La Salle University v. Fred McCaw
Claim Number: FA1308001515840
Complainant is La Salle University (“Complainant”), represented by Jeremy D. Mishkin of Montgomery, McCracken, Walker & Rhoads, LLP, Pennsylvania, USA. Respondent is Fred McCaw (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lasalleuniversity.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil J. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2013; the National Arbitration Forum received payment on August 22, 2013.
On August 22, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <lasalleuniversity.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@lasalleuniversity.com. Also on August 23, 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.
Respondent submitted a Response, which was received and found to be compliant on September 12, 2013.
On September 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luz Helena Villamil J. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it uses the LA SALLE UNIVERSITY mark to provide higher education services, and has done so since 1863. Complainant has rights over marks which contain the LA SALLE and the LA SALLE UNIVERSITY names with the U.S Patent and Trademark Office ("USPTO"), as the LA SALLE mark (Reg. No. 1,853,477 registeredSeptember 13, 1994), covering goods and services of international classes 6, 4, 16, 18, 21, 24, 25 and 41, and the LA SALLE UNIVERSITY PHILADELPHIA PA. VIRTUS SCIENTIA 1863 mark in Classes 6, 16, 18, 20, 21, 24, 25, 26 and 41 dated November 30, 1993. La Salle University operates the website with the domain name <lasalle.edu> and provides e-mail accounts to its students, faculty, administration and alumni using the @lasalle.edu domain name. Alumni can keep @lasalle.edu e-mail accounts for their lifetime.
Complainant adds that Respondent’s domain name <lasalleuniversity.com> entirely contains the LA SALLE mark and, due to the similarities between the disputed domain name and La Salle University’s name, the La Salle Marks and its domain name <lasalle.edu>, the disputed domain name is likely to cause confusion, to cause mistake, and to deceive as to the affiliation, connection, or association of the Respondent and those to whom he issues e-mail accounts to under the <lasalleuniversity.com> domain name.
Complainant states that the Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint because Respondent has no connection whatsoever with the name “La Salle University,” nor any variant thereof. Respondent uses the disputed domain name as a ‘parking’ site with virtually no content aside from display/banner advertisements and thus on information and belief is making commercial use of and deriving revenue by attracting searches or hits by diverting consumers who may be seeking to reach Complainant. Moreover, the Complainant claims that Respondent is not using the contested domain name in connection with any bona fide offering of goods or services, and has no legitimate noncommercial or fair use for the <lasalleuniversity.com> domain name.
Lastly, according to the Complainant there are circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Complainant, La Salle University, offered to compensate Respondent $500.00 to transfer the domain name to La Salle University, representing a substantial premium over the actual costs Respondent may have incurred in registering the domain name. Respondent rejected the offer stating that, “The only way that your client can acquire this domain is to purchase it from me at a very premium price. In terms of the price, add three more zeros to your original offer, and perhaps I may consider your offer.” Respondent is suggesting a purchase price of $500,000, an amount well in excess of any commercially reasonable out-of-pocket cost directly related to the domain name. The Complainant adds that it appears that Respondent has been offering e-mail addresses at the <lasalleuniversity.com> domain name. Such e-mail addresses are not affiliated with La Salle University and create a likelihood of confusion with Complainant and the LA SALLE Marks. Upon information and belief, Respondent likely earns pay-per-click advertising revenue through the website. The <lasalleuniversity.com> domain name currently provides, among other things, links to searches for La Salle University, Application for Admission, Basketball Scholarships, Campus Colleges, and College Scholarships. These links do not redirect users to La Salle University’s official website, <lasalle.edu>.
B. Respondent
According to the Respondent, the original purpose of registering the domain name <lasalleuniversity.com> was to include it among his hundreds of domains in the early 2000 decade from a website called <Rebelde.com>. He said that he is a Filipino-American who noticed at the time that e-mail addresses such as Yahoo, Hotmail, or Gmail were boring and the domain itself did not identify with the person who owned the e-mail address. For this reason, he began to reserve hundreds of domains.
