Penn State Alumni Association v. Reza Karamooz / Softrade Partners, LLC
Claim Number: FA1404001553745
Complainant is Penn State Alumni Association (“Complainant”), represented by William N. Federspiel of McGuire Woods LLP, Virginia, USA. Respondent is Reza Karamooz / Softrade Partners, LLC (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pennstater.com> and <penstater.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2014; the National Arbitration Forum received payment on April 11, 2014.
On April 11, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <pennstater.com> and <penstater.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@pennstater.com, postmaster@penstater.com. Also on April 16, 2014, 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 May 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
1. Complainant has rights in THE PENN STATER mark.
a. Complainant is the official alumni association for the Pennsylvania State University. Complainant’s association was founded in 1870 and now boosts more than 172,000 members worldwide. Complainant works to connect Penn State alumni to the University and provide valued services to members. Complainant aims to succeed in its goals through a publication of its official alumni magazine, The Penn Stater. Complainant states that this magazine was first published in 1910 and has continuously been published since that date. Complainant contends that it also maintains an online extension of the magazine known as The Penn Stater Daily, located at the <pennstatermag.com> domain name. Complainant states that it has used this domain name since 2008.
b. Complainant provides evidence of its registration for the THE PENN STATER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,276,933 registered May 8, 1984).
c. Respondent’s <pennstater.com> and <penstater.com> domain names are confusingly similar to Complainant’s PENN STATER mark.
i. Respondent removes the word “the” as well as the space in Complainant’s mark.
ii. Respondent adds the generic top-level domain (“gTLD”) “.com” to both of the disputed domain names.
iii. Respondent’s <penstater.com> domain name removes the second “n” in PENN.
2. Respondent has no rights or legitimate interests in the <pennstater.com> and <penstater.com> domain names.
a. Respondent is not commonly known by the disputed domain names. The WHOIS information for the disputed domain names contains information linking Respondent to numerous other domains and websites.
i. Complainant has not granted Respondent license or rights to use the THE PENN STATER mark in any way.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
i. Respondent uses the disputed domain names to resolve to parked websites displaying pay-per-click links for topics intended to attract Internet users.
c. Respondent’s status as an alumni does not grant him the right to use the THE PENN STATE mark or any other mark associated with Complainant.
3. Respondent registered and is using the <pennstater.com> and <penstater.com> domain names in bad faith.
a. Respondent placed a link seeking offers to purchase the domain names, indicating an original intent to sell the disputed domain names.
b. Respondent has a history of registering domain names to prevent trademark owners from reflecting the mark in a corresponding domain name.
c. Respondent uses the disputed domain names to compete with Complainant and to commercially profit. Respondent uses the disputed domain names to purportedly create a social network of Penn State alumni.
d. Respondent’s disputed domain names are typosquatted versions of Complainant’s mark.
e. Respondent’s disclaimer does not negate the potential for initial interest and confusion created by Respondent’s use of the domain name.
f. Respondent who claims to be an alumnus of Penn State, was undoubtedly aware of Complainant and Complainant’s mark at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is the official alumni association for the Pennsylvania State University and publishes The Penn Stater and an online extension of the magazine known as The Penn Stater Daily.
2. Complainant owns the trademark THE PENN STATER mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,276,933 registered May 8, 1984).
3. Respondent registered the <pennstater.com> domain name on June 22, 1999 and the <penstater.com> domain name on April 22, 2013.
4. Respondent has used the disputed domain names to resolve to parked websites at various times displaying pay-per-click links for topics intended to attract Internet users, to purport to be a social network relating to Complainant and to purport to carry news about Complainant.
DISCUSSION
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it is the official alumni association for the Pennsylvania State University. Complainant shows that its association was founded in 1870 and now boasts more than 172,000 members worldwide. Complainant works to connect Penn State alumni to the University and provide valued services to members. Complainant aims to succeed in its goals through the publication of its official alumni magazine, The Penn Stater. Complainant states that this magazine was first published in 1910 and has continuously been published since that date. Complainant contends that it also maintains an online extension of the magazine known as The Penn Stater Daily, located at the <pennstatermag.com> domain name. Complainant states that it has used this domain name since 2008. Complainant provides the Panel with evidence of its registration for the THE PENN STATER mark with the USPTO (Reg. No. 1,276,933 registered May 8, 1984). Panels have continuously found that providing evidence of registration with the USPTO is sufficient to establish rights in a given mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore concludes that Complainant has rights in the THE PENN STATER mark under Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s registered trademark THE PENN STATER. Complainant additionally argues that Respondent’s <pennstater.com> and <penstater.com> domain names are confusingly similar to Complainant’s THE PENN STATER mark as Respondent removes the word “the” as well as the space in Complainant’s mark. Respondent also adds the gTLD “.com” to both of the disputed domain names. Respondent’s <penstater.com> domain name removes the second letter “n” in PENN. Prior panels have found that removing letters and spaces and adding a gTLD to a mark does not differentiate it from a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK). The Panel concludes therefore that Respondent’s disputed domain names are confusingly similar to Complainant’s THE PENN STATER mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s registered trademark THE PENN STATER and used it to create two domain names, making only the minor alterations referred to above;
(b) Respondent has then used the domain names to resolve to parked websites at various times displaying pay-per-click links for topics intended to attract Internet users, to purport to be a social network relating to Complainant and to purport to carry news about Complainant;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant asserts that Respondent has no rights or legitimate interests in the <pennstater.com> and <penstater.com> domain names as Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS information for the disputed domain names contains information linking Respondent to numerous other domains and websites. Additionally, the Complainant states that it has not granted Respondent license or rights to use the THE PENN STATER mark in any way. The Panel notes from the WHOIS information that the <pennstater.com> domain name was registered on June 22, 1999 and the <penstater.com> domain name was registered on April 22, 2013. Both disputed domain names were registered by “Reza Karamooz.” Prior panels have concluded that a respondent is not commonly known by a disputed domain name where there is no evidence on the record supporting such a claim. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the 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 the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel concludes that Respondent is not commonly known by the <pennstater.com> and <penstater.com> domain names under Policy ¶ 4(c)(ii);
