national arbitration forum

 

DECISION

 

Board of Regents, The University of Texas System v. Nabil Edde

Claim Number: FA1310001522656

 

PARTIES

Complainant is Board of Regents, The University of Texas System (“Complainant”), represented by Jered E. Matthysse of Pirkey Barber PLLC, Texas, USA.  Respondent is Nabil Edde (“Respondent”), Lebanon.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ut-lac.org>, registered with eNom, Inc.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2013; the National Arbitration Forum received payment on October 3, 2013.

 

On October 3, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ut-lac.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 October 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2013 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@ut-lac.org.  Also on October 4, 2013, 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 October 29, 2013, 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 is a Texas state board established for the purpose of governing the University of Texas System of higher education, the “UT System.” Complainant offers a wide variety of products and services in the fields of education, medicine, scientific research and development, and athletics.

 

Complainant’s official website is located at <www.utsystem.edu> and has been in operation since 1993. The University of Texas at Austin is an academic institution within the UT System, offering 17 colleges and schools, referred to as “The University of Texas” or “UT.” The University’s College of Liberal Arts uses the marks UT, TEXAS, UNIVERSITY OF TEXAS, and THE UNIVERSITY OF TEXAS AT AUSTIN PRAESIDIUM DISCIPLINA CIVITATIS.

 

Complainant owns rights with the United States Patent and Trademark Office (“USPTO”) for the following marks: UT: (e.g., Reg. No. 1,230,439 registered March 8, 1983).TEXAS: (e.g., Reg. No. 1,231,407 registered March 15, 1983).UNIVERSITY OF TEXAS: (Reg. No. 1,340,787 registered June 11, 1985).THE UNIVERSITY OF TEXAS (Reg. No. 1,351,805 registered July 30, 1985).

 

Respondent’s <ut-lac.org> domain name is confusingly similar to Complainant’s UT marks.

 

Respondent has no rights or legitimate interests in the <ut-lac.org> domain name. Respondent is not commonly known by the disputed domain name. Respondent has neither used, nor made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent displays Complainant’s marks on the website resolving from the disputed domain name. Respondent displays a news feed that features monetized links diverting Internet users to third-party websites not affiliated with Complainant.

 

Respondent registered and is using the <ut-lac.org> domain name in bad faith. Respondent presumably collects revenue from the pay-per-click links present on Respondent’s resolving website. Respondent’s disputed domain name resolves to a website displaying links that resolve to third-party websites. Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s UT marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

 

Respondent had notice of Complainant’s trademark rights upon receipt of Complainant’s cease-and-desist letter.

 

Respondent owns no trademark or other intellectual property rights in the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns USPTO registered trademarks for UT and related trademarks.

 

Respondent is not affiliated with Complainant and had not been authorized to use the UT mark in any capacity.

 

Respondent registered the at-issue domain name after Complainant acquired trademark rights in UT.

 

Respondent’s <ut-lac.org> website is entitled “UNIVERSITY OF TEXAS COLLEGE OF LIBERAL ARTS.” The website displays Complainant’s trademark and UT seal along with text concerning the University of Texas and its College of Liberal Arts.

 

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

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant’s USPTO registration of the UT mark sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i) and it irrelevant whether or not Respondent registered the domain name in the location where he or she does business. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

In forming the at-issue domain name Respondent incorporates Complainant’s UT mark, concatenates a hyphen plus the acronym “lac”  thereto, and then appends the top level domain name “.org” to the resulting string.  However, the <ut-lac.org> domain name is nevertheless confusingly similar to Complainant’s UT trademark. Indeed, the inclusion of “lac” in the domain name, which suggests Complainant’s liberal arts college, only enhances any confusion between the domain name and Complainant’s mark. The necessary top level domain name, here “.org,” is irrelevant to the Panel’s confusing similarity analysis. Therefore, the Panel concludes that Respondent’s <ut-lac.org> domain name is confusingly similar to Complainant’s UT mark pursuant to Policy ¶4(i).See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Citizens Financial Group, Inc. v. Albert Kao, FA 1030868 (Nat. Arb. Forum August 21, 2007) (finding that the addition of the gTLD “.org” does nothing to alleviate the confusing similarity as a gTLD is required for all domain names).

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an 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 and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.

 

WHOIS information identifies “Nabil Edde” as the at-issue domain name’s registrant. The record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus finds that Respondent is not commonly known by the at-issue domain name for the purposes of 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 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’s <ut-lac.org> website is entitled “UNIVERSITY OF TEXAS COLLEGE OF LIBERAL ARTS” and also displays the sub heading “Welcome to UT CoLA!” as well as Complainant’s registered UT trademark and UT seal. Respondent’s use of the domain creates a false impression that the website is sponsored by or affiliated with Complainant. Such use is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(i).. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Furthermore, the website also features links for third-party websites, not affiliated with Complainant including “CFP certification,” “Online Colleges,” “Fischer Investments,” and “People Search.” Respondent is likely collecting click-through revenue from these links. Here too, such use of the domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

 

Registration and Use in Bad Faith

The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion between Complainant’s UT mark and the source, sponsorship, affiliation, or endorsement of both the at-issue domain name and the website addressed by the domain name. Respondent’s website features Complainant’s marks as well as a “Mission Statement” for the “College of Liberal Arts” and as mentioned above Respondent likely benefits when Internet users click on the third-party links also displayed on the website. Under the circumstances Respondent’s use of the confusingly similar domain name and website to confound visitors into believing they are visiting a site sponsored or affiliated with Complainant, when they are not, demonstrates Respondent’s bad faith registration and use of the <ut-lac.org> domain name pursuant to Policy ¶4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

 

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 <ut-lac.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  October 29, 2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page