Regents of the University of Michigan v. Elite Options Inc
Claim Number: FA1107001400516
Complainant is Regents of the University of Michigan (“Complainant”), represented by Paul R. Fransway of Butzel Long, P.C., Michigan, USA. Respondent is Elite Options Inc (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <surveyclaim.com> and <surveyresearchcenter.com>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2011; the National Arbitration Forum received payment on July 27, 2011.
On July 29, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <surveyclaim.com> and <surveyresearchcenter.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 August 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2011 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@surveyclaim.com and postmaster@surveyresearchcenter.com. Also on August 3, 2011, 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 August 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 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 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 <surveyclaim.com> and <surveyresearchcenter.com> domain names are confusingly similar to Complainant’s SURVEY RESEARCH CENTER mark.
2. Respondent does not have any rights or legitimate interests in the <surveyclaim.com> and <surveyresearchcenter.com> domain names.
3. Respondent registered and used the <surveyclaim.com> and <surveyresearchcenter.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Regents of the University of Michigan, was founded in 1817 and established its SURVEY RESEARCH CENTER in 1946 to engage in interdisciplinary research in social sciences. Complainant’s SURVEY RESEARCH is the largest social science research center in the world and Complainant’s Panel Study of Income Dynamics is the only social science project included in the National Science Foundations listing of the fifty top projects in the foundation’s history.
Respondent, Elite Options Inc, registered the <surveyclaim.com> and <surveyresearchcenter.com> domain names no earlier than January 24, 2007. The <surveyclaim.com> domain name resolves to a website that appears to be associated with Complainant, but actually acts as a phishing website. Complainant does not present any evidence or make any allegations as to the use of the <surveyresearchcenter.com> domain name.
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 does not provide any evidence of national trademark registrations for its SURVEY RESEARCH CENTER mark. Past panels have determined that a complainant does not need a trademark registration to establish rights under Policy ¶ 4(a)(i) as long as the complainant can demonstrate that it has common law rights in its mark by showing the mark has acquired secondary meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also 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 Policy ¶ 4(a)(i)). The Panel finds accordingly.
Complainant claims that it owns rights in the SURVEY RESEARCH CENTER mark. According to Complainant, Complainant began operating its SURVEY RESEARCH CENTER in 1946 and has continuously used both the actual SURVEY RESEARCH CENTER and the mark to describe the center since that time. See Complainant’s Annex 2. Complainant asserts that the SURVEY RESEARCH CENTER researches retirement, aging, health disparities, poverty, teacher effectiveness, substance abuse, fertility and families, the effectiveness of interventions on drug use, and the role of social networks over the life course. Complainant provides evidence of long running surveys that the SURVEY RESEARCH CENTER has conducted, such as the Survey of Consumer Attitudes, the Panel Study of Income Dynamics, the Monitoring the Future Study, and the Health and Retirement Study. Complainant’s Panel Study of Income Dynamics is the only social science project included in the National Science Foundation’s listing of the fifty top research projects in the National Science Foundation’s history. Based on Complainant’s extensive and continuous use of the SURVEY RESEARCH CENTER mark, the Panel concludes that Complainant has demonstrated common law rights in its mark under Policy ¶ 4(a)(i). See 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); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
The <surveyresearchcenter.com> domain name contains Complainant’s entire SURVEY RESEARCH CENTER mark, only removing the spaces separating the terms of the mark and adding the generic top-level domain (“gTLD”) “.com.” As spaces are impermissible in a domain name and a top-level domain name is required, the Panel determines that the <surveyresearchcenter.com> domain name is identical to Complainant’s SURVEY RESEARCH CENTER mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant alleges that the <surveyclaim.com> domain name is also identical or confusingly similar to Complainant’s SURVEY RESEARCH CENTER mark. While the disputed domain name does contain one word of Complainant’s mark, “SURVEY,” the disputed domain name attaches a generic term to that portion of Complainant’s mark. The end result is a disputed domain name that only shares a single word with Complainant’s SURVEY RESEARCH CENTER mark. While Respondent does present substantial evidence as to Respondent’s use of the <surveyclaim.com> domain name and that use would likely create confusion as to Complainant’s affiliation with the disputed domain name, Policy ¶ 4(a)(i) only examines whether the domain name itself is confusingly similar to a mark a complainant owns rights in. As small differences matter when analyzing whether a disputed domain name is confusingly similar to a mark, the Panel determines that Respondent’s <surveyclaim.com> domain name is neither identical nor confusingly similar to Complainant’s SURVEY RESEARCH CENTER mark under Policy ¶ 4(a)(i). See Dollar Fin. Group, Inc. v. Oakridge, FA 94977 (Nat. Arb. Forum July 17, 2000) (finding that the domain names, <tillpaydayloan.com>, <tillpaydayloans.com>, <untilpaydayloan.com>, and <untilpaydayloans.com> are not identical or confusingly similar to the complainant’s CASH ‘TIL PAYDAY and CASH ‘TIL PAYDAY LOANS trademarks and service marks); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.").
The Panel holds that Complainant has satisfied Policy ¶ 4(a)(i) in regards to the <surveyresearchcenter.com> domain name. The Panel finds Policy ¶ 4(a)(i) has not been satisfied for the <surveyclaim.com> domain name.
Because of the reasons the Panel gives in its discussion of Policy ¶ 4(a)(i) regarding the <surveyclaim.com> domain name, the Panel declines to analyze Policy ¶ 4(a)(ii) as it pertains to that domain name. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Complainant claims that Respondent lacks rights and legitimate interests in the <surveyresearchcenter.com> domain name. Policy ¶ 4(a)(ii) places the initial burden of showing a prima facie case on Complainant. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also 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 Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). In this case, Complainant has not provided any screen shots of the website resolving from the <surveyresearchcenter.com> domain name. Complainant has also failed to make arguments in its Complaint as to Respondent’s use of the disputed domain name and how that use relates to the Policy. While Complainant provides extensive evidence of the website resolving from the <surveyclaim.com> domain name , this use cannot be imputed to Respondent’s <surveyresearchcenter.com> domain name . For these reasons, the Panel determines that Complainant has not demonstrated a prima facie case and declines to transfer the <surveyresearchcenter.com> domain name under Policy ¶ 4(a)(ii). See Claessens Prod. Consultants BV v. Claessens Int’l Ltd., FA 238656 (Nat. Arb. Forum Apr. 23, 2004) (finding that Complainant failed to meet its burden pursuant to Policy ¶ 4(a)(ii) where Complainant neglected to state how Respondent used the disputed domain name in the Complaint); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
The Panel finds Policy ¶ 4(a)(ii) has not been satisfied.
Based on the Panel’s finding that Complainant has not satisfied Policy ¶ 4(a)(i) regarding the <surveyclaim.com> domain name and the Panel’s finding that Complainant has not satisfied Policy ¶ 4(a)(ii) regarding the <surveyresearchcenter.com> domain name, the Panel has declined to analyze Policy ¶ 4(a)(iii). See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED without prejudice.
Accordingly, it is Ordered that the <surveyclaim.com> and <surveyresearchcenter.com> domain names REMAIN WITH Respondent.
James A. Carmody, Esq., Panelist
Dated: September 1, 2011
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