The Respondent relies on a precedent regarding the domain <Rebelde.com>, also owned by him and which was unsuccessfully disputed by Dori Media International. On these grounds, the Respondent stated that, “LaSalleUniversity.com is exactly in the same situation now: A big institution trying to bully the little guy who reserved the domain name before them.”
According to the Respondent, “it has been said that domain names are internet real estate. They are intellectual properties. Domain names are like a piece of land, and building a website is like building a house or structure on the land.”
As to the offer to purchase the domain name made by the Complainant, the Respondent asserts: “The Complainant has offered me, the Respondent, the amount of $500 because they believe that this is the rightful value of what is due to me. Isn’t the Complainant an institution in the United States. Last I heard this is a free enterprise society, meaning that the value of any goods and services is primarily based not only on the law of supply and demand, but also what the seller is willing to sell at AND what the buyer is willing to pay. First, in terms of supply, there is only one LaSalleUniversity.com. Therefore, the price should skyrocket since the supply is limited. Second, I as the owner is not will to sell for $500. Because the Complainant came across in their first contact to me as an arrogant swanky institution who can easily bully a small guy like me, well then, I gave them a special price just for them: $500,000 in US Dollars. Anybody else will pay a much much lower price.”
The Respondent then offers a list of domains that have been sold for extremely high prices, and thus asks to be allowed to exercise his rights to choose whether to sell this and any of his domains at the price of $5 or $5 zillion dollars, since in his words, this should be the owner’s natural right.
Complainant is the owner of the trademark LA SALLE, as it is evidenced by Reg. No. 1,853,477 registered September 13, 1994 to cover goods and services of international classes 6, 4, 16, 18, 21, 24, 25 and 41. The particulars of this registration were submitted by the Complainant as Exhibit 8, consisting of a copy of the relevant record taken from the website of the USPTO. Likewise, copies of the relevant records regarding registration of the trademarks LA SALLE UNIVERSITY PHILADELPHIA PA.VIRTUS SCIENTIA 1863 and UNIVERSITAS LASALLIANA INSTITUTA A.D. MDCCCLXIII VIRTUS ET SCIENTIA were attached as Exhibits 7 and 9.
To demonstrate that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), Complainant contends that Respondent has no connection whatsoever with the name “La Salle University,” nor any variant thereof, and Respondent uses the disputed domain name as a ‘parking’ site with virtually no content aside from display/banner advertisements, thus diverting consumers who may be seeking to reach Complainant. Moreover, the Complainant asserts that the Respondent is not using the contested domain name in connection with any bona fide offering of goods or services, and has no legitimate noncommercial or fair use for the <lasalleuniversity.com> domain name.
The Complainant attempted to purchase the domain name from Respondent, and for such purpose offered the amount of US$500. The Respondent refused the offer by arguing that such offer was an attempt to reverse hijack from him the disputed domain name, and asked the Complainant’s attorney to add three more zeros to the offer in order for him to consider selling the domain name.
In turn, the Respondent acknowledged having registered the <lasalleuniversity.com> domain name together with hundreds of other domains in the early 2000 decade after having noticed that e-mail addresses such as Yahoo, Hotmail, or Gmail were “boring” and the domain itself did not identify with the person who owned the e-mail address. For this reason he began to reserve hundreds of domains. In this specific respect, Panel cannot help noticing that the Respondent’s e-mail address is paradoxically one of those “boring” addresses: fredmccaw@gmail.com.
Respondent
admits that he is willing to sell the domain name to anyone who makes an offer
he finds acceptable, based on the fact that in terms of supply and demand, there
is only one <lasalleuniversity.com> domain name. Therefore, as he says, the
price should skyrocket since the supply is limited. He adds that he gave to the
Complainant a special price just for them: $500,000 in US Dollars. Anybody
else will pay a much lower price.
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.
