Tufts University v. Oneida Advisors LLC
Claim Number: FA0808001219154
Complainant is Tufts University (“Complainant”), represented by Gary W. Smith, of Posternak Blankstein & Lund LLP, Massachusetts, USA. Respondent is Oneida Advisors LLC (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tufts.mobi>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2008.
On August 6, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <tufts.mobi> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 4, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@tufts.mobi by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 assertions:
1. Respondent’s <tufts.mobi> domain name is identical to Complainant’s TUFTS mark.
2. Respondent does not have any rights or legitimate interests in the <tufts.mobi> domain name.
3. Respondent registered and used the <tufts.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tufts University, was founded in 1852 and has been operating under the TUFTS mark ever since. Complainant currently has more than 8,500 students enrolled from over one hundred countries around the world. Complainant has three different campuses in the State of Massachusetts as well as a campus in France. Moreover, Complainant is the owner of over twenty-three trademark registrations of the TUFTS mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <tufts.mobi> domain name was registered on September 26, 2006 and currently resolves to a parked website containing nothing but a search engine and some advertisements related to the registration and purchase of domain names.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 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 states that it has twenty-three trademark
registrations of the TUFTS mark with the USPTO.
However, based on the evidence in the record, the Panel is unable to
determine the registration date of any of these marks. This is not necessary if Complainant can
establish common law rights in a 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 also Artistic Pursuit LLC
v. calcuttawebdevelopers.com, FA 894477
(Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require
a trademark registration if a complainant can establish common law rights in
its mark).
Complainant has been operating under the TUFTS mark and name
since 1852 and currently has more than 8500 students enrolled from over one
hundred countries around the world.
Complainant currently operates three different campuses in the State of
Massachusetts as well as one campus in France.
The Panel finds that due to Complainant’s long-standing use of the TUFTS
mark, the mark has achieved secondary meaning sufficient enough to demonstrate
Complainant’s common law rights under Policy ¶ 4(a)(i) in the TUFTS mark. See Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common
law rights in a mark where its use was continuous and ongoing, and secondary
meaning was established); see also 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 Goepfert
v. Rogers, 861124 (Nat. Arb. Forum Jan. 17,
2007) (“[T]here is no particular amount of
evidence required in order to establish common law rights. The determination of what is sufficient is ad
hoc based on the specific facts and circumstances involved, as is the scope of
the rights once established.”).
The <tufts.mobi> domain name contains
Complainant’s TUFTS mark in its entirety followed by the generic top-level
domain (“gTLD”) “.mobi.” It is
well-established that the inclusion of a gTLD is irrelevant to a Policy ¶
4(a)(i) analysis. Therefore, the Panel
finds the <tufts.mobi> domain name to be identical to
Complainant’s TUFTS mark pursuant to Policy ¶ 4(a)(i). See
Vanderbilt Univ. v. U Inc., FA 893000
(Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi>
domain name to be identical to the VANDERBILT mark because it did not add
anything except the generic top-level domain “.mobi”); see also Starkey v. Bradley,
FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated
the same way as .com and should be ignored when comparing the mark and the
disputed domain name.”); see also Trip Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD,
whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶
4(a)(i) analysis).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first establish a prima facie case against Respondent, demonstrating that it lacks
rights and legitimate interests in the disputed domain name. The Panel finds that Respondent has met this
threshold and the burden has shifted to Respondent to prove that it does have
rights or legitimate interests in the disputed domain name. See
SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (concluding that under
Policy ¶ 4(a)(ii) and the factors listed in Policy ¶ 4(c), a complainant must
first make a prima facie case that
the respondent has not used or made demonstrable preparations to use the
disputed domain name in connection with a bona
fide offering of goods or services, that the respondent is not commonly
known by the disputed domain name, and that the respondent is not making a
legitimate noncommercial or fair use of the disputed domain name before the
burden shifts to the respondent to show otherwise); see also Swedish Match
UK Ltd. v. Admin, Domain, FA
873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case
has been established by the complainant under Policy ¶ 4(c), the burden then
shifts to the respondent to demonstrate its rights or legitimate interests in
the disputed domain name).
No reply has been filed in this case. Therefore, the Panel may presume that
Respondent lacks all rights and legitimate interests in the disputed domain
name. Nonetheless, the Panel will
evaluate the record in consideration of the elements listed under Policy ¶
4(c). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a response, the respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the absence
of a Response, the Panel accepts as true all reasonable allegations . . .
unless clearly contradicted by the evidence.”).
Complainant contends that Respondent is not commonly known
by the disputed domain name. The WHOIS
record for the <tufts.mobi> domain name only lists “Oneida
Advisors LLC.” Without any additional
information, the Panel finds that Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See
Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat. Arb. 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent
has no rights or legitimate interests in a disputed domain name where there is
no evidence in the record indicating that the respondent is commonly known by
the disputed domain name).
The <tufts.mobi> domain name resolves to a
parked website featuring a search engine and few ads for unrelated domain name
registration services. Beyond this, it
appears that no active use is being made of the disputed domain name. Without any further explanation, the Panel
considers the inactive use of the disputed domain name to be neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. &
Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is
wholly appropriating Complainant’s mark and is not using the
<bloomberg.ro> domain name in connection with an active website. The Panel finds that the passive holding of a
domain name that is identical to Complainant’s mark is not a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Am.
Online, Inc. v. Kloszewski, FA 204148
(Nat. Arb. Forum Dec. 4, 2003) (“Respondent's [inactive use] of the
<aolfact.com> domain name for over six months is evidence that Respondent
lacks rights and legitimate interests in the domain name.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has not made any active use of the disputed domain name since it was registered. Considering Respondent’s failure to reply to the Complaint, the Panel finds that Respondent’s inactive use of the <tufts.mobi> domain name established that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
The Panel concludes that Complainant has satisfied 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 <tufts.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 29, 2008
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