NATIONAL ARBITRATION FORUM

 

DECISION

 

West Coast University, Inc. v. John Bonnic a/k/a West Coast Union Education and West Coast University

Claim Number: FA1003001311691

 

PARTIES

Complainant is West Coast University, Inc., (“Complainant”) represented by Michelle Hon Donovan, California, USA.  Respondent is John Bonnic a/k/a West Coast Union Education and West Coast University, Washington, USA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wcuedu.us>, registered with Tucows, Inc., and <wcuwebsite.us>, registered with eNom, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically March 5, 2010; the Forum received a hard copy of the Complaint March 8, 2010.

 

On March 9, 2010 eNom, Inc., confirmed by e-mail to the Forum that the <wcuwebsite.us> domain name is registered with eNom, Inc., and that Resondent is the current regisrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby has 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 March 12, 2010 Tucows, Inc. confirmed by e-mail to the Forum that the <wcuedu.us> domain name is registred with Tucows, Inc., and that Respondent is the current registrant of the name.  Tucows, Inc., verified that Respondent is bound by the Tucows, Inc. registration agreement and thereby has 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 March 19, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 2010, 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 April 14, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum 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 names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in the Complaint:

 

1.      The domain names that Respondent registered, <wcuedu.us> and <wcuwebsite.us>, are confusingly similar to Complainant’s WEST COAST UNIVERSITY mark.

 

2.      Respondent has no rights or legitimate interests in the <wcuedu.us> and <wcuwebsite.us> domain names.

 

3.      Respondent registered and used the <wcuedu.us> and <wcuwebsite.us> domain names in bad faith.

 

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

 

FINDINGS

Complainant, West Coast University, Inc., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the WEST COAST UNIVERSITY mark (Reg. No. 3,232,786 issued on April 24, 2007) filed January 13, 2006.  Complainant’s company, West Coast University, Inc. has been operating as such since 1909.  Complainant purchased the West Coast University in 1997 and subsequently reopened it in 2000.  Since that time Complainant has used its WEST COAST UNIVERSITY mark to provide post-secondary education services in California, USA.

 

Respondent registered the <wcuedu.us> domain name December 24, 2008, and the <wcuwebsite.us> domain name November 6, 2006.  Respondent’s disputed domain names resolve to what appears to be a website for Complainant, with links to information about the school, financial aid, tuition rates and other school related links.  Respondent’s disputed domain names appear to be affiliated with Complainant’s education institution but are not.

 

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.”

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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) 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.

 

Preliminary Issue: Multiple Respondents

 

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends that Respondents are effectively controlling the disputed domain names as one entity.  Complainant notes that the WHOIS information lists both of the domain name registrants as having virtually the same mailing address, as well as having the same contact phone number, and e-mail address.  Complainant further notes that while the registrant of the <wcuwebsite.us> domain name is listed as WEST COAST UNIVERSITY, that “John Bonnic” is listed as the billing contact for that domain name.  Complainant maintains that the registrants of the disputed domain names are the same entity and that Respondent, John Bonnic, is operating both of the disputed domain names under different registrant names.

 

The Panel finds that Complainant presented sufficient evidence that the disputed domain names are controlled by the same entity and thus the Panel chooses to proceed with the instant proceedings.

 

Identical to and/or Confusingly Similar

 

The Panel finds that Complainant established its rights in the WEST COAST UNIVERSITY mark pursuant to Policy ¶ 4(a)(i) through its trademark registration with the USPTO (Reg. No. 3,232,786 issued on April 24, 2007).  The Panel also notes that under Policy ¶ 4(a)(i), the applicable date for rights in the mark begins on the day of filing of a trademark registration, which in this case was January 13, 2006.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).

 

Complainant argues that the <wcuedu.us> and <wcuwebsite.us> domain names are confusingly similar to its WEST COAST UNIVERSITY mark.  Complainant notes that both of the disputed domain names contain abbreviations for its mark, in addition to the descriptive term “edu,” which is the common abbreviation of the term “education,” or the generic term “website.”  Complainant further contends that addition of the country-code top-level domain (“ccTLD”) “.us” does nothing to distinguish the disputed domain names from Complainant’s mark. 

 

The Panel finds that the <wcuedu.us> and <wcuwebsite.us> domain names are confusingly similar to Complainant’s WEST COAST UNIVERSITY mark under Policy ¶ 4(a)(i).  See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under UDRP ¶ 4(a)(i)); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).      

       

Rights to or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.  Once Complainant makes a prima facie case to support its allegations, the burden of proof shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Based on the arguments made in the Complaint, the Panel finds that Complainant made a prima facie case to support its contentions and that Respondent failed to submit a Response that would counter those contentions.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). 

 

Nevertheless, this Panel still examines the record to determine if evidence among the proof suggests that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).

 

No evidence in the record indicates that Respondent owns any service marks or trademarks that reflect the <wcuedu.us> and <wcuwebsite.us> domain names.  Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to 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.us> 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)).

 

Complainant also argues that Respondent is not commonly known by the disputed domain names and that Complainant has never given Respondent permission to use its WEST COAST UNIVERSITY mark.  The WHOIS information for the disputed domain names does not indicate, and Respondent does not offer any evidence to show, that Respondent is commonly known by the disputed domain names.  Therefore, the Panel finds that Respondent has not shown rights and legitimate interests in the <wcuedu.us> and <wcuwebsite.us> domain names under Policy ¶ 4(c)(iii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant further contends that Respondent is using the confusingly similar disputed domain names to obtain personal information from Internet users as well as to profit from the sale of fake degrees.  Complainant further alleges that this scam prominently features Complainant’s mark and is evidence that Respondent lacks rights and interests in the disputed domain names.  The Panel finds that Respondent’s “phishing” for personal information, while offering what appears to Internet users to be competing educational services of Complainant, is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  See 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)); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

 

Additionally, Respondent’s disputed domain names resolve to websites that display Complainant’s WEST COAST UNIVERSITY mark.  The Panel finds that Respondent is attempting to pass itself off as Complainant by imitating Complainant’s website, which is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name 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 Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to UDRP ¶ 4(a)(ii)). 

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names in issue and that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s use of the <wcuedu.us> and <wcuwebsite.us> domain names to divert Internet users to its confusingly similar website creates a disruption in Complainant’s business.  Complainant argues that Internet users seeking Complainant’s educational institution are being re-directed to Respondent’s website and that this results in a loss of enrollment for Complainant of those consumers.  The Panel finds that Respondent’s use of the disputed domain names to divert Internet users to its confusingly similar website is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”).

 

Further, Respondent is using the confusingly similar disputed domain names to intentionally attract Internet users to its website to “phish” for the Internet users’ personal information and thereby is creating a strong likelihood of confusion with Complainant’s WEST COAST UNIVERSITY mark.  The Panel presumes that Respondent profits by using such information for fraudulent purposes.  Therefore, the Panel finds that Respondent’s use of the disputed domain names is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also supra Capital One Fin. Corp. v. Howel.

 

Complainant further contends that Respondent is using the disputed domain names to pass itself off as Complainant by imitating Complainant’s official websites on Respondent’s opportunistic websites. The Panel finds that Respondent’s attempt to pass itself off as Complainant constitutes bad faith use and registration pursuant to Policy ¶ 4(a)(iii).  See 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”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).

 

The Panel finds that Respondent acted in bad faith in registering and using the disputed domain names and that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <wcuedu.us> and <wcuwebsite.us> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: April 28, 2010.

 

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