The first requirement of the Policy in Paragraph 4(a)(i) for the Complainant to meet is to demonstrate its rights over a trademark identical or confusingly similar to a domain name registered by the Respondent.
The disputed domain name is <lasalleuniversity.com>. Complainant is the owner of the trademarks LA SALLE and LA SALLE UNIVERSITY PHILADELPHIA PA. VIRTUS SCIENTIA 1863 as it is evidenced by the trademark registrations submitted with the Complaint.
The similarities between the trademark LA SALLE and the domain name <lasalleuniversity.com> are undeniable. The trademark LA SALLE is totally contained in the disputed domain name, and therefore it would not be possible to deny that there is a virtual identity, but in any case an irrefutable confusing similarity, between the registered trademark and the disputed domain name.
In light of the foregoing, there is no doubt for the Panel that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <lasalleuniversity.com> is confusingly similar to the trademarks owned by the Complainant.
Complainant argues that Respondent has no connection whatsoever with the name “La Salle University,” nor any variant thereof. The Panel finds that since the Registrant of the disputed domain name is “Fred McCaw”, indeed, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
According to the Complainant, Respondent uses the disputed domain name as a ‘parking’ site with virtually no content aside from display/banner advertisements and thus on information and belief is making commercial use of and deriving revenue by attracting searches or hits by diverting consumers who may be seeking to reach Complainant. Moreover, the Complainant claims that Respondent is not using the contested domain name in connection with any bona fide offering of goods or services, and has no legitimate noncommercial or fair use for the <lasalleuniversity.com> domain name. This is in fact acknowledged by the Respondent when he stated in his Response, “what business is it of the Complainant if I exercise my right to do something or to do nothing with my property? I am the registered owner and I have the right to do as I please…” This statement only denotes an extremely arrogant attitude by the Respondent, probably grounded on his having been awarded a favorable decision on the <Rebelde.com> domain name dispute which, contrary to what he says now, was not similar at all to the present case since the <Rebelde.com> case was decided against the Complainant due to the lack of demonstration of rights over the trademark REBELDE, which definitely is not the case with the <lasalleuniversity.com> domain name, where the Complainant demonstrated that it has undisputable trademark rights to support his case.
In turn, when the Respondent admits that he registered the disputed domain name together with hundreds of other domain names in the early 2000 decade, that “the next big thing at the time was to list your domains with websites like Sedo.com for monetization,” and that there is a purpose for the disputed domain, which is to list it with <Sedo.com> so that it earns enough money to pay for the annual dues at <GoDaddy.com>, it is clear for the Panel that: a) The Respondent does not use the domain name in connection with a bona fide offering or goods or services; (b) The Respondent is not commonly known by the domain name; and (c) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and on the contrary, the intent for commercial gain is clear and evident.
In light of the foregoing, the Panel establishes that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <lasalleuniversity.com>.
According to Paragraph 4 (b) of the Policy, when certain circumstances are present in a given case they shall be evidence of the registration and use of a domain name in bad faith. Among such circumstances the Policy mentions in Paragraph 4(b)(i): circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
In the present case, the purpose of selling the domain name to the Complainant who happens to be the owner of the trademark is evident. When the Respondent answered the offer to purchase the domain name he boldly replied: “Many attorneys before like you have threatened me in the past to reverse hijack my domains and I'm sure there will be more in the future. All of them after Rebelde.com have realized that they don't stand a chance at the WIPO because of the precedence and just made a prudent decision to provide an offer to buy the subject domain from me.”
The impudent tone of the Response given by the Respondent to the Complainant’s attorney when an offer was made to purchase the domain name, and the counter offer requesting that three zeros be added to the proposal in order for him to consider selling the domain name, does show without doubt the intention by the Respondent to sell the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
All the foregoing makes it imperative to conclude that there is bad faith registration and use of the disputed domain name by the Respondent in the case at hand under Policy ¶ 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lasalleuniversity.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil J., Panelist
Dated: October 1st, 2013
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