West Coast University, Inc. v. John Bonnic and West Coast Union Education
Claim Number: FA1003001310635
Complainant is West Coast University, Inc. (“Complainant”), represented by Michelle
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <westcoastuniversity.info> and <wcuedu.info>, registered with Tucows, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2010.
On March 1, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <westcoastuniversity.info> and <wcuedu.info> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 March 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2010 by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@westcoastuniversity.info and postmaster@wcuedu.info. Also on March 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s
<westcoastuniversity.info> and <wcuedu.info>
domain names are confusingly similar to Complainant’s
2. Respondent does not have any rights or legitimate interests in the <westcoastuniversity.info> and <wcuedu.info> domain names.
3. Respondent registered and used the <westcoastuniversity.info> and <wcuedu.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, West Coast
University, Inc., operates an educational institution that has been under its
control since 2000. Prior to Complainant’s
purchase,
Respondent, John Bonnic and
West Coast Union Education, registered the <westcoastuniversity.info> and <wcuedu.info> domain names on April 24, 2007. Both of the disputed domain names resolve to
similar fraudulent phishing websites that mimic Complainant’s websites.
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 owns trademark registrations with the USPTO for
the
Furthermore, the
Panel finds that Complainant has common law rights in the
Complainant asserts
that Respondent’s disputed domain names <westcoastuniversity.info>
is confusingly similar to Complainant’s
Complainant contends Respondent’s disputed domain name <wcuedu.info> incorporates Complainant’s WCU mark, combined with the generic abbreviation “edu,” which stands for “education,” and the gTLD “.info.” The Panel finds these alterations are not sufficient to prevent a finding of confusing similarity under Policy ¶ 4(a)(i). Therefore, the Panel finds Respondent’s <wcuedu.info> domain name is confusingly similar to Complainant’s WCU mark. See Am. Int’l Group, Inc., supra; see also Space Imaging LLC, supra; see also Kohler Co., supra.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names. Upon making such a showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from whom no response was received. See 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 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.”); see also 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).”). Although Respondent did not allege that it has rights or legitimate interests in the disputed domain names, the Panel elects to examine the record under Policy ¶ 4(c).
The WHOIS information for the <westcoastuniversity.info> and <wcuedu.info> domain names lists “John
Bonnic and West Coast Union Education,” which seems to suggest that Respondent
may be commonly known by the disputed domain names. However, Respondent has not presented any
evidence to show that Policy ¶ 4(c)(ii) applies in this case. Therefore, the Panel finds that Respondent is
not commonly known by the <westcoastuniversity.info>
and <wcuedu.info> domain names
under Policy ¶ 4(c)(ii). See 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.”); see
also Yahoo! Inc. v. Dough,
FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS
information for the <yasexhoo.com> domain name states that the registrant
is YASEXHOO . . . this alone is insufficient to show that Respondent is
commonly known by the domain name.”).
Respondent’s <westcoastuniversity.info> and <wcuedu.info> domain names resolve to similar websites that mimic Complainant’s websites and attempt to obtain Internet users’ private information. The Panel finds that Respondent has engaged in phishing, which does not represent 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 HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Furthermore, the Panel finds that Respondent’s mimicking use
of the disputed domain names is an attempt by Respondent to pass itself as
Complainant, which is further evidence that Respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). 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 Kmart of
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Since Respondent registered the <westcoastuniversity.info> and <wcuedu.info> domain names on April 24, 2007, the disputed domain names resolve to similar fraudulent phishing websites that mimic Complainant’s websites. The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business. The Panel further finds that such a disruption constitutes bad faith registration and use pursuant to 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 S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Respondent’s confusingly similar domain names siphons
Internet users seeking Complainant’s business to corresponding websites that
blatantly attempts to imitate Complainant and persuade these Internet users to
disclose their private information.
Respondent likely seeks to obtain such information for fraudulent
purposes, calculated to result in monetary gain. Thus, Respondent’s registration of the
disputed domain names and subsequent use has created the prototypical
likelihood of confusion as to the source, endorsement, and affiliation of the
disputed domain name and corresponding website.
Ordinarily, the creation of this confusion is manifested in an attempt
to capitalize off of a trademark holder’s goodwill, for the financial benefit
of displaying advertisements or selling similar products. However, Respondent’s activities of confusion
constitute sheer deception, with the sole purpose of stealing customer
information. Therefore, the Panel finds
that Respondent has engaged in 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 Respondent’s engagement in a phishing venture via the disputed domain
names and corresponding websites usages clearly constitute bad faith
registration and use under Policy ¶ 4(a)(iii), as it attempts to use deception
to artfully purloin the information of Complainant’s potential and actual
customers. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum
May 3, 2004) (finding that using a domain name that “is confusingly similar to
Complainant’s mark, redirects Internet users to a website that imitates
Complainant’s billing website, and is used to fraudulently acquire personal
information from Complainant’s clients” is evidence of bad faith registration
and use); see also HOPE worldwide, Ltd. v. Jin, FA
320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered
and used the domain name in bad faith because it redirected Internet users to a
website that imitated the complainant’s website and was used to fraudulently
acquire personal information from the complainant’s potential associates).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <westcoastuniversity.info> and <wcuedu.info> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: April 14, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum