CollegeNET, Inc. v. Gioacchino Zerbo
Claim Number: FA0906001269200
Complainant is CollegeNET, Inc. (“Complainant”), represented by Michael
P. Matesky, of Klarquist Sparkman, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <collegenet.org>, registered with Fabulous.com Pty Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2009.
On June 22, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <collegenet.org> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 June 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 13, 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 postmaster@collegenet.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <collegenet.org> domain name is identical to Complainant’s COLLEGENET mark.
2. Respondent does not have any rights or legitimate interests in the <collegenet.org> domain name.
3. Respondent registered and used the <collegenet.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CollegeNET, Inc., provides college information and scholarship services aimed towards college-bound students under the COLLEGENET mark. Complainant has registered its COLLEGENET mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,045,384 issued March 18, 1997).
Respondent registered the <collegenet.org> domain name on March 21, 2002. The disputed domain name resolves to a website that displays links to Complainant’s direct competitors.
Furthermore, Respondent has been the respondent in prior UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those cases. See, e.g., GMAC Mortgage, LLC v. Zerbo, FA 1220824 (Nat. Arb. Forum Oct. 21, 2008); see also Recreational Equip. v. Zerbo, FA 1220450 (Nat. Arb. Forum Sept. 26, 2008).
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.
The Panel finds that Complainant has sufficient rights in
the COLLEGENET mark through its registration of the mark with the USPTO under
Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v.
Bonds, FA 873143 (Nat. Arb.
Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see
also
Complainant contends that the <collegenet.org> domain name is identical to the
COLLEGENET mark despite the addition of the generic top-level domain
“.org.” The Panel agrees and finds that
the disputed domain name is indeed identical to the mark under Policy ¶ 4(a)(i). See
Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that
the domain name <microsoft.org> is identical to the complainant’s mark); see also Koninklijke Philips Elecs. NV v.
Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name
<philips.org> is identical to the complainant’s PHILIPS mark).
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. Once Complainant has set forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of [UDRP] paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent offers no evidence to suggest that it is commonly known by the disputed domain name. Moreover, the WHOIS domain name registration information provides no contrary information, as Respondent is listed as “Gioacchino Zerbo.” Finally, there is no evidence that Respondent ever obtained authorization to use Complainant’s mark in a domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); 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.”).
Respondent is using the disputed domain name to resolve to a
website that includes click-through links to Complainant’s competitors. The Panel presumes this activity was
undertaken to acquire commercial benefit via click-through referral fees. The Panel finds that this does not constitute
a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007)
(holding that the operation of a pay-per-click website at a confusingly similar
domain name was not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii)); see
also Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or services
or a legitimate noncommercial or fair use, regardless of whether or not the
links resolve to competing or unrelated websites or if the respondent is itself
commercially profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant claims that Respondent has been the respondent
in prior UDRP proceedings in which the disputed domain names were transferred
from Respondent to the respective complainants in those cases. See,
e.g., GMAC Mortgage, LLC v. Zerbo,
FA 1220824 (Nat. Arb. Forum Oct. 21, 2008); see
also Recreational Equip. v. Zerbo, FA 1220450 (Nat. Arb. Forum Sept. 26,
2008). The Panel finds that Respondent
has engaged in a pattern of bad faith registration and use under Policy ¶
4(b)(ii). See Westcoast Contempo
Fashions Ltd. v.
The Panel finds that Respondent’s use of the disputed domain
name and corresponding website to host competitive third-party advertisements
constitutes disruption of Complainant’s business, and therefore evidences
Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See
Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining
“competitor” as “one who acts in opposition to another and the context does not
imply or demand any restricted meaning such as commercial or business
competitor”); see also DatingDirect.com Ltd. v. Aston,
FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is
appropriating Complainant’s mark to divert Complainant’s customers to
Respondent’s competing business. The
Panel finds this diversion is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).”).
Complainant claims that Respondent has created a likelihood
of confusion as to Complainant’s association or sponsorship of the disputed
domain names for commercial gain due to the confusingly similar disputed domain
name and corresponding website. The
Panel agrees, and finds that Respondent has engaged in bad faith registration
and use under Policy ¶ 4(b)(iv). See
Allianz of Am. Corp. v. Bond,
FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration
and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet
users searching for the complainant to its own website and likely profiting); see also Asbury Auto. Group, Inc. v.
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 <collegenet.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 28, 2009
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