national arbitration forum

 

DECISION

 

University of Rochester v. Park HyungJin

Claim Number: FA1410001587458

 

PARTIES

Complainant is University of Rochester (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA.  Respondent is Park HyungJin (“Respondent”), South Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <perifacts.com>, registered with WILD WEST DOMAINS, LLC.

 

PANEL

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.

 

Ho Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2014; the National Arbitration Forum received payment on October 29, 2014.

 

On October 30, 2014, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <perifacts.com> domain name is registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the name.  WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, 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 October 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@perifacts.com.  Also on October 31, 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 December 1, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant owns the PERIFACTS mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,560,391, registered Jan. 13, 2009, filed May 22, 2008). Complainant uses the PERIFACTS mark for its continuing educational program in the field of obstetrics. The <perifacts.com> domain name is identical to the PERIFACTS mark.

 

ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant, and there is no evidence that Respondent has been commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. The domain name resolves to a website featuring sponsored listings and related links that advertise goods and services related to the field of obstetrics. Most of the links appear to be for competitors of Complainant, offering opportunities for education credits, nursing classes, and obstetrics services. Respondent profits from associated click-through fees. In addition, Respondent’s willingness to sell the <perifacts.com> domain name in excess of its out-of-pocket registration costs, namely for $5,500, further demonstrates Respondent lacks rights in the domain name.

 

iii) Respondent’s willingness to sell the <perifacts.com> domain name in excess of its out-of-pocket registration costs also demonstrates Respondent’s bad faith. In addition, by using the <perifacts.com> domain name to promote services in competition with Complainant’s own offerings in the field of obstetrics, Respondent is in violation of Policy ¶ 4(b)(iii). Further, Respondent is using the PERIFACTS mark to intentionally attract users for commercial gain through confusion, which warrants a finding of bad faith pursuant to Policy ¶ 4(b)(iv). Lastly, Respondent registered the disputed domain name with at least constructive knowledge of Complainant and its rights in the PERIFACTS mark.

 

B. Respondent

Respondent did not submit a response. The disputed domain name was registered on October 20, 2009.

 

FINDINGS

Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainants protected mark.

 

Respondent has no rights to or legitimate interests in the disputed domain name.

  

Respondent registered and used the disputed domain name in bad faith.

 

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant claims to own the PERIFACTS mark through registration with the USPTO (Reg. No. 3,560,391, registered Jan. 13, 2009, filed May 22, 2008). Complainant uses the PERIFACTS mark for its continuing educational program in the field of obstetrics. The Panel agrees that Complainant’s USPTO registration evinces Policy ¶ 4(a)(i) rights in the mark despite Respondent’s apparent residence outside of the United States. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).

 

Complainant argues the <perifacts.com> domain name is identical to the PERIFACTS mark as the domain name incorporates the mark in full. The Panel notes that the addition of the generic top-level domain (“gTLD”) is irrelevant to the Policy ¶ 4(a)(i) analysis, and therefore agrees that the <perifacts.com> domain name is identical to the PERIFACTS mark. 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.”).

 

Rights or Legitimate Interests

 

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.”).

 

Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant claims Respondent is not affiliated with Complainant, and argues there is no evidence that Respondent has been commonly known by the disputed domain name. The Panel notes that the WHOIS information lists “Park HyungJin” as the registrant of record. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. The Panel agrees that the record contains no basis to find Respondent commonly known by the <perifacts.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant next argues 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. Complainant asserts the domain name resolves to a website featuring sponsored listings and related links that advertise goods and services related to the field of obstetrics. See Compl., at Attached Ex. G. Complainant notes that most of the links appear to be for competitors of Complainant, offering opportunities for education credits, nursing classes, and obstetrics services. Id.  Further, Complainant asserts that Respondent profits from associated click-through fees. The Panel agrees that Respondent’s use of the <perifacts.com> domain name to feature links to services in competition with Complainant’s own offerings in the field of obstetrics amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).

 

In addition, Complainant argues that Respondent’s willingness to sell the <perifacts.com> domain name in excess of its out-of-pocket registration costs, namely for $5,500, further demonstrates Respondent lack of rights in the domain name. The Panel notes that this $5,500 figure was offered by Respondent in response to Complainant’s attempts to procure the name as documented in Complainant’s Exhibit D, and that this same figure remains the requested purchase price per the listing on Sedo. See Compl., at Attached Ex. E. The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of its out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name. 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); Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s willingness to sell the <perifacts.com> domain name in excess of its out-of-pocket registration costs also demonstrates Respondent’s bad faith. In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel concluded that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name. See also Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”). Accordingly, the Panel finds evidence of Respondent’s bad faith use and registration pursuant to Policy ¶ 4(b)(i).

 

Complainant argues that by using the <perifacts.com> domain name to promote services in competition with Complainant’s own offerings in the field of obstetrics, Respondent is disrupting Complainant’s business in violation of Policy ¶ 4(b)(iii). The Panel notes that the disputed domain name resolves to promote links such as “Womens OBGYN,” “Free Nurse Ceu’s,” and “LPN to RN in 18 Months.” See Compl., at Attached Ex. G. The Panel agrees that such links contain the requisite degree of competition to disrupt Complainant’s business, and thus the Panel finds evidence of Policy ¶ 4(b)(iii) bad faith. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).

 

Further, Complainant argues that Respondent is using the PERIFACTS mark to intentionally attract users for commercial gain through confusion, which warrants a finding of bad faith pursuant to Policy ¶ 4(b)(iv). As Respondent is using the <perifacts.com> domain name to promote links related to the field of obstetrics and healthcare generally, and Respondent likely generates revenue from the featured links, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Lastly, Complainant argues that Respondent registered the disputed domain name with at least constructive knowledge of Complainant and its rights in the PERIFACTS mark. While prior panels have generally refused to find evidence of bad faith based solely on constructive notice, the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <perifacts.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Ho Hyun Nahm, Esq., Panelist

Dated:  December 9, 2014

 

 

 

 

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