national arbitration forum

 

DECISION

 

Eduventures, Inc. v. kOOlstudios / Deepak Koolwal

Claim Number: FA1009001345728

 

PARTIES

Complainant is Eduventures, Inc. ("Complainant"), represented by Peter J. Caruso of Prince, Lobel, Glovsky & Tye LLP, Massachusetts, USA.  Respondent is kOOlstudios / Deepak Koolwal ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <eduventureconsulting.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.

 

PANEL

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

 

G. Gervaise Davis III as Panelist, Houston Putnam Lowry, Chartered Arbitrator, as Panelist, and Sandra J. Franklin as Panelist and Panel Chairperson.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2010; the National Arbitration Forum received payment on September 10, 2010.

 

On September 12, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <eduventureconsulting.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name.  Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@eduventureconsulting.com.  Also on September 17, 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 October 28, 2010, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed G. Gervaise Davis III as Panelist, Houston Putnam Lowry, Chartered Arbitrator, as Panelist, and Sandra J. Franklin as Panelist and Panel Chairperson.

 

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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <eduventureconsulting.com> domain name is confusingly similar to Complainant’s EDUVENTURES mark.

 

2.      Respondent does not have any rights or legitimate interests in the <eduventureconsulting.com> domain name.

 

3.      Respondent registered and used the <eduventureconsulting.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Eduventures, Inc. provides consulting services to colleges and universities. Complainant owns a trademark registration for the EDUVENTURES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,924,785 issued February 8, 2005).

 

Respondent, kOOlstudios / Deepak Koolwal, registered the <eduventureconsulting.com> domain name on December 6, 2009.  The disputed domain name resolves to a website offering competing consulting services to higher education institutions.

 

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 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.

 

Identical and/or Confusingly Similar

 

The Panel finds that a USPTO trademark registration serves as conclusive evidence of Complainant’s rights in the EDUVENTURES mark for the purposes of Policy ¶ 4(a)(i), regardless of the jurisdiction where Respondent lives or operates.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).

 

Respondent’s <eduventureconsulting.com> domain name is confusingly similar to Complainant’s EDUVENTURES mark because the disputed domain name only eliminates the letter “s,” adds the descriptive term “consulting,” and attaches the generic top-level domain (“gTLD”) “.com.”  The Panel finds that deleting a single letter from Complainant’s mark does not distinguish the disputed domain name.  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark).  The Panel also finds that the addition of a descriptive word fails to differentiate the disputed domain name from Complainant’s mark.  See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.  The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).  Finally, the Panel finds that the presence of a gTLD is not a factor in the Policy ¶ 4(a)(i) analysis.  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Therefore, the Panel finds that Respondent’s <eduventureconsulting.com> domain name is confusingly similar to Complainant’s EDUVENTURES mark according to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent in support of Complainant’s allegation that Respondent lacks rights and legitimate interests in the disputed domain name.  Since the Panel finds that Complainant has presented a sufficient prima facie case, the burden now shifts to Respondent to counter Complainant’s assertion and demonstrate rights and legitimate interests. As Respondent has failed to respond to the Complaint, however, Respondent has not satisfied this burden.  The Panel accordingly infers that Respondent lacks rights and legitimate interests in the disputed domain name and that Complainant’s allegations against Respondent are true.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).  However, the Panel will examine the record in light of the Policy ¶ 4(c) factors in order to determine whether Respondent possesses rights and legitimate interests in the disputed domain name.

 

Complainant asserts that it has not authorized Respondent to use its EDUVENTURES mark. The WHOIS information for the <eduventureconsulting.com> domain name lists the registrant as “kOOlstudios / Deepak Koolwal,” which indicates no association between Respondent and the disputed domain name.  The Panel therefore finds that Respondent is not commonly known by the <eduventureconsulting.com> domain name and accordingly lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).  See 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); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Complainant alleges that Respondent uses the <eduventureconsulting.com> domain name to redirect Internet users to the commercial website of Respondent’s own competing consulting business.  Complainant argues, and the Panel agrees, that appropriating Complainant’s mark in this manner in order to commercially benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).

 

Respondent has “unofficially” suggested another person may be the true owner of the domain name.  That person was not further identified.  The Panel is entitled to rely upon the registration of the domain name to properly disclose the owner of the domain name.  Otherwise a respondent could assert the rights of a third party that were not evident from the written record, making it very difficult to have an effective enforcement policy.

 

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

 

Registration and Use in Bad Faith

 

Respondent is using the <eduventureconsulting.com> domain name in order to attract Internet users seeking Complainant and create a likelihood of confusion.  As Respondent offers the same or similar services as Complainant, Respondent likely hopes that Internet users will fail to discern the lack of affiliation between Respondent’s website and Complainant and become a customer of Respondent instead of Complainant.  The Panel finds that Respondent’s efforts to profit at Complainant’s expense and through the use of Complainant’s wrongly appropriated mark indicate bad faith registration and use under Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).

 

Respondent registered the <eduventureconsulting.com> domain name in order to disrupt Complainant’s business and facilitate Respondent’s competition with Complainant.  The Panel finds that Respondent’s activities are also evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site.  The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

 

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

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <eduventureconsulting.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

G. Gervaise Davis III, Panelist

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

 

Sandra J. Franklin, Panelist and Panel Chairperson

 

Dated:  November 3, 2010

 

 

 

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