The University of Utah v. yankee office supply / Anab Abdi
Claim Number: FA1311001531808
Complainant is The University of Utah (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is yankee office supply / Anab Abdi (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universityofutah.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2013; the National Arbitration Forum received payment on November 26, 2013.
On November 27, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <universityofutah.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@universityofutah.net. Also on November 27, 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 December 23, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, The University of Utah, is a public university in Salt Lake City, Utah. Complainant is the oldest and largest institution of higher education, and offers more than 100 undergraduate majors and more than 92 graduate degree programs.
Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the UNIVERSITY OF UTAH.
Respondent’s <universityofutah.net> domain name is identical to Complainant’s mark as it is comprised primarily of the term UNIVERSITY OF UTAH and adds the generic top-level domain (“gTLD”) “net.”
Respondent has no rights or legitimate interests in the domain name. Respondent was not commonly known by the domain name prior to registering it. Respondent is using the domain name to create “@universityofutah.net” e-mail addresses that are used in attempts to obtain computer parts and supplies at Complainant’s expense and without Complainant’s authorization.
Respondent has registered and is using the domain name in bad faith. The use of the domain name, in attempts to fraudulently obtain products at Complainant’s expense, is clearly disruptive to Complainant’s business. Respondent uses the domain name to create “@universityofutah.net” e-mail addresses that are used in attempts to obtain computer parts and supplies at Complainant’s expense and without Complainant’s authorization.
It is highly improbable that Respondent was unaware of Complainant’s rights in the UNIVERSITY OF UTAH mark when Respondent registered the domain name.
Respondent registered the <universityofutah.net> domain name on November 19, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for its UNIVERSITY OF UTAH mark.
Respondent is not authorized to use the UNIVERSITY OF UTAH mark.
Respondent registered the at-issue <universityofutah.net> domain name subsequent to when Complainant acquired rights in the UNIVERSITY OF UTAH mark.
Respondent uses the domain name to create “@universityofutah.net” e-mail addresses that are used in attempts to obtain computer parts and supplies at Complainant’s expense and without Complainant’s authorization.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has rights in the UNIVERSITY OF UTAH mark pursuant to Policy ¶ 4(a)(i) by virtue of its owning a relevant trademark registration with the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s at-issue domain name is comprised of Complainant’s entire UNIVERSITY OF UTAH trademark less its spaces, with the top level domain name “.net” appended thereto. Since Respondent’s omission of spaces and addition of a top level domain to Complainant’s trademark is irrelevant to the Panel’s Policy ¶ 4(a)(i) determination, the Panel concludes that Respondent’s <universityofutah.net> domain name is identical to Complainant’s UNIVERSITY OF UTAH mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
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 at‑issue 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 affirmative 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 as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain name identifies Respondent as “yankee office supply / Anab Abdi.” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is nevertheless commonly known by the at-issue domain name despite the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <universityofutah.net> 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).
Complainant shows that Respondent sent an e-mail via “jpark@universityofutah.net,” in an attempt to order a “Seagate Portable Hard Drive, 2TB,” a “Seagate Portable Hard Drive, 1TB,” a “WD My Passport 2TB External Portable Hard Drive,” and more. Respondent’s activity further shows that it uses the <universityofutah.net> domain name to host e-mail addresses which may be confused with Complainant in an endeavor to fraudulently obtain products at Complainant’s expense and without Complainant’s authorization. Respondent’s use of the domain name to attempt to in effect pass itself off as an affiliate or agent of Complainant 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)(iii). 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).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
Respondent’s use of the <universityofutah.net> domain name in attempts to fraudulently obtain products at Complainant’s expense is disruptive to Complainant’s business. As mentioned above, Respondent is using the “jpark@universityofutah.net” e-mail address to attempt to purchase computers products at Complainant’s expense. Respondent’s capitalizing on Internet users’ mistakes after creating a likelihood of confusion between Complainant and Respondent’s use of the at-issue domain name demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See 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).
As mentioned above, Respondent uses the <universityofutah.net> domain name to create “@universityofutah.net” e-mail addresses that are used to obtain computer parts and supplies at Complainant’s expense and without Complainant’s authorization. Respondent’s attempt to pass itself off as Complainant further indicates bad faith pursuant to Policy ¶ 4(b)(iv).See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that complainant endorsed and sponsored the respondent’s website and concluding that Respondent’s attempt to pass itself off as Complainant to fraudulently obtain computer products evidences bad faith use and registration under Policy ¶ 4(b)(iv)).
Finally, Respondent had knowledge of Complainant’s rights in the UNIVERSITY OF UTAH mark when it registered the <universityofutah.net> domain name. Respondent registered the domain name more than 120 years after Complainant began using the UNIVERSITY OF UTAH mark and Complainant is the largest institution of higher education in Utah. Therefore, it is inconceivable that Respondent was unaware of Complainant at the time it registered the at-issue domain name. Respondent’s prior knowledge of Complainant's mark and rights therein additionally shows that Respondent registered the at-domain name in bad faith under Policy ¶ 4(a)(iii). See 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universityofutah.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 5, 2014
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