Claim Number: FA0902001247095
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indiana-edu.com>, registered with Alantron Bltd.
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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 12, 2009.
The National Arbitration Forum attempted to verify that the <indiana-edu.com> domain name was registered with Alantron Bltd. and that Respondent was the current registrant of the domain name. Alantron Bltd., however, did not respond to multiple contact attempts from the National Arbitration Forum. The National Arbitration Forum then contacted ICANN regarding Alantron Bltd.’s lack of response to the verification request, and notified ICANN that it would be proceeding without verification. The National Arbitration Forum commenced the case on March 5, 2009.
On March 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 25, 2009 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed <James A Crary 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 <indiana-edu.com> domain name is confusingly similar to Complainant’s INDIANA.EDU mark.
2. Respondent does not have any rights or legitimate interests in the <indiana-edu.com> domain name.
3. Respondent registered and used the <indiana-edu.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the disputed <indiana-edu.com> domain name on November 13, 2008. The disputed domain name resolves to a website that frames Complainant’s website without indicating the source of the resolving website. Respondent has submitted e-mails to third parties misrepresenting that Complainant’s website was switching from the <indiana.edu> domain name to the disputed <indiana-edu.com> domain name.
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 need not assert a trademark registration with a
regulatory entity such as the United States Patent and Trademark Office
(“USPTO”) in order to demonstrate its rights in the INDIANA.EDU mark. Instead, Complainant may assert evidence of
its common law rights in the mark under Policy ¶ 4(a)(i)
through a showing of sufficient secondary meaning. See
Complainant asserts it has been the owner and operator of the <indiana.edu> domain name since 1986, and that it uses this domain name in connection with the facilitation of its provision of academic and sports offering and services, along with transactions such as donations. The Panel finds that Complainant has demonstrated sufficient secondary meaning in the INDIANA.EDU mark in order to gain common law rights in the mark under Policy ¶ 4(a)(i). 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).
The disputed <indiana-edu.com> domain name
contains Complainant’s INDIANA.EDU mark while replacing the period with a
hyphen and adding the generic top-level domain “.com.” The Panel finds that neither the substitution
or addition is sufficient to distinguish the disputed domain name from the
mark, and that therefore the disputed domain name is confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Because Complainant has successfully asserted a prima facie case supporting its allegations, Respondent receives the burden of demonstrating its rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also 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).
There is no evidence within the record to suggest that Respondent is commonly known by the disputed domain name. The registrant of record is listed as “Linh Wang” in the WHOIS domain name registration information. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The disputed domain name has been used to frame Complainant’s website within Respondent’s resolving website. In addition, Respondent has submitted e-mails misrepresenting that the disputed domain name would become Complainant’s new location for its website. The Panel presumes Respondent has some monetary goal in mind when conducting this activity that is not unlike an attempt to pass itself off as Complainant. The Panel finds that this fraudulent and misrepresentation demonstrates that Respondent has clearly failed to create either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names); see also 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 Policy ¶¶ 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 Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent has created a likelihood of confusion as to the source and affiliation of the disputed domain name and resolving website with respect to Complainant’s operations. Respondent presumably has engaged such activity for some commercial gain, and the subsequent use of the disputed domain name to misrepresent that it soon will be the source for Complainant’s website provides substantial evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. 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).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indiana-edu.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: April 8, 2009
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