CollegeNET, Inc. v. Coll Egnet
Claim Number: FA1201001426615
Complainant is CollegeNET, Inc. (“Complainant”), represented by Steven E. Klein of Stoel Rives LLP, Oregon, USA. Respondent is Coll Egnet (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <collegnet.com>, registered with Tucows, 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.
Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2012; the National Arbitration Forum received payment on January 25, 2012.
On January 26, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <collegnet.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 January 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2012 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@collegnet.com. Also on January 27, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <collegnet.com> domain name is confusingly similar to Complainant’s COLLEGENET mark.
2. Respondent does not have any rights or legitimate interests in the <collegnet.com> domain name.
3. Respondent registered and used the <collegnet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CollegeNET, Inc., provides college information and scholarship services for Internet users interested in going to college. Complainant also provides online application hosting and processing for colleges. Complainant provides all of its services under its COLLEGENET mark. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its COLLEGENET mark (e.g., Reg. No. 2,045,384 registered March 18, 1997).
Respondent, Coll Egnet, registered the <collegnet.com> domain name on November 10, 1998. The disputed domain name resolves to a parked website that features a search engine and hyperlinks that resolve to unrelated, third-party websites, many of which offer competing college-related services.
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 alleges that it owns rights in the COLLEGENET mark for the purposes of Policy ¶ 4(a)(i). In support of this allegation, Complainant provides the Panel with copies of its trademark registrations with the USPTO for its COLLEGENET mark (e.g., Reg. No. 2,045,384 registered March 18, 1997). The Panel reviewed the trademark registrations and determines that Complainant is the owner of valid USPTO trademark registrations for the COLLEGENET mark. While Respondent resides or operates in Poland and not in the United States, the Panel deems that, for Policy ¶ 4(a)(i) purposes, Complainant’s USPTO trademark registrations sufficiently establish Complainant’s rights in the COLLEGENET mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant claims that Respondent’s <collegnet.com> domain name is confusingly similar to Complainant’s COLLEGENET mark. Complainant contends that the disputed domain name only differs from Complainant’s mark by the removal of the letter “e” and the addition of the generic top-level domain (“gTLD”) “.com.” After comparing Complainant’s mark and the <collegnet.com> domain name, the Panel agrees with Complainant’s descriptions of the differences between the two, and the Panel determines that these alterations to Complainant’s mark fail to adequately distinguish the disputed domain name from Complainant’s mark. 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 Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also 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.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel holds that Respondent’s <collegnet.com> domain name is confusingly similar to Complainant’s COLLEGENET mark in accordance with Policy ¶ 4(a)(i).
The Panel deems Policy ¶ 4(a)(i) satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <collegnet.com> domain name. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). 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 Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <collegnet.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). 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).
Complainant contends that Respondent is not commonly known by the <collegnet.com> domain name. Complainant argues that Respondent does not own any trademarks or service marks that are reflected in the disputed domain name. However, the WHOIS information lists “Coll Egnet” as the registrant of the <collegnet.com> domain name, which would appear to indicate that Respondent is commonly known by the disputed domain name. Nevertheless, Respondent did not provide the Panel with any further evidence or arguments that it is commonly known by the disputed domain name. After examining the record, the Panel concludes that Respondent is not commonly known by the <collegnet.com> domain name under Policy ¶ 4(c)(ii) because of the evidence presented by Complainant and Respondent’s failure to present any supporting evidence. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Complainant argues that Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <collegnet.com> domain name. Complainant claims that Respondent’s disputed domain name resolves to a website hosting a commercial search engine and unaffiliated, third-party hyperlinks, many of which resolve to the websites of Complainant’s competitors offering competing college-related services. Complainant provides the Panel with screenshot evidence of the resolving website, and the Panel determines that Complainant’s descriptions are accurate. Thus, the Panel finds that Respondent’s use of the <collegnet.com> domain name to host a search engine and competing hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <collegnet.com> domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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 also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant further avers that Respondent lacks rights and legitimate interests in the <collegnet.com> domain name because Respondent’s registration and use of the disputed domain name demonstrates typosquatting. Complainant notes that the disputed domain name differs from Complainant’s mark by the removal of one letter, which is a typing mistake that Internet users may make when attempting to reach Complainant on the Internet. The Panel determines that Respondent is attempting to take advantage of Internet users’ typing mistakes, which is sufficient evidence that Respondent is guilty of typosquatting and lacks rights and legitimate interests in the <collegnet.com> domain name under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel deems Policy ¶ 4(a)(ii) satisfied.
Complainant claims that Respondent registered and uses the <collegnet.com> domain name in bad faith because Respondent registered the disputed domain name as part of a pattern of bad faith registration and use. Complainant presents the Panel with previous UDRP cases. However, the Panel finds that these previous cases do not specifically name Respondent as the respondent in the cases. Complainant alleges that the e-mail addresses in the WHOIS information for those prior cases are the same as the email address listed for Respondent in this case. Complainant also contends that the previous UDRP cases involved misspelled domain names resolving to websites hosting competing hyperlinks, similar to the case at hand. Nevertheless, the Panel determines that such arguments would require the Panel to make determinations about Respondent’s identity that go beyond the scope of the current UDRP dispute and the Panel elects to not make such a determination. Therefore, the Panel does not find Policy ¶ 4(b)(ii) bad faith registration and use of the <collegnet.com> domain name.
Complainant asserts that Respondent registered and uses the <collegnet.com> domain name in bad faith because Respondent is attempting to divert Internet users that are attempting to reach Complainant’s website to Complainant’s competitors’ websites, which disrupts Complainant’s business. Complainant claims that Respondent’s registration of the confusingly similar disputed domain name and use of the domain name to host competing hyperlinks cause this diversion. The Panel agrees and holds that Respondent registered and uses the <collegnet.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
According to Complainant, Respondent also registered and uses the <collegnet.com> domain name in bad faith because Respondent attempts to create confusion among Internet users as to Complainant’s affiliation with the domain name for Respondent’s financial benefit. Complainant asserts that Respondent profits from its hosting of the competing hyperlinks by receiving click-though fees. Complainant contends that Respondent registered the <collegnet.com> domain name due to the domain name’s confusing similarity with Complainant’s COLLEGENET mark and the resulting inference that the domain name is associated with Complainant. After reviewing the screenshots of the resolving website, the Panel concurs with Complainant and finds Respondent guilty of Policy ¶ 4(b)(iv) bad faith registration and use of the <collegnet.com> domain name. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
As the Panel previously determined Respondent’s registration and use of the <collegnet.com> domain name constitutes typosquatting, the Panel further concludes that Respondent’s typosquatting behavior demonstrates Respondent’s Policy ¶ 4(a)(iii) bad faith registration and use. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the COLLEGENET mark. Complainant argues that Respondent's offering of hyperlinks to Complainant’s competitors at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel deems Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <collegnet.com> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: February 27, 2012
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