Southern
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,
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
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
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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