Claim Number: FA0805001183169
Complainant is Southern California University for Professional Studies,
Inc. d/b/a California Southern University (“Complainant”) represented by Michelle
Hon of Duane Morris, LLP California, USA. Respondent
Lan Wan (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scups-edu.us>, registered with Namesdirect.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically April 30, 2008; the Forum received a hard copy of the Complaint May 1, 2008.
On May 1, 2008, Namesdirect.com confirmed by e-mail to the Forum that the <scups-edu.us> domain name is registered with Namesdirect.com and that Respondent is the current registrant of the name. Namesdirect.com verified that Respondent is bound by the Namesdirect.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2008, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 makes the following allegations:
1. The domain name that Respondent registered, <scups-edu.us>, is confusingly similar to Complainant’s SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark.
2. Respondent has no rights to or legitimate interests in the <scups-edu.us> domain name.
3. Respondent registered and used the <scups-edu.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Southern California University for Professional Studies, is a degree-granting school, offering educational services online and through traditional correspondence courses since 1978. Complainant is in the process of changing its name to California Southern University, but continues to do business under the SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES and SCUPS marks.
Respondent registered the disputed domain name April 14, 2007. Respondent has been using the disputed domain name to operate a website purporting to be Complainant’s website, offering educational services and degrees.
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.”
Given 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 will draw such inferences as the Panel considers appropriate pursuant to Paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the 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 or is being used in bad faith.
Because the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy are similar, the Panel draws upon UDRP precedent as applicable in rendering its decision.
Identical to and/or Confusingly Similar
A governmental trademark registration is not
necessary to establish rights under Policy ¶ 4(a)(i)
if Complainant can establish common law rights in the mark. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see
Complainant asserts first use of the SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark in commerce in 1978. Although Complainant has provided scant evidence of this assertion, it has demonstrated continuous use of the mark in commerce for thirty years. Because Respondent has not responded to the Complaint, Respondent has not advanced any arguments to the contrary. The Panel in Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) found common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established. Therefore, the Panel finds that through extensive and continuous use in commerce, Complainant has established secondary meaning in the mark sufficient to confer common law rights pursuant to Policy ¶ 4(a)(i). See Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
contends that the <scups-edu.us>
domain name is confusingly similar to its SOUTHERN CALIFORNIA UNIVERSITY FOR
PROFESSIONAL STUDIES mark because it is an abbreviation of its mark, and
insufficiently differs from Complainant’s mark by three additions: a hyphen, the generic suffix “edu” and the
country-code top-level domain (“ccTLD”) “.us.”
Previous panels have found that abbreviations of a mark do not
sufficiently distinguish it for the confusing similarity analysis under Policy
¶ 4(a)(i). The
Panel finds that the addition of the hyphen does not sufficiently distinguish
the disputed domain name from Complainant’s mark. In Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000), the Panel found confusing similarity
where the respondent’s domain name combined the complainant’s mark with a
generic term that had an obvious relationship to the complainant’s
business. The Panel here also finds that
the suffix “edu,” which is a common online abbreviation for “education,” is not
sufficient for distinguishing the disputed domain name from the mark. Moreover, because all registered domain names
are required to have a top-level domain, the addition of the ccTLD “.us” is not
relevant for distinguishing the disputed domain name from Complainant’s
mark. Therefore, the Panel finds that
the <scups-edu.us> domain
name is confusingly similar to its SOUTHERN CALIFORNIA UNIVERSITY FOR
PROFESSIONAL STUDIES mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Montrose Corp.,
D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name
<ms-office-2000.com> to be confusingly similar even though the mark
MICROSOFT is abbreviated); see also Health Devices Corp. v.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must make a prima facie case showing that Respondent has no rights to or legitimate interests in the <scups-edu.us> domain name under Policy ¶ 4(a)(ii). Here, Complainant has asserted that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds Complainant has made a prima facie case, thereby shifting the burden to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent has not submitted any evidence showing that it is the owner or beneficiary of a mark identical to the <scups-edu.us> domain name, therefore Respondent has not presented any evidence of rights or legitimate interests under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
The WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Moreover, Complainant has not indicated that it has authorized Respondent to use the SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark. Therefore, the Panel finds that Respondent is not commonly known by the <scups-edu.us> domain name pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that [UDRP] ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant contends that Respondent is using the disputed domain name to fraudulently host a website purporting to be Complainant’s own website and offering educational services. In American International Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel found that the respondent attempted to pass itself off as the complainant online, which the panel considered blatant unauthorized use of the complainant’s mark and evidence that the respondent had no rights or legitimate interests in the disputed domain name. The Panel concludes that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii), and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under [UDRP] ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent’s use of the <scups-edu.us> domain name to pass itself off as Complainant is capable of creating confusion as to Complainant’s source or sponsorship of the website that resolves from the disputed domain name. In H-D Michigan, Inc. v. Petersons Automotive, FA 135608 (Nat. Arb. Forum Jan. 8, 2003), the panel found that the disputed domain name was registered and used in bad faith pursuant to UDRP ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness. The Panel here concludes that Respondent is commercially benefiting from the goodwill associated with the SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark, and that its use demonstrates registration and use in bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Respondent’s use is also capable of disrupting Complainant’s legitimate business. In Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000), the panel found that the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business. Here, the Panel concludes that Respondent’s use of the disputed domain name to disrupt Complainant’s business is additional evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to [UDRP] ¶¶ 4(b)(iii) [and] (iv).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scups-edu.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 18, 2008.
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