Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng
Claim Number: FA1504001613780
Complainant is Arizona Board of Regents, for and on behalf of Arizona State University (“Complainant”), represented by Glenn S. Bacal of Bacal Law Group, P.C., Arizona, USA. Respondent is Weiping Zheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sundevillife.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2015; the Forum received payment on April 9, 2015.
On April 10, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sundevillife.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2015 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@sundevillife.com. Also on April 13, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s Contentions
1. Complainant owns the SUN DEVIL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,493,595, registered June 21, 1988). Complainant uses the SUN DEVIL mark in connection with its educational and entertainment services, such as undergraduate, graduate, and post-graduate education as well as intercollegiate, exhibition, and intramural athletic and sporting events. The <sundevillife.com> domain name is confusingly similar to Complainant’s SUN DEVIL mark. The disputed domain name removes the space between “Sun” and “Devil,” adds the generic term “life,” and adds the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as nothing in the WHOIS record suggests that Respondent is commonly known by “Sun Devil Life.” Complainant has not given Respondent permission to use the SUN DEVIL trademark or any variation thereof. Further, Respondent lacks rights or legitimate interests in the <sundevillife.com> domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name features third-party hyperlinks that compete with Complainant, presumably for financial gain. See Compl., at Attached Ex. 18.
3. Respondent has engaged in bad faith registration and use of the <sundevillife.com> domain name. Respondent has offered the disputed domain name for sale in excess of out-of-pocket costs. Respondent has engaged in a pattern of bad faith registration. Respondent’s use of the disputed domain name disrupts Complainant’s business by featuring competing hyperlinks. Further, Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s mark, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). Finally, Respondent exhibited opportunistic bad faith under Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after Complainant filed applications to register the SUN DEVIL LIFE mark, and just days after those applications became public through the USPTO website.
B. Respondent’s Contentions
1. Respondent did not submit a response.
1. Respondent’s <sundevillife.com> domain name is confusingly similar to Complainant’s SUN DEVIL mark.
2. Respondent does not have any rights or legitimate interests in the <sundevillife.com> domain name.
3. Respondent registered or used the <sundevillife.com> domain name in bad faith.
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.”).
Complainant contends that it owns the SUN DEVIL mark through its registration with the USPTO (e.g., Reg. No. 1,493,595, registered June 21, 1988). Complainant states that it uses the SUN DEVIL mark in connection with its educational and entertainment services, such as undergraduate, graduate, and post-graduate education as well as intercollegiate, exhibition, and intramural athletic and sporting events. The Panel recalls that registration with a federal trademark agency sufficiently demonstrates a complainant’s rights to the mark, despite any evidence that the respondent may live in another country. The Panel concludes that Complainant’s valid registration of the SUN DEVIL mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i), even though Respondent reportedly resides in China. 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 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 alleges that the <sundevillife.com> domain name is confusingly similar to Complainant’s SUN DEVIL mark. The disputed domain name removes the space between “Sun” and “Devil,” adds the generic term “life,” and adds the gTLD “.com.” Previous panels have routinely held that the addition of a gTLD and the removal of spaces between words is irrelevant to Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Further, past panels have also found that the addition of a generic word or term does little to distinguish the disputed domain name from the registered mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). This Panel determines that the disputed domain name is confusingly similar to Complainant’s SUN DEVIL mark under Policy ¶ 4(a)(i).
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 has no rights or legitimate interests in the disputed domain name. Complainant urges that Respondent is not commonly known by the disputed domain name, as nothing in the WHOIS record suggests that Respondent is commonly known by “Sun Devil Life.” The Panel notes that the WHOIS information for the disputed domain name refers to the registrant of record as “Weiping Zheng.” See Compl., at Attached Ex. 15. Further, Complainant states that it has not given Respondent permission to use the SUN DEVIL trademark or any variation thereof. The Panel agrees that these contentions sufficiently establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Further, Complainant argues that Respondent lacks rights or legitimate interests in the <sundevillife.com> domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant demonstrates that Respondent’s disputed domain name features third-party hyperlinks that compete with Complainant, presumably for financial gain. See Compl., at Attached Ex. 18. The Panel notes that some of these competing hyperlinks include “LSU College Football Schedule,” “Angels Tickets,” and “ND Football Tickets.” Id. Previous panels have found that a respondent’s use of competing hyperlinks is neither a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. 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”). The Panel concludes that Respondent’s actions are not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel further agrees that as Respondent here presumably attempts to profit through click-through fees, there can logically be no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent has offered the disputed domain name for sale in excess of out-of-pocket costs. Complainant alleges that Respondent offered its domain for sale, requesting a “minimum offer” of $2,000. See Compl. At Attached Ex. 16. Respondent later modified its resolving website, including a banner on the homepage that indicates, “This Domain May Be For Sale.” See Comp. at Attached Ex. 20. Prior panels have found that both an offer to sell in excess of out-of-pocket costs and a general offer to sell can rise to the level of bad faith registration. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel finds that the <sundevillife.com> domain name was registered in bad faith under Policy ¶ 4(b)(i).
Complainant alleges that Respondent has engaged in a pattern of bad faith registration. The Panel sees that Complainant has included adverse decisions against Respondent in Complainant’s Attached Exhibit 22, pp. 21, 27 and 76. See Bayer Intellectual Property GmbH v. Zheng Weiping / Domain WhoIs Protection Service, D2014-0936 (WIPO Aug. 8, 2014); BlueScope Steel Limited v. Weiping Zheng, weipingzheng, D2013-1910 (WIPO Jan. 8, 2013). Previous panels have found that prior adverse UDRP proceedings were sufficient evidence of a pattern of bad faith registration under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Consequently, this Panel finds bad faith registration under Policy ¶ 4(b)(ii).
Respondent’s use of the disputed domain name disrupts Complainant’s business by featuring competing hyperlinks. Complainant asserts that Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to various third-party websites. Internet users may reach websites such as <phoenix.edu> and <devry.edu>, Complainant’s competitors, by clicking on these links. See Compl., at Attached Ex. 19. Previous panels have found that the use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith under 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).”). This Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Further, Complainant contends that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent presumably receives “click through” fees through the use of its disputed domain name, and registered the disputed domain name to attract and mislead consumers for its own profit. Prior panels have found that hyperlinks are typically associated with referral fees, and a respondent’s use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s mark, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). Complainant urges that Respondent had knowledge of Complainant and its mark, due to the fame of the SUN DEVIL mark at the time <sundevillife.com> was registered. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark and the content advertised on Respondent’s website, 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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Finally, Complainant argues that Respondent has engaged in opportunistic bad faith under Policy ¶ 4(a)(iii). In support of this argument, Complainant notes that Respondent registered the disputed domain name just one week after Complainant filed applications to register the Sun DEVIL LIFE mark, and just days after those applications became public through USPTO’s website. Complainant believes that this timing is not a coincidence and indicates opportunistic bad faith pursuant to Policy ¶ 4(a)(iii). Previous panels have agreed with this suspicious timing argument. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”). Accordingly, the Panel finds that Respondent has engaged in opportunistic bad faith 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 <sundevillife.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 28, 2015
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