national arbitration forum

 

DECISION

 

CollegeNET, Inc. v. Apply Web Solutions

Claim Number: FA1202001428200

 

PARTIES

Complainant is CollegeNET, Inc. (“Complainant”), represented by Michael P. Matesky of Christensen O'Connor Johnson Kindness PLLC, Washington, USA.  Respondent is Apply Web Solutions (“Respondent”), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <applywebsolutions.com>, registered with Go Daddy.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2012; the National Arbitration Forum received payment on February 3, 2012.

 

On February 6, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <applywebsolutions.com> domain name is registered with Go Daddy and that Respondent is the current registrant of the name.  Go Daddy has verified that Respondent is bound by the Go Daddy 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 February 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@applywebsolutions.com.  Also on February 15, 2012, 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 March 16, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, CollegeNet, Inc., alleges that it provides technology and services relating to online data hosting, electronic forms processing, contact management, online payment processing, and other similar services to institutions nationally and internationally since 1996 . Complainant claims to hold rights in its APPLYWEB mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,110,674 registered November 4, 1997).

 

Complainant alleges that Respondent, Apply Web Solutions, registered the <applywebsolutions.com> domain name on January 21, 2007, which Complainant claims resolves to a website that advertises online “e-commerce” contractors, whose businesses are in competition with Complainant’s.

 

B. Respondent

Respondent did not submit a response.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

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."

 

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.

(4)  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.”).

 

Identical and/or Confusingly Similar

 

Complainant claims to hold the trademark registration with the USPTO for its APPLYWEB mark (Reg. No. 2,110,674 registered November 4, 1997) (See Complainan’t Exhibit A). The Panel finds that Complainant secured rights in its APPLYWEB mark under Policy ¶ 4(a)(i) by registering its mark with the USPTO. 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 Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).

 

Complainant argues that Respondent’s <applywebsolutions.com> domain name is confusingly similar to Complainant’s APPLYWEB mark. The domain name incorporates Complainant’s mark in its entirety, and adds the generic term “solutions,” as well as the generic top-level domain (“gTLD”) “.com.” In Churchill Ins. Co. v. Craven, FA 1371619 (Nat. Arb. Forum Mar. 14, 2011), the panel found that adding the generic word “solutions” to a mark renders the resulting domain name confusingly similar to that mark. Moreover, the panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) held that the gTLD “.com” is not sufficient to set apart a disputed domain name from the mark under Policy ¶ 4(a)(i). The Panel finds that the additions of a generic term and a gTLD does not suffice to differentiate it from Complainant’s mark under Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent is not commonly known by the <applywebsolutions.com> domain name, that it does not have license from Complainant to use the APPLYWEB mark in any way, and that Respondent has never been associated with Complainant’s business. The Panel finds that the WHOIS information identifies the domain name registrant as “Apply Web Solutions,” which Complainant alleges does not indicate that Respondent is commonly known by the disputed domain name. The panel in Target Brands, Inc. v. Hosting Provider Serv., FA 187396 (Nat. Arb. Forum Sept. 30, 2003) found that even though the WHOIS information listed the <targetpills.com> domain name registrant as TARGETPILLS.COM, there was no evidence to conclude that Respondent was actually or commonly known by the domain name. Additionally, in Wyndham IP Corp. v. Golden Door, FA 341231 (Nat. Arb. Forum Dec. 1, 2004) the panel determined that the respondent was not commonly known by the <goldendoor2.com> domain name even though the WHOIS information indicated that the respondent was doing business under the ‘Golden Door’ name because the resolving website included a link to the complainant. The Panel finds that even though Respondent holds itself out as “Apply Web Solutions,” no further evidence submitted supports the conclusion that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant alleges that Respondent uses the domain name as a “parking page” to link users to commercial websites for third parties whose businesses are in competition with Complainant’s business, such as business offering “ecommerce” services. The Panel finds that using the domain name to display advertisements and links to competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also 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)).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent’s <applywebsolutions.com> domain name resolves to a website that hosts hyperlinks and advertisements that resolve to the websites of Complainant’s competitors.  Complainant argues that Respondent’s attempt to divert Complainant’s customers to Complainant’s competitors is evidence of Respondent’s bad faith registration and use.  The Panel agrees and the Panel holds that Respondent registered and uses the <applywebsolutions.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See 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) ; see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant contends that Respondent had constructive and actual knowledge of Complainant’s mark at the time Respondent registered the <applywebsolutions.com> domain name.  Complainant argues that the previous owner of the disputed domain name had actual knowledge of Complainant’s mark and transferred the disputed domain name to Respondent, whose affiliate company had actual knowledge of Complainant’s mark because Complainant contacted the company prior to the transfer.  Based on this evidence, the Panel determines that Respondent had actual knowledge of Complainant’s mark and, thus, Respondent registered the <applywebsolutions.com> domain name in bad faith under Policy ¶ 4(a)(iii).  See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).; see also  Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").

 

Complainant has proven this element.

 

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 <applywebsolutions.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Karl V. Fink (Ret.), Panelist

Dated:  March 19, 2012