NATIONAL ARBITRATION FORUM

 

DECISION

 

Southern California University for Professional Studies, Inc. d/b/a California Southern University v. Kooi Lan Wong

Claim Number: FA1007001333181

 

PARTIES

Complainant is Southern California University for Professional Studies, Inc. d/b/a California Southern University (“Complainant”), represented by Michelle Hon Donovan, of Duane Morris, LLP, California, USA.  Respondent is Kooi Lan Wong (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <scuglobal-edu.us>, registered with NAMESDIRECT.COM, INC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his or knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 30, 2010; the Forum received a hard copy of the Complaint on July 1, 2010.

 

On July 1, 2010, NAMESDIRECT.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <scuglobal-edu.us> domain name is registered with NAMESDIRECT.COM, INC. and that Respondent is the current registrant of the name.  NAMESDIRECT.COM, INC. has verified that Respondent is bound by the NAMESDIRECT.COM, INC. registration agreement and has thereby 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 July 13, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 2, 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 August 10, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.      Respondent’s <scuglobal-edu.us> domain name is confusingly similar to Complainant’s SCU mark.

 

2.      Respondent does not have any rights or legitimate interests in the <scuglobal-edu.us> domain name.

 

3.      Respondent registered and used the <scuglobal-edu.us> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Southern California University for Professional Studies, Inc. d/b/a California Southern University, began operation in 1978 offering educational services online and through traditional correspondence courses.  Complainant utilizes its SCU mark to market its educational services.  Complainant owns the <scups.net> and <scups.us> domain names. 

 

Respondent, Kooi Lan Wong, registered the <scuglobal-edu.us> domain name on September 18, 2009.  The disputed domain name resolves to a website that attempts to pass itself off as Complainant’s official website from which Respondent attempts to sell counterfeit versions of Complainant’s education degrees. 

 

Respondent has been a respondent in previous UDRP proceedings involving Complainant, during which the disputed domain names were transferred from Respondent to Complainant.  See Southern California University for Professional Studies, Inc. v. Kooi Lan Wan, FA 1183169 (Nat. Arb. Forum June 18, 2008); see also Southern California University for Professional Studies, Inc. v. Kooi Lan Wan, FA 1258605 (Nat. Arb. Forum June 9, 2009).

 

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.”

 

In view of 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 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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.

 

Identical and/or Confusingly Similar

 

Complainant does not allege to own a trademark registration with a federal trademark authority for its SCU mark under Policy ¶ 4(a)(i).  The Panel finds a trademark registration is not the only way Complainant may prove rights in its mark under Policy ¶ 4(a)(i).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under UDRP ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that UDRP ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

 

Complainant asserts common law rights in its SCU mark.  Complainant alleges that it began operation in 1979 and provides educational services under the mark.  Complainant contends that since 1979 it has offered online and traditional correspondence education services.  Complainant issues its degrees under its SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark, which Complainant’s SCU mark is an abbreviation of.  Complainant alleges that it has thirty years of alumni that identify Complainant with Complainant’s SCU mark.  The Panel finds Complainant has demonstrated that it has continuously used its SCU mark and that the mark has developed secondary meaning.  Thus, the Panel finds Complainant has established rights in its SCU 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).

 

Complainant claims that Respondent’s <scuglobal-edu.us> domain name is confusingly similar to Complainant’s SCU mark.  The disputed domain name adds the generic term “global,” a hyphen, the descriptive abbreviation “edu,” which references Complainant’s education services, and the country-code top-level domain (“ccTLD”) “.us” to Complainant’s mark.  The Panel finds the additions of a generic term, a hyphen, a descriptive term, and a ccTLD all fail to sufficiently distinguish the disputed domain name from Complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Dollar Fin. Group, Inc. v. Advanced Legal Sys., Inc., FA 95102 (Nat. Arb. Forum Aug. 14, 2000) (finding that the domain name <loan-mart.com> is confusingly similar to the complainant’s mark); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  Thus, the Panel concludes that Respondent’s <scuglobal-edu.us> domain name is confusingly similar to Complainant’s SCU mark under Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <scuglobal-edu.us> domain name.  The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations.  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the 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.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <scuglobal-edu.us> domain name.  Therefore the Panel finds that Respondent does not have rights and legitimate interests 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 Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because 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)).

 

Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <scuglobal-edu.us> domain name.  Complainant asserts that Respondent is not authorized to use the <scuglobal-edu.us> domain name.  The WHOIS information identifies Respondent as “Kooi Lan Wong.”  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <scuglobal-edu.us> domain name pursuant to Policy ¶ 4(c)(iii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also 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).

 

Complainant alleges that Respondent is attempting to pass off the website resolving from the <scuglobal-edu.us> domain name as Complainant’s official website.  Complainant asserts that the website contains Complainant’s SCU and SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark.  Complainant further contends that Respondent attempts to pass itself off as Complainant in order to sell “fake” degrees to Internet users.  The Panel finds Respondent’s use of the <scuglobal-edu.us> domain name for this purpose does not constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iv).  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 Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i).”).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has been a respondent in previous UDRP proceedings involving Complainant, during which the disputed domain names were transferred from Respondent to Complainant.  See Southern California University for Professional Studies, Inc. v. Kooi Lan Wan, FA 1183169 (Nat. Arb. Forum June 18, 2008); see also Southern California University for Professional Studies, Inc. v. Kooi Lan Wan, FA 1258605 (Nat. Arb. Forum June 9, 2009).  The Panel finds these prior UDRP decisions to be evidence of Respondent’s bad faith registration and use of the <scuglobal-edu.us> domain name pursuant to Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another [UDRP] proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Respondent uses the <scuglobal-edu.us> domain name to resolve to a website that is similar to Complainant’s official website.  Respondent sells “fake” degrees to Internet users that access the resolving website.  Internet users interested in Complainant’s educational services may access the resolving website due to Respondent’s use of the confusingly similar disputed domain name and purchase Respondent’s “fake” degree instead of Complainant’s educational services.  The Panel finds Respondent’s use of the disputed domain name disrupts Complainant’s educational service business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); 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 website resolving from the <scuglobal-edu.us> domain name is nearly identical to Complainant’s official website.  Respondent extensively uses Complainant’s marks on the website and attempts to sell “fake” degrees that relate to Complainant’s educational services.  Internet users accessing the website will likely become confused as to Complainant’s sponsorship of the disputed domain name and resolving website.  The Panel finds Respondent’s attempt to profit from that confusion through the sale of “fake” degrees constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).

 

As previously determined, Respondent is attempting to pass itself off as Complainant.  The Panel finds Respondent’s use of the confusingly similar <scuglobal-edu.us> domain name to attempt to pass itself off as Complainant constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

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 <scuglobal-edu.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated: August 16, 2010

 

 

 

 

 

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