org> domain names are virtually identical and confusingly similar to Complainant’s mark because each one incorporates the HARVARD mark in its entirety and adds a generic term (i.e., “COUNCIL” and “AWARDS,” respectively) and the “.org” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <harvardcouncil.org> and <harvardawards.org> domain names. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the HARVARD mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the <harvardcouncil.org> domain name resolves a page that displays Complainant’s mark and logo in an attempt to pass off Respondent as affiliated with Complainant and direct users to a competing website. The <harvardawards.org> domain name resolves to an inactive webpage. The disputed domain names have been used in conjunction with a phishing scheme.
Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain names in order to divert customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the HARVARD mark.
B. Respondent
Respondent, Michael S. George / Harvard Business Council, registered <harvardcouncil.org> on September 1, 2020, and <harvardawards.org> on September 17, 2020. See Compl. Annex B.
Respondent contends that the disputed domain names are not confusingly similar to Complainant’s HARVARD mark. Respondent argues that the disputed domain names would not be easily mistaken as affiliated with Complainant as Respondent offers a distinct service.
Respondent argues that Respondent has rights and legitimate interests in the disputed domain names. Respondent contends that Respondent makes a legitimate fair use of the disputed domain names as Respondent’s business is in no way related to Complainant.
Respondent argues that Respondent did not register and use the disputed domain names in bad faith. Respondent contends that Complainant provides insufficient evidence of bad faith, and that Complainant is harassing Respondent by initiating these proceedings.
C. Additional Submissions
Complainant rejects all of Respondent’s submissions in the Response, as misleading and incorrect.
Complainant is a reputable educational and research institution in the United States, well-known around the world for its excellent rankings and famous graduates by the single name “HARVARD”.
Complainant is the owner of a large-sized portfolio of trademarks and domain names, being actively present in at least 125 countries worldwide.
The disputed domain names <harvardcouncil.org> and <harvardawards.org> were registered in September 2020 by the Respondent. The first one is being used by the Respondent, while the second one is currently inactive.
PRELIMINARY ISSUE: NON-UDRP LEGAL ARGUMENTS
Respondent argues various legal points pursuant to United States trademark law as they may apply to findings of confusing similarity and the fair use defense. Respondent is reminded that the instant dispute is governed by the UDRP and not United States law, so the Panel disregards these arguments. Again, while Policy ¶ 4(k) allows the parties to litigate these points in court, the Panel finds that these arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements. See Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
Accordingly, the following analysis is strictly confined to an analysis under the UDRP and does not address any arguments made by either party with respect to United States trademark law.
PRELIMINARY ISSUE: ADDITIONAL SUBMISSION
Before launching itself into the usual threefold test, the Panel wishes to confirm that, based on Rules 10 and 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, as well as on Forum Supplemental Rule 7, it has decided to accept the Additional Submission as filed by the Complainant on August 10, 2022.
Having said this, the Panel will now proceed with the examination of the substance of the matter.
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.
Complainant asserts rights in the HARVARD mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 1,608,533, registered July 31, 1990). See Compl. Annex M. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the HARVARD mark with the USPTO, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues Respondent’s <harvardcouncil.org> and <harvardawards.org> domain names (henceforth referred to as the “disputed domain names”) are identical or confusingly similar to Complainant’s HARVARD mark. The addition of a gTLD and a generic term fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). 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).”). Here, the disputed domain names each contain the HARVARD mark in its entirety while adding in a generic term, specifically “council” and “awards”, and the “.org” gTLD. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel reminds 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the HARVARD mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain name lists the registrant as “Michael S. George/ Harvard Business Council”. See Amended Compl. Annex V. Complainant further asserts it has not licensed or otherwise authorized Respondent to use Complainant’s HARVARD mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <harvardcouncil.org> domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use because Respondent uses the domain to operate a competing website at which it purports to be Complainant through its use of a Complainant’s mark and logo. An attempt by a respondent to pass itself off as an affiliate of the complainant under false pretenses may support a finding of failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). In addition, where a respondent uses a domain to redirect users to competing services, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). 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.”). Here, Complainant provides evidence of Respondent’s use of Complainant’s mark at the resolving website, as well as Respondent’s offering of business services and awards that Complainant contends could be perceived by an internet user as originating with Complainant. See Compl. Annex U. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Complainant further argues that Respondent fails to use the <harvardawards.org> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the domain instead resolves to an inactive webpage. Where a respondent fails to make active use of a domain, the Panel may find that respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides evidence of the disputed domain name resolving to an inactive webpage. See Compl. Annex V. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Complainant alleges that, because Respondent has employed Complainant’s logo and mark to fraudulently obtain funds from consumers, Respondent has engaged in phishing and thus demonstrated its lack of rights or legitimate interest in Complainant’s mark. See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”). The impersonation of a complainant in conjunction with a phishing scheme may indicate a lack of rights or legitimate interest in a disputed domain name. See Allianz of Am. Corp. v. Bond, FA 690796 (Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Here, Complainant contends that Respondent has used the disputed domain names to fraudulently obtain funding intended for Complainant. See Compl. Annex T. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name, per Policy ¶4 (a)(ii).
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent attempts to attract Internet users to its competing website for commercial gain. Use of a disputed domain name to redirect consumers to competing goods or services can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). As previously noted, Complainant provides evidence of a disputed domain name resolving to a page that offers business assessment services that Complainant contends are close enough aligned with services offered by Complainant that Respondent may financially benefit from association with Complainant. See Compl. Annex U. The Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent attempts to pass itself off as affiliated with Complainant and take advantage of confusion with Complainant’s well-known mark to attract Internet users to its competing website for commercial gain. Use of a domain name that is confusingly similar to a well-known mark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). In addition, an attempt by Respondent to pass itself off as affiliated with Complainant may be further evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant contends that Respondent attempts to pass itself off as affiliated with Complainant and take advantage of confusion with Complainant’s well-known mark for commercial gain. The Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's HARVARD mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel notes the notoriety of Complainant’s mark. The Panel, thus, determines that Respondent had actual knowledge of Complainant’s rights in the marks and finds that Respondent registered the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harvardcouncil.org> and <harvardawards.org> domain names be TRANSFERRED from Respondent to Complainant.
Sozos-Christos Theodoulou, Panelist
Dated: August 25, 2022
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