The University of Utah v. Admin - Oversee Domain Management, LLC
Claim Number: FA1311001531826
Complainant is The University of Utah (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is Admin - Oversee Domain Management, LLC (“Respondent”), represented by Todd H. Greene of Oversee.net, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universityofutah.org>, registered with Nameking.com Inc.
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.
David P. Miranda, Esq., 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 26, 2013, Nameking.com Inc. confirmed by e-mail to the National Arbitration Forum that the <universityofutah.org> domain name is registered with Nameking.com Inc. and that Respondent is the current registrant of the name. Nameking.com Inc. has verified that Respondent is bound by the Nameking.com 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 December 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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.org. Also on December 2, 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.
A timely Response was received and determined to be complete on December 23, 2013.
On December 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., 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, The University of Utah, (“Complainant”) contends that Complainant owns rights in the UNIVERSITY OF UTAH mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,390,770 filed July 16, 2012; registered August 24, 2013).
Complainant contends it owns common law rights in the UNIVERSITY OF UTAH mark through its continuous use of the mark in commerce since 1892. The mark has been used in connection with its offering of higher education goods and services as the largest and the oldest institution of higher learning in Utah. See Complainant’s Exhibit C. The <universityofutah.org> domain name is identical to Complainant’s UNIVERSITY OF UTAH mark because the domain name incorporates Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.org.”
Respondent is not commonly known by the <universityofutah.org> domain name and has not been authorized to use Complainant’s UNIVERSITY OF UTAH mark in a domain name. The disputed domain name resolves to a website featuring links to various third-party websites that offer goods and services that compete with Complainant, and this use is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Complainant’s Exhibit E.
The <universityofutah.org> domain name disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii) because the domain name targets Complainant’s potential customers and redirects them to a website featuring links to Complainant’s competitors in the higher education industry. See Complainant’s Exhibit E. The disputed domain name creates a likelihood of confusion with Complainant’s UNIVERSITY OF UTAH mark, presumably for Respondent’s own commercial benefit. Respondent registered the disputed domain name on June 20, 2002. Respondent registered the <universityofutah.org> domain name with actual notice of Complainant’s rights in the UNIVERSITY OF UTAH mark.
B. Respondent
Respondent, Oversee Domain Management, LLC, (“Respondent”) contends that Respondent owns a portfolio of generic domain names which are acquired through lawful and fair methods. Without admitting fault or liability and without responding substantively to Complainant’s allegations, Respondent consents to the transfer of the <universityofutah.org> domain name to Complainant in order to expedite this matter for the Panel.
Complainant has set forth a prima facie case and Respondent has consented to transfer, thus the traditional UDRP analysis is not necessary and the Panel directs transfer of the domain name <universityofutah.org> to Complainant.
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.
CONSENT TO TRANSFER
Respondent consents to transfer the <universityofutah.org> domain name to Complainant. However, after the initiation of this proceeding, Nameking.com Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is pending. The Panel finds that since Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may forego the traditional UDRP analysis and order an immediate transfer of the <universityofutah.org> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Respondent having consented to the transfer, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universityofutah.org> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: January 7, 2014
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