Laboratory Institute of Merchandising d/b/a/ LIM College v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1411001590824
Complainant is Laboratory Institute of Merchandising d/b/a/ LIM College (“Complainant”), represented by Lara Holzman of Alston & Bird LLP, New York, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <limcollege.com>, registered with Internet.Bs Corp.
The undersigned certifies that 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 19, 2014; the National Arbitration Forum received payment on November 19, 2014.
On November 23, 2014, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <limcollege.com> domain name is registered with Internet.Bs Corp. and that Respondent is the current registrant of the name. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 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@limcollege.com. Also on November 25, 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 23, 2014, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has operated LIM COLLEGE since 1939. LIM COLLEGE is an institution that teaches business and merchandising skills. Complainant has used <limcollege.edu> since 1997.
The LIM trademark has been registered with the United States Patent and Trademark Office ("UPTO") for a number of years (e.g., Reg. No. 2,410,462, registered Dec. 5, 2000, filed Oct. 15, 1999). The LIM COLLEGE trademark has U.S. Service Mark Registration No. 3,881,085 and was issued November 23, 2010.
The <limcollege.com> domain name is identical to Complainant’s trademark.
Respondent has no rights or legitimate interests in the <limcollege.com> domain name. Respondent has never been known by the <limcollege.com> domain name. Further, Respondent has failed to make any active use of the <limcollege.com> domain name.
Respondent registered and is using the <limcollege.com> domain name in bad faith. Respondent’s failure to sell the domain name to Complainant suggests that Respondent wants to sell the domain name. Respondent’s non-use of the domain name is disrupting Complainant’s business by allowing advertisement links to appear on the domain name’s website. Respondent is profiting on the likelihood of confusion between the domain name and Complainant’s education enterprise, especially when competing links appear on the domain name’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the LIM COLLEGE mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its LIM COLLEGE trademark.
Respondent uses the at-issue domain name to address a website which displays links to fashion education entities.
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 LIM COLLEGE trademark demonstrates Complainant’s rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); 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.)
In forming the at-issue domain name Respondent merely removes the space -from Complainant’s trademark and appends the top-level domain name, “.com,” thereto. These alterations do nothing to distinguish the domain name from Complainant’s LIM COLLEGE trademark for the purposes of the Policy. Therefore, the Panel finds that the <limcollege.com> domain name is identical to the LIM COLLEGE mark under Policy ¶ 4(a)(i). See See Lucky Brand Dungarees, Inc. v. Cole, FA 363048 (Nat. Arb. Forum Dec. 28, 2004) (stating that, “[i]t is well established that neither the deletion of a space between words in a trademark nor the addition of a generic top-level domain distinguish a domain name from the trademark”).
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 at-issue domain name lists “Domain Admin” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <limcollege.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(iii). 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).
The website addressed by the <limcollege.com> domain name is dedicated to promoting hyperlink advertising such as “School of Fashion” or “Fashion Merchandising Degree.” Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a a legitimate or fair use of the domain name under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (finding that the decision to host competing and related advertising did not create a Policy ¶ 4(c)(i) bona fide offering of goods, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use).
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, Policy ¶4(b) specific bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent’s uses the domain name such that the website addressed by the domain name displays advertising links. Using the at-issue domain name for purposes of hyperlink advertising that relate to fashion education products suggests Respondent’s intent to disrupt Complainant’s long-running LIM COLLEGE business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Furthermore, Respondent likely profits from the confusion between the domain name and Complainant’s education enterprise since Internet users seeking Complainant may mistakenly arrive at Respondent’s website and in turn may click one of the website’s several pay-for-click fashion education related links. Such use of the <limcollege.com> domain name demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <limcollege.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 23, 2014
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