CollegeNET, Inc. v. Liheng / Just Traffic Supervision Consulting
Claim Number: FA1312001534444
Complainant is CollegeNET, Inc. (“Complainant”), represented by Steven E. Klein of Stoel Rives LLP, Oregon, USA. Respondent is Liheng / Just Traffic Supervision Consulting (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <collegenet.biz>, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2013; the National Arbitration Forum received payment on December 12, 2013.
On December 14, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <collegenet.biz> 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 December 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2014 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@collegenet.biz. Also on December 16, 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 January 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Contentions
a) Complainant provides college information and scholarship services aimed toward college-bound students, as well as online application hosting processing for hundreds of colleges. Complainant has operated a website using the <collegenet.com> domain name since 1995.
b) Complainant has rights in the COLLEGENET mark, used in connection with the provision of college scholarship and information services. Complainant owns registrations for the COLLEGENET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,045,384 registered March 18, 1997) and with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1,784,701 registered June 7, 2002).
c) Respondent’s <collegenet.biz> domain name is identical to Complainant’s COLLEGENET mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic top-level domain (“gTLD”) “.biz.”
d) Respondent does not have any rights or legitimate interests in the <collegenet.biz> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its COLLEGENET mark in any way. The WHOIS record for the disputed domain name lists “Liheng” as the domain name registrant and “Just Traffic Supervision Consulting” as the registering organization.
b. The <collegenet.biz> domain name resolves to a website featuring third-party links, some of which directly compete with Complainant.
c. Respondent made an initial offer to sell the <collegenet.biz> domain name to Complainant for $1,590 and after Complainant’s refusal Respondent made another offer of at least $990.
e) Respondent registered and is using the <collegenet.biz> domain name in bad faith.
a. Respondent has attempted to sell the disputed domain name to Complainant.
b. Respondent is disrupting Complainant’s business by using the <collegenet.biz> domain name to resolve to a website promoting links to Complainant’s competitors.
c. Respondent is attempting to attract Internet users for its own commercial gain by creating a likelihood of confusion with Complainant’s COLLEGENET mark. The resolving website provides links to third-party sites, some of which compete directly with Complainant. Complainant presumes Respondent receives pay-per-click revenue for these links.
d. Respondent had knowledge of Complainant’s COLLEGENET mark prior to registering the <collegenet.biz> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the Panel notes that Respondent registered the <collegenet.biz> domain name on July 17, 2013.
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.”).
Complainant contends it has rights in the COLLEGENET mark, used in connection with the provision of college scholarship and information services. Complainant states it owns registrations for the COLLEGENET mark with the USPTO (e.g., Reg. No. 2,045,384 registered March 18, 1997) and with China’s SAIC (Reg. No. 1,784,701 registered June 7, 2002). The Panel finds that Complainant has valid rights in the COLLEGENET mark because Complainant has a valid trademark registration with SAIC, which is the jurisdiction in which Respondent operates. See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <collegenet.biz> domain name is identical to Complainant’s COLLEGENET mark. Complainant notes that the disputed domain name incorporates Complainant’s mark in its entirety. Therefore, the Panel finds that Respondent’s <collegenet.biz> domain name is identical to Complainant’s COLLEGENET mark pursuant to Policy ¶ 4(a)(i).
Complainant contends Respondent does not have any rights or legitimate interests in the <collegenet.biz> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its COLLEGENET mark in any way. Complainant notes that the WHOIS record for the disputed domain name lists “Liheng” as the domain name registrant and “Just Traffic Supervision Consulting” as the registering organization. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Therefore, because Respondent was not authorized by Complainant to use the COLLEGENET mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <collegenet.biz> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that the <collegenet.biz> domain name resolves to a website featuring third-party links, some of which directly compete with Complainant. The Panel notes that the links displayed on the resolving website include “School Grants For Adults,” “2013 Grants For College,” and “Mom: $10,000 Scholarship.” Past panels have found that using an identical domain name to display links to a complainant’s competitors does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Complainant is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because Respondent is using the <collegenet.biz> domain name to feature third-party links, some of which directly compete with Complainant.
Complainant claims Respondent made an initial offer to sell the <collegenet.biz> domain name to Complainant for $1,590 and after Complainant’s refusal Respondent made another offer of at least $990. In previous cases, panels have found that making an offer to sell a disputed domain name provides further evidence of a respondent’s lack of rights and legitimate interests in the disputed domain. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Therefore, the Panel finds that Respondent’s offers to sell the <collegenet.biz> domain name to Complainant provide additional evidence that Respondent lacks legitimate rights and interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and is using the <collegenet.biz> domain name in bad faith. Complainant claims Respondent has attempted to sell the disputed domain name to Complainant. Previous panels have found that offering to sell a disputed domain name to a complainant provides sufficient evidence to find bad faith registration and use under Policy ¶ 4(b)(i). See Tech. Props., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where the respondent verbally offered the domain names for sale for $2,000). The Panel therefore finds that Respondent registered and is using the <collegenet.biz> domain name in bad faith pursuant to Policy ¶ 4(b)(i) because Respondent attempted to sell the disputed domain name directly to Complainant on multiple occasions.
Complainant alleges that Respondent is disrupting Complainant’s business by using the <collegenet.biz> domain name to resolve to a website promoting links to Complainant’s competitors. In previous cases, panels have held that using a disputed domain name to display competing hyperlinks constitutes a bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent registered and is using the <collegenet.biz> domain name in bad faith under Policy ¶ 4(b)(iii) because the disputed domain name resolves to a website promoting links to Complainant’s competitors.
Complainant contends Respondent is attempting to attract Internet users for its own commercial gain by creating a likelihood of confusion with Complainant’s COLLEGENET mark. Complainant notes that the resolving website provides links to third-party sites, some of which compete directly with Complainant. Complainant presumes Respondent receives pay-per-click revenue for these links. In past cases, panels have determined that using a disputed domain name in the manner described constitutes bad faith registration and use 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.’”). Therefore, the Panel finds that Respondent registered and is using the <collegenet.biz> domain name in bad faith under Policy ¶ 4(b)(iv) because the disputed domain name resolves to a website providing links to third-party sites, some of which compete directly with Complainant.
Lastly, the Panel finds that Respondent had actual knowledge of Complainant’s COLLEGENET mark in light of its incorporation of that mark in its entirety into its domain name. The Panel finds that this actual knowledge supports its finding of registration in bad faith.
Thus, Complainant has also 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 <collegenet.biz> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: January 27, 2014
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