(e) Complainant next contends that Respondent’s prior use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant submits that Respondent previously used the disputed domain names to resolve to parked websites that displayed pay-per-click links for topics intended to attract Internet users. The Panel notes Complainant’s Annex E-G that show the websites which previously resolved from Respondent’s disputed domain names. The Panel notes that some of the pay-per-click links include, “Pennsylvania Lawyers,” “Pennsylvania Real Estate,” “tory burch amanda leather bags too well,” “coach factory store artists there,” “applenicer,” “Jimmy Jons,” and “jia le.” Prior panels have concluded that using a confusingly similar domain name to resolve to a website displaying pay-per-click links does not convey rights or legitimate interests in a disputed domain name. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) or (iii);
(f) Respondent currently uses the disputed domain names to resolve to websites used as a social network aimed at competing with Complainant. See Complainant’s Annex H. The Panel notes that the resolving websites currently feature the heading “Penn Stater™ Penn State News & Sports Updates.” The Panel notes that this resolving website purports to provide “Penn State Latest News Updates.” The Panel notes the disclaimer displayed on the top of Respondent’s resolving websites stating, “We are not affiliated, associated, authorized, endorsed by, or in any way officially connected with the Pennsylvania State University or Penn State Alumni Association.” The Panel also notes the statement on the bottom of the resolving websites indicating that “Penn Stater [is] a website by Penn Stater for Penn Staters.” Complainant additionally claims that Respondent’s status as an alumni does not grant him the right to use the THE PENN STATE mark or any other mark associated with Complainant. The Panel notes that the panel in Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) found that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site. Additionally, prior panels have found that the presence of a disclaimer on a resolving website does not alleviate the confusion caused to the visiting Internet user. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant). The Panel therefore concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii);
(g)Complainant additionally claims that Respondent’s <pennstater.com> and <penstater.com> domain names are typosquatted versions of Complainant’s THE PENN STATER mark. Prior panels have concluded that using a commonly misspelled version of a complainant’s mark or making a small variation to the mark in a domain name supports a finding that a respondent’s disputed domain names are typosquatted variations of a complainant’s mark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii);
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and is using the <pennstater.com> and <penstater.com> domain names in bad faith. Complainant asserts that Respondent placed a link on the original resolving websites seeking offers to purchase the domain names. Complainant claims that this indicates an original intent to sell the disputed domain name. See Complainant’s Annex D. Prior panels have concluded that offering to sell a disputed domain name indicates bad faith use and registration under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale). The Panel concludes that Respondent’s offer to sell the disputed domain names indicates bad faith use and registration.
Secondly, Complainant asserts that Respondent has a history of registering domain names to prevent trademark owners from reflecting the mark in a corresponding domain name. Complainant also claims that Respondent’s registration of two domain names infringing on Complainant’s THE PENN STATER mark indicates a pattern of bad faith. Prior panels have routinely concluded that a respondent who registers multiple domain names in a current case satisfies the burden imposed by Policy ¶ 4(b)(ii). See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). The Panel concludes that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii) because both <pennstater.com> and <penstater.com> are confusingly similar to THE PENN STATER mark.
Thirdly, Complainant further contends that Respondent uses the disputed domain names to compete with Complainant’s alumni association network. Respondent uses the disputed domain names to purportedly create a social network of Penn State alumni. Complainant states that there is no evidence of an actual network, however, Respondent uses Complainant’s mark to generate revenue and attract Internet users. Panels have frequently found that using disputed domain names to compete with a complainant and disrupt its business by offering a competing website indicates bad faith use and registration under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). The Panel therefore concludes that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Fourthly, Complainant contends that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv) as Respondent currently uses the disputed domain names to resolve to a website that results in a commercial profit for Respondent. Complainant states that there is no evidence of an actual alumni network, however, Respondent uses Complainant’s mark to generate revenue and attract Internet users. Panels have frequently found that using a domain name to resolve to a website that aims to attract Internet users to the website and confuse them as to a complainant’s association with the website and thereby commercially profit, indicates bad faith use and registration. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel concludes that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Fifthly, Complainant asserts that Respondent’s disputed domain names previously resolved to websites displaying pay-per-click links that confused Internet users and resulted in earning revenue for Respondent. Panels have previously found that using a disputed domain name in this way indicates bad faith use and registration under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel concludes that Respondent acted in bad faith under Policy ¶ 4(b)(iv).
Sixthly, Complainant claims that Respondent’s disputed domain names are typosquatted versions of Complainant’s mark. The Panel notes that previous panels have found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As the Panel agrees, it concludes that Respondent’s <pennstater.com> and <penstater.com> domain names are typosquatted versions of Complainant’s THE PENN STATER mark.
Seventhly, Complainant contends that Respondent, who claims to be an alumnus of Penn State, was undoubtedly aware of Complainant and Complainant’s mark at the time it registered the disputed domain names. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using Complainant’s THE PENN STATER mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pennstater.com> and <penstater.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 13, 2014
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