Indiana University v. Airai Holdings
Claim Number: FA1404001553395
Complainant is Indiana University (“Complainant”), represented by Thomas Q. Henry of Woodard, Emhardt, Moriarty, McNett & Henry LLP, Indiana, USA. Respondent is Airai Holdings (“Respondent”), Palau.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iuware.com>, registered with TUCOWS, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on April 9, 2014; the National Arbitration Forum received payment on April 9, 2014.
On April 9, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <iuware.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 April 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2014 by which Re-spondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and bil-ling contacts, and to postmaster@iuware.com. Also on April 11, 2014, the Writ-ten 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 May 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 is an educational institution with nearly 100,000 students and ap-proximately 18,000 faculty and staff located on eight regional campuses in the Midwestern region of the United States.
From a time prior to 2002, Complainant developed common law rights in the IUWARE.IU.EDU mark.
Complainant employs the IUWARE.IU.EDU mark in its <iuware.iu.edu> domain name, which it operates as a sub-domain of its principal domain name, <iu.edu>.
The <iuware.iu.edu> domain name is used by Complainant’s students, faculty and staff to review and obtain a variety of software packages.
The <iuware.iu.edu> domain name and IUWARE.IU.EDU mark are widely recog-nized as being associated with complainant and its educational programs and support services, including its offerings of software packages without cost.
Respondent registered the <iuware.com> domain name on December 27, 2002.
Respondent’s <iuware.com> domain name is confusingly similar to Complain-ant’s IUWARE.IU.EDU mark.
Respondent has not been commonly known by the <iuware.com> domain name, and Complainant has not authorized Respondent to use its IUWARE.IU.EDU mark in any way.
The <iuware.com> domain name is being used as an “advertising conduit,” which redirects Internet users to other websites, some of which feature software down-loads with spyware, viruses or other malicious computer code embedded in their installers.
Respondent does not have rights to or legitimate interests in the <iuware.com> domain name.
Respondent registered and is using the <iuware.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 does not assert any rights in a registered trademark. However, own-ership of a registered trademark is not necessary to establish rights in a mark under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a UDRP complainant need not own a trade-mark registration for its mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). To the same effect, see also Artistic Pursuit LLC v. calcutta-webdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a UDRP complainant can establish common law rights in its mark).
Common law rights require that Complainant’s mark have established a second-ary meaning. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that a UDRP complainant established common law rights in its mark where that complainant demonstrated that its mark had acquired secondary meaning).
Complainant’s undenied claim of secondary meaning, and consequent common law rights in the IUWARE.IU.EDU mark, has minimally adequate support in the record. Accordingly, Complainant has rights in the mark sufficient for it to be per-mitted to proceed under Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Palau). See, for example, Al Ghurair Group LLC v. Ghurair Group, D2004-0532 (WIPO November 4, 2004):
It is thus sufficient that the Complainant establish that, at the time of filing the complaint, it has some rights in a trademark [whether ac-quired by registration or under the common law] anywhere in the world. ([citing:] Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668); (Kabushiki Kaisha ASTY and Kabu-shiki Kaisha F.D.C. Products v. Li Hai, WIPO Case No. D2003-0963).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <iuware.com> domain name is confusingly similar to Complainant’s IUWARE.IU.EDU common law mark. The domain name incorporates the “iuware” portion of Complainant’s mark while substituting the generic top-level domain (“gTLD”) “.com.” for the “iu.edu” portion. “IU” is of course the abbreviation for Complainant Indiana University, while the “.edu” portion of Complainant’s mark is simply the educational gTLD imbedded in the mark. Respondent’s alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> do-main name to be confusingly similar to a UDRP complainant’s AMERICAN EAGLE OUTFITTERS mark).
And as to the inclusion of the generic top-level domain (“gTLD”) “.com” in the domain name, see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the contested <iuware.com> domain name, and that Complainant has not authorized Respondent to use its IUWARE.IU.EDU mark in any way. Moreover, the WHOIS record for the domain name identifies the name registrant only as “Airai Holdings,” which does not re-semble the domain name. On this record, we conclude that Respondent has not been commonly known by the domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respond-ent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well the other evidence in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a UDRP complainant had not authorized that re-spondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that the <iuware.com> domain name is being used as an “advertising conduit,” which redirects Internet users to other websites, some of which feature software down-loads with spyware, viruses or other malicious computer code embedded in their installers. This employment of the domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use under Policy ¶ 4(c)(iii), so that Respondent can make no claim of rights in the domain name under cover of either of those provisions. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration and use of the <iuware.com> domain name, as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(a)(iv). See, for example, Google Inc. v. Fundacion Private Whois / Domain Administrator, FA 1495039 (Nat. Arb. Forum May 30, 2013), a panel there finding that:
[r]espondent’s use of the disputed domain name to host malware or to feature competing applications evidences bad faith use and reg-istration under Policy ¶ 4(b)(iv).
The Panel thus finds that complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <iuware.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 14, 2014
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