national arbitration forum

 

DECISION

 

Regents of the University of Michigan v. Prince Peter / vibranturre

Claim Number: FA1204001440244

 

PARTIES

Complainant is Regents of the University of Michigan (“Complainant”), represented by Paul R. Fransway of Butzel Long, P.C., Michigan, USA.  Respondent is Prince Peter / vibranturre (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <michiganross.com>, registered with Square Brothers Information Technologies Pvt Ltd.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2012; the National Arbitration Forum received payment on April 19, 2012.

 

On April 21, 2012, Square Brothers Information Technologies Pvt Ltd confirmed by e-mail to the National Arbitration Forum that the <michiganross.com> domain name is registered with Square Brothers Information Technologies Pvt Ltd and that Respondent is the current registrant of the name.  Square Brothers Information Technologies Pvt Ltd has verified that Respondent is bound by the Square Brothers Information Technologies Pvt Ltd 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 April 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@michiganross.com.  Also on April 26, 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 May 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:

 

Complainant, University of Michigan, was founded in 1817 as a subdivision of the State of Michigan. University of Michigan has at various times had federal registration of the trademarks and service marks where the term "Michigan" is a significant part of the mark, including, among others, 1380044, 1310132, 1272820, 2440222 (University of Michigan School of Business), 2712985, 2712986 and 3514992. In 2004, Complainant renamed the University of Michigan Business School the “Stephen M. Ross School of Business at the University of Michigan.”

 

Complainant holds common law trademark rights in MICHIGAN ROSS and acquired such rights by 2004.

 

Respondent’s <michiganross.com> domain name is confusingly similar to Complainant’s MICHIGAN ROSS SCHOOL OF BUSINESS mark.

 

Respondent registered the disputed domain name on July 10, 2008.

 

Respondent is not commonly known by the <michiganross.com> domain name.

 

Respondent uses the disputed domain name to commercially benefit by advertising Respondent’s business school essay consulting and drafting services.

 

Respondent’s disclaimer does not create rights or legitimate interests in the <michiganross.com> domain name.

 

Respondent is attempting to create a likelihood of confusion as to Complainant’s affiliation with the disputed domain name, from which Respondent intends to commercially benefit.

 

Respondent had actual knowledge of Complainant’s rights in the mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant demonstrates rights in itst MICHIGAN trademark by showing certificates of registration for such mark with the USPTO.  

 

Respondent registered the at-issue domain name subsequent to Complainant’s obtaining rights in its MICHIGAN mark and with actual knowledge of Complaint’s rights therein.

 

Respondent is not authorized to use Complainant’s trademark.

 

Respondent is not commonly known by the at-issue domain name.

 

Respondent does not use the at-issue domain name in connection with a bona fide business.

 

The at-issue domain name references a website which concerns and promotes Respondent’s consulting service.  The website disclaims any affiliation with Complainant. 

 

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.

 

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

Respondent’s at-issue domain name is confusingly similar to a mark in which Complainant has rights.

 

As evidenced by its multiple trademark certificates, Complainant demonstrates rights in its MICHIGAN mark under Policy ¶ 4(a)(i) by having registered it with the USPTO (e.g., Reg. No. 1,310,132, registered Dec. 18, 1984).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); The fact that Respondent resides in a jurisdiction that is foreign to the place of Complainant’s trademark registration is inconsequential. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Although, Complainant suggests that it has common law trademark rights in MICHIGAN ROSS, the Panel need not determine whether or not such rights exist since Complaint’s registrations for MICHICAN are sufficient for the purposes of Policy ¶4(a)(i).

 

Respondent’s <michiganross.com> domain name is confusingly similar to Complainant’s MICHIGAN mark.  The at-issue domain name includes Complainant’s entire mark, only adding the descriptive term “ross” (the name of Complainant’s business school), and the generic top-level domain (“gTLD”) “.com.” These alterations are insufficient to differentiate the <michiganross.com> domain name from Complainant’s MICHIGAN mark under Policy ¶ 4(a)(i).  See 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.”); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); 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.”).

 

Rights or Legitimate Interests

Respondent lacks rights or legitimate interests in respect of the <michiganross.com> domain name.

 

Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case will act conclusively.

 

Respondent is not authorized to use any of Complainant’s marks and not commonly known by the <michiganross.com> domain name pursuant to Policy ¶ 4(c)(ii).  WHOIS information identifies “Prince Peter / vibranturre” as the registrant of the disputed domain name. Clearly, the at-issue domain name does not nominally relate to or otherwise identify “Prince Peter / vibranturre.”  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent uses the at-issue domain name to commercially benefit by advertising Respondent’s business school essay consulting and drafting services.  There is little doubt that Respondent intends to commercially benefit from the likely Internet user confusion as to Respondent’s affiliation with Complainant notwithstanding that Respondent disclaims any relationship with Complainant on its website.  Indeed, features of the website referenced by the at-issue domain name are similar to Complaint’s trade dress. Under the circumstance Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <michiganross.com> domain name under Policy ¶ 4(c)(iii).  See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark).

 

Given Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the disputed domain name under Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

Respondent registered and uses the at-issue domain names in bad faith.

 

First, Respondent attempts to create a likelihood of confusion as to Complainant’s affiliation with the at-issue domain name and referenced website. Respondent intends to commercially benefit from such confusion by providing its consulting services to Complainant’s potential students who, at least initially, may mistakenly believe that Respondent is affiliated with Complainant because of the confusingly similar domain name and the use of Complainant’s trade dress (color scheme) on the <michiganross.com> website. Therefore, Respondent registered and uses the <michiganross.com> domain name in bad faith 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 Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The fact that Respondent places a disclaimer on the offending website’s homepage does little to mitigate the confusion.  Notably, Internet users have already been drawn to Respondent’s website via its confusingly similar domain name by the time they encounter the disclaimer. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).

 

Second, based on the disputed domain name, the content of the referenced website, and the nature of Respondent’s business, Respondent clearly had knowledge of Complainant’s rights in the MICHIGAN mark at the time the domain name was registered.  This finding further indicates that Respondent registered the <michiganross.com> domain name in bad faith pursuant to 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 Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

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

 

Paul M. DeCicco, Panelist

Dated: May 21, 2012

 

 

 

 

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