The Trustees of Boston College v. Mark Zuckerberg
Claim Number: FA1406001563536
Complainant is The Trustees of Boston College (“Complainant”), represented by Anthony E. Rufo of Foley Hoag LLP, Massachusetts, USA. Respondent is Mark Zuckerberg (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostoncollege.us>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2014; the National Arbitration Forum received a hard copy on June 9, 2014.
On June 9, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bostoncollege.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 10, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 30, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, 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) Rule for the U.S. Department of Commerce’s usTLD Dispute Resolution Policy "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 usTLD Policy, usTLD 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 makes the following assertions:
1. Respondent’s <bostoncollege.us> domain name, the domain name at issue, is confusingly similar to Complainant’s BOSTON COLLEGE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an internationally renowned institution of higher education which provides educational services as well as goods and merchandise in connection with its BOSTON COLLEGE mark. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BOSTON COLLEGE mark (e.g., Reg. No. 1,483,601, registered April 5, 1988). Respondent’s <bostoncollege.us> domain name is identical to Complainant’s BOSTON COLLEGE mark.
Respondent has no rights or legitimate interests in the disputed domain name and is not commonly known by the disputed domain name. Respondent is using the disputed domain name to advertise educational services such as a “Master of Science” program, a “Ph.D. Program,” and an “Associate Degree from Boston College” for a price of $6,000 or $7,800, which on its face competes with Complainant’s educational services.
Respondent is using the website to offer services directly competitive with those offered by Complainant. The disputed domain name creates the impression of endorsement by, or affiliation with, Complainant. Further, Respondent is using the disputed domain name to collect payment without providing services or by obtaining consumers’ personal information for illicit purposes. Respondent was aware of Complainant and the nature of Complainant’s business when he registered the <bostoncollege.us> domain name on April 21, 2012.
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 or 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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant is an internationally renowned institution of higher education which provides educational services as well as goods and merchandise in connection with its BOSTON COLLEGE mark. Complainant holds trademark registrations with the USPTO for the BOSTON COLLEGE mark (e.g., Reg. No. 1,483,601, registered April 5, 1988). Because Respondent resides within the United States, Complainant’s registration of the BOSTON COLLEGE mark with the USPTO sufficiently shows rights in the mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <bostoncollege.us> domain name is identical to Complainant’s BOSTON COLLEGE mark. Respondent has eliminated the space in the BOSTON COLLEGE mark and added the country-code top-level domain (“ccTLD”) “.us.” This omission of a space and inclusion of a ccTLD is irrelevant pursuant to a Policy ¶ 4(a)(i) analysis. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Consequently, Respondent’s <bostoncollege.us> domain name is identical to Complainant’s BOSTON COLLEGE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 notes that, in order to demonstrate rights and legitimate interest, Policy ¶ 4(c) provides four elements that a respondent may satisfy: (i) a respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; (ii) a respondent is making a bona fide offering of goods and services; (iii) a respondent is commonly known by the disputed domain name; or (iv) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In this case, there no evidence exists in the record to demonstrate that Respondent owns any service marks or trademarks that reflect the <bostoncollege.us> domain name. Accordingly, the Panel finds that Respondent does not possess rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name).
It appears that Respondent is not commonly known by the <bostoncollege.us> domain name. Respondent is neither an agent nor a licensee of Complainant and has never been an agent or a licensee of Complainant. Respondent is identified as “Mark Zuckerberg” in the WHOIS information. Therefore, the Panel holds that there is no evidence in the record showing that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). 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).
Respondent is using the <bostoncollege.us> domain name to advertise educational services such as a “Master of Science” program, a “Ph.D. Program,” and an “Associate Degree from Boston College” for a price of $6,000 or $7,800, which on its face competes with Complainant’s educational services. Respondent’s website features photographs depicting scenes of Boston and college campuses, and Respondent is using the disputed domain name to deceive or defraud potential customers, in an attempt to collect payment or personal information from consumers in exchange for “educational services.” Since the Panel finds that Respondent is using the <bostoncollege.us> domain name in an attempt to pass itself off as Complainant and to phish for financial and personal information, the Panel holds that Respondent is not using the disputed domain name for a Policy ¶ 4(c)(ii) bona fide offering of goods or services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The Panel notes that Respondent’s <bostoncollege.us> domain name purports to offer educational services that may be considered as competing with Complainant’s educational services. Since Respondent is a competitor of Complainant or is using the disputed domain name to provide competing educational services, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Respondent’s use of the <bostoncollege.us> domain name creates the impression of endorsement by, or affiliation with, Complainant. Respondent is using the disputed domain name to offer services directly competitive with Complainant. Specifically, Respondent is using the disputed domain name to advertise educational services such as a “Master of Science” program, a “Ph.D. Program,” and an “Associate Degree from Boston College” for a price of $6,000 or $7,800, which on its face competes with Complainant’s educational services. Clearly, Respondent has registered and is using the <bostoncollege.us> domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Further, Respondent is using the <bostoncollege.us> domain name to collect payment without providing services or by obtaining consumers’ personal information for illicit purposes. Respondent’s disputed domain name resolves to a webpage purporting to offer competing educational services in exchange for consumers’ personal and financial information. In Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006), the panel determined that respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name. Thus, the Panel holds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
It appears to the Panel that Respondent was aware of Complainant and the nature of Complainant’s business at the time it registered the <bostoncollege.us> domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the widespread use and recognition of Complainant's mark and the nature of use of the website associated with the domain name at issue, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in 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 Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bostoncollege.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 3, 2014
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