Indiana University v. Ryan G Foo / PPA Media Services
Claim Number: FA1411001588079
Complainant is Indiana University (“Complainant”), represented by Thomas Q. Henry of Woodard, Emhardt, Moriarty, McNett & Henry LLP, Indiana, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wtiu.org>, registered with Internet.bs Corp. (R1601-LROR).
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2014; the National Arbitration Forum received payment on November 3, 2014.
On November 12, 2014, Internet.bs Corp. (R1601-LROR) confirmed by e-mail to the National Arbitration Forum that the <wtiu.org> domain name is registered with Internet.bs Corp. (R1601-LROR) and that Respondent is the current registrant of the name. Internet.bs Corp. (R1601-LROR) has verified that Respondent is bound by the Internet.bs Corp. (R1601-LROR) 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 November 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@wtiu.org. Also on November 17, 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 Paul M. DeCicco, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant owns the WTIU mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,521,661, registered Apr. 29, 2014, and filed September 19, 2013). Complainant uses the WTIU mark to identify broadcasting television programs as a television station affiliated with the Public Broadcasting Service owned and operated by Complainant.
Complainant has used the WTIU mark since 1969. WTIU serves over 585,000 households across West and South Central Indiana, with local, regional, and national programs.
The <wtiu.org> domain name is identical to the WTIU mark.
Respondent has no rights or legitimate interests in the disputed <wtiu.org> domain name. Respondent is not affiliated with Complainant. Further, there is no indication that Respondent is commonly known by the disputed domain name. The disputed domain name is not being used for any purpose and resolves to provide no substantive content.
Respondent has no legitimate basis for the disputed domain name. The disputed domain name is not used in connection with an active website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the WTIU mark through its registration of such mark with the USPTO. Complainant also shows that it had common law rights in the WTIU mark predating its registration.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
The at-issue domain name is not used in connection with active website or other Internet device.
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 at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the WTIU mark demonstrates Complainant’s rights in such mark for the purposes of Policy ¶4(a)(i). That Respondent may reside outside the jurisdiction of the trademark registrar is inconsequential. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Further while not necessary to conclude that Complainant has rights in a mark under Policy ¶4(a)(i), Complainant presents evidence of having common law rights dating back prior to the time of the domain name’s registration. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999). There is no evidence within the record opposing Complainant’s common law contentions and thus the Panel finds that Complainant’s trademark rights predate the registration of the at-issue domain name.
In forming the at-issue domain name Respondent merely adds the top-level domain name “.org” to Complainant’s WTIU mark. The Panel’s consideration of the domain name’s required top-level is generally irrelevant in Policy 4(a)(i) analysis and thus the addition of “.org” in the instant case fails to differentiate the domain name from Complainant’s trademark. Therefore, the Panel finds that Respondent’s <wtiu.org> domain name is identical to Complainant’s WTIU trademark under the Policy. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the <wtiu.org> domain name lists “Ryan G Foo” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <wtiu.org> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Furthermore, Respondent holds the <wtiu.org> domain name without employing it in connection with any Internet related technical purpose. Using the trademark identical domain in this manner is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use the domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, there are non-Policy ¶4(b) specific bad faith circumstances which require the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent fails to use the confusingly similar domain name for any technical Internet purpose; there is no indication that the domain name is connected with a website, mail server, or other Internet device. Without any evidence or argument opposing Complainant’s contention that Respondent’s holding of the trademark identical domain name gives rise to an inference of bad faith, the Panel finds in harmony with such contention. Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under 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 <wtiu.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 28, 2014
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