NATIONAL ARBITRATION FORUM

 

DECISION

 

Acton Educational Services d/b/a West Coast University v. West Coast University International Inc

Claim Number: FA0805001191541

 

PARTIES

Complainant is Acton Educational Services d/b/a West Coast University, (“Complainant”) represented by Michelle A. Hon, of Duane Morris, LLP, California, USA.  Respondent is West Coast University International Inc, (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <westcoastuniversity.us>, registered with Omnis Networks, LLC.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 16, 2008; the Forum received a hard copy of the Complaint on May 19, 2008.

 

On May 19, 2008, Omnis Networks, LLC. confirmed by e-mail to the Forum that the <westcoastuniversity.us> domain name is registered with Omnis Networks, LLC. and that Respondent is the current registrant of the name.  Omnis Networks, LLC. has verified that Respondent is bound by the Omnis Networks, LLC. registration agreement and has thereby 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 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 16, 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 18, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.      Respondent’s <westcoastuniversity.us> domain name is identical to Complainant’s WEST COAST UNIVERSITY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <westcoastuniversity.us> domain name.

 

3.      Respondent registered and used the <westcoastuniversity.us> domain name in bad faith.

 

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Acton Educational Services, conducts business under the WEST COAST UNIVERSITY name and mark, through which it has offered educational services over the past 100 years at the undergraduate and professional levels.  Complainant holds two registered trademarks with the United States Patent and Trademark Office (“USPTO”) for the WEST COAST UNIVERSITY mark: Reg. No. 3,232,786 filed January 13, 2006 and issued April 24, 2007; and Reg. No. 3,239,193 filed January 13, 2006 and issued May 8, 2007.  These USPTO trademark registrations both list a first date of use in commerce of March 2, 2001.  Complainant also submitted evidence that it registered the <westcoastuniversity.com> domain name on February 14, 2000, and the <westcoastuniversity.edu> domain name on January 28, 2004 to promote its educational services online.

 

Respondent registered the <westcoastuniversity.us> domain name on September 6, 2005.  The disputed domain name resolves to a website purporting to advertise Complainant’s WEST COAST UNIVERSITY; however, Complainant does not have any relationship with Respondent, and has not licensed or authorized Respondent to use the WEST COAST UNIVERSITY mark or advertise Complainant’s services.  The resolving website also asks potential applicants to submit their personal and financial information.

 

DISCUSSION

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.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the 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 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 that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights to the WEST COAST UNIVERSITY mark based on its corresponding USPTO trademark registrations.  The Panel finds that this evidence demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i).  See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to [UDRP] ¶ 4(a)(i).”); see also Diners Club Int’l Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (conferring rights in the DINERS mark to the complainant based upon its USPTO trademark registration).

 

Furthermore, the Panel notes that Complainant has shown that its rights in the mark predate Respondent’s registration of the <westcoastuniversity.us> domain name.  Complainant has offered educational services under the WEST COAST UNIVERSITY mark for almost 100 years, and began promoting its university online in 2000.  Complainant’s USPTO trademark registrations note a first date of use in commerce of 2001.  While these dates may seem to be at odds, it is not necessary for the Panel to determine exactly when Complainant acquired ample rights in the WEST COAST UNIVERSITY mark.  For purposes of the Policy in this case, it is sufficient to conclude that Complainant’s common law rights in the WEST COAST UNIVERSITY mark predate Respondent’s registration of the <westcoastuniversity.us> domain name in 2005.  See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also MediaBiotics Labs., L.L.C. v. NOLDC, Inc., FA 346252 (Nat. Arb. Forum Dec. 7, 2004) (“Complainant’s previous registration of domain names reflecting Complainant’s CORTIBURN, CORTIZIDE and ANXIETOL 7 marks evidences Complainant’s rights in the marks.”).

 

Respondent’s <westcoastuniversity.us> domain name contains Complainant’s entire unchanged WEST COAST UNIVERSITY mark, but removes the spaces between the terms and adds the country-code top-level domain (“ccTLD”) “.us.”  These changes are both irrelevant under the Policy since they are limitations and requirements of domain names.  Therefore, the Panel concludes that Respondent’s <westcoastuniversity.us> domain name is identical to Complainant’s WEST COAST UNIVERSITY mark for the purposes of Policy ¶ 4(a)(i).  See Future Steel Holdings Ltd. v. Majercik, FA 224964 (Nat. Arb. Forum Mar. 15, 2004) (“The <steelmaster.us> domain name is identical to the STEEL MASTER mark.  The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the Policy”).

 

The Panel finds that Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <westcoastuniversity.us> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii).  Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii).  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).  Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

The Panel has examined all the evidence in the record, and underscores Respondent’s failure to respond to the Complaint.  Thus, Respondent has not set forth any basis to find that it holds rights to any mark identical to the <westcoastuniversity.us> domain name.  Accordingly, Respondent cannot satisfy 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)).

 

Similarly, while the WHOIS information identifies Respondent as “West Coast University International Inc,” there is no affirmative evidence in the record proving Respondent’s identity.  On the contrary, Complainant notes that Respondent is not licensed or authorized to use Complainant’s WEST COAST UNIVERSITY mark in a domain name or otherwise.  Therefore, the Panel concludes that Respondent is not commonly known by the <westcoastuniversity.us> domain name pursuant to Policy ¶ 4(c)(iii).  See Gestmusic Endemol, S.A. v. operaciontriunfo.us, FA 214337 (Nat. Arb. Forum Jan. 14, 2004) (“Though Respondent’s WHOIS information lists Respondent’s name as ‘o. operaciontriunfo.us’ and organization as ‘operaciontriunfo.us,’ there is no evidence before the Panel that Respondent was actually commonly known by the [<operaciontriunfo.us>] domain name.”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’  However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).

 

Complainant has evidenced Respondent’s use of the <westcoastuniversity.us> domain name in an attempt to represent itself as Complainant’s educational institution.  The resolving website prominently displays Complainant’s mark and information regarding educational services, and also asks for potential applicants’ personal and financial information.  The Panel finds that Respondent is attempting to “pass itself off” as Complainant and “phish” for customers’ confidential information, which are uses that do not conform with a bona fide offering of goods or services under Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. 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 UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to UDRP ¶ 4(c)(iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration or Use in Bad Faith

 

The Panel agrees with Complainant’s contention that, based upon Respondent’s use of the <westcoastuniversity.us> domain name, Internet users are likely to mistakenly believe that the resolving website is operated by Complainant.  Respondent is also attempting to obtain customers’ confidential financial and personal information.  This likelihood of confusion is for Respondent’s commercial gain, and therefore evidences Respondent’s registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).  See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).

 

Respondent’s attempt to pass itself off as Complainant also evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <westcoastuniversity.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: July 2, 2008

 

 

 

 

 

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