The University of Utah v. PPA Media Services / Ryan G Foo
Claim Number: FA1311001531827
Complainant is The University of Utah (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universityofutah.com>, registered with INTERNET.BS CORP.
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.
Sandra J. Franklin 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 December 3, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <universityofutah.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 3, 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.com. Also on December 3, 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 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <universityofutah.com> domain name is confusingly similar to Complainant’s UNIVERSITY OF UTAH mark.
2. Respondent does not have any rights or legitimate interests in the <universityofutah.com> domain name.
3. Respondent registered and uses the <universityofutah.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is Utah’s oldest and largest institution of higher education. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its UNIVERSITY OF UTAH mark (Reg. No. 4,390,770 filed July 16, 2012; registered August 27, 2013), with a first use in commerce of 1892.
Respondent registered the <universityofutah.com> domain name on January 18, 2002, and uses it to resolve to a pay-per-click site that includes possible competitors of 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.
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 Panel finds that Complainant’s registration of its UNIVERSITY OF UTAH mark with the USPTO establishes rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i).) Complainant is a public university in Salt Lake City, Utah. Complainant argues that Respondent registered the <universityofutah.com> domain name approximately 110 years after Complainant began using the UNIVERSITY OF UTAH mark. The Panel notes that Complainant first used the UNIVERSITY OF UTAH mark in commerce in 1892. Complainant’s continuous use of the UNIVERSITY OF UTAH mark in commerce establishes common law rights pursuant to Policy ¶ 4(a)(i). See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Accordingly, the Panel finds that Complainant has established common law rights in the UNIVERSITY OF UTAH mark under Policy ¶ 4(a)(i) dating back to 1892.
Although Respondent appears to reside in Chile, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <universityofutah.com> domain name is comprised of the term UNIVERSITY OF UTAH and the gTLD “.com.” The omission of spaces and the addition of a gTLD do not distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). 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”). The Panel finds that Respondent’s <universityofutah.com> domain name is identical to Complainant’s UNIVERSITY OF UTAH mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <universityofutah.com> domain name, and is not a licensee of Complainant or otherwise authorized to use the UNIVERSITY OF UTAH mark. The WHOIS information lists “PPA Media Services / Ryan G Foo” as the registrant of the disputed domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Accordingly, the Panel finds that Respondent is not commonly known under the <universityofutah.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is using the <universityofutah.com> domain name to divert Internet users attempting to locate Complainant’s website to Respondent’s website, which features links to competing websites and websites unrelated to Complainant. The Panel notes that the disputed domain name resolves to links such as “University of Utah,” “Western Governors University,” and “American Public University.” Previous panels have found that a respondent’s use of a disputed domain name to list competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Thus, the Panel finds that Respondent is not using the <universityofutah.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <universityofutah.com> domain name to resolve to a pay-per-click site that diverts Internet users searching for Complainant’s UNIVERSITY OF UTAH brand goods and services to sites offering different, sometimes competing goods and services. The Panel finds that Respondent’s use of the disputed domain name to list links to competing universities disrupts Complainant’s business, and constitutes bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent uses the <universityofutah.com> domain name to resolve to a pay-per-click site that diverts Internet users to Respondent’s website, presumably for financial gain. The Panel finds that this demonstrates bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant asserts that it is highly improbable that Respondent was unaware of Complainant’s rights in the UNIVERSITY OF UTAH mark when Respondent registered the <universityofutah.com> domain name, approximately 110 years after Complainant began using the UNIVERSITY OF UTAH mark. The Panel agrees and finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights, which is further evidence of bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 6, 2014
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