Stockton University v. Sandeep Kulshrestha
Claim Number: FA1601001655246
Complainant is Stockton University (“Complainant”), represented by Y. Jae Kim of Kim Winston LLP, New Jersey, USA. Respondent is Sandeep Kulshrestha (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stocktonuniversity.org>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 5, 2016; the Forum received payment on January 5, 2016.
On January 6, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <stocktonuniversity.org> 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 January 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2016 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@stocktonuniversity.org. Also on January 11, 2016, 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 February 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it is an institution of higher education in the northeastern United States with 8700 students offering degrees at the baccalaureate, master’s, and doctoral levels. It is the owner of the registered trademark STOCKTON CENTER ON SUCCESSFUL AGING, with rights dating back to 2009. Further, Complainant has common law rights in the STOCKTON mark based the amount of resources invested in promoting the mark which has caused the mark to be associated with Complainant’s educational institution. Complainant registered the domain name <stockton.edu> in 1990 and has used it as its primary web site and as the second level domain for its employees’ email addresses since 1994. Complainant cites UDRP precedents to support its position to the effect that it has common law trademark rights in the mark STOCKTON.
Complaint alleges that the disputed domain name is confusingly similar to the STOCKTON mark as the domain merely adds the descriptive term “university,” and the generic top-level domain (“gTLD”) “.org.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name based on WHOIS information. Further, Respondent’s use of the disputed domain, to display purported educational offerings similar to Complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and is using the disputed domain name in bad faith. Complainant is well known as a highly regarded institution providing education services, namely, providing courses at the undergraduate, graduate, post-graduate, and professional levels, and continuing education. Respondent’s web site claims that it also provides education services, but a careful review of Respondent’s web site shows no physical address, no information that suggests where the university is located, and no information about accreditation.
According to Complainant, Respondent’s offering of services similar to Complainant competes with and disrupts Complainant’s business. Respondent’s use of a confusingly similar domain to offer services similar to Complainant’s also indicates an attempt to confuse and attract Internet users for commercial gain. Finally, Respondent had actual or constructive knowledge of Complainant’s rights at the time of registration. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the registered mark STOCKTON CENTER ON SUCCESSFUL AGING, with rights dating back to 2009, and the common law mark STOCKTON, with rights dating back to at least 2009 and uses them to market educational services. Complainant registered the domain name <stockton.edu> in 1990 and has used it since 1994.
The disputed domain name was registered in 2010.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The web site at the disputed domain name offers services that compete with those of Complainant and purports to offer education at “Stockton University”, which is Complainant’s trade name.
Respondent’s web site shows no physical address, no information that suggests where the university is located, and no information about accreditation.
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(f), 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 has common law rights in the STOCKTON mark because it has been associated with the STOCKTON mark for nearly 45 years and provides evidence to support that claim, in particular numerous newspaper clippings dating back to 2009 in which journalists refer to Complainant as “STOCKTON.” It is well established under the policy that that a registration in a mark need not exist to prove rights. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Nat. Arb. Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). The Panel finds that Complainant has established common law rights by showing that the STOCKTON mark has taken on a secondary meaning in association with Complainant’s school. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”); see also See Southern California University for Professional Studies, Inc. v. Wan, FA0904001258605 (Nat. Arb. Forum June 9, 2009) (holding that the complainant had demonstrated common law rights in a mark through continuous use of the mark in connection with educational services for thirty years); Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA0604000685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); Institute for Int’l Educ. of Students v. Int’l Educ. Servs., FA0010000095845 (Nat. Arb. Forum Nov. 30, 2000) (holding that the complainant had demonstrated common law rights in a mark through continuous use in connection with its study abroad programs for over five decades); Miller-Motte Business College, Inc. v. Pham Dinh Nhut, FA1309001517897 (Nat. Arb. Forum Oct. 16, 2013) (finding that Complainant has Policy ¶ 4(a)(i) common law rights in the MILLER-MOTTE mark which pre-date Respondent’s registration of the disputed domain names <millermotte.com> and <millermottetechnicalcollege.com> because “Complainant’s use of the MILLER-MOTTE mark is as such that consumers identify the mark specifically with Complainant’s education services, and have done so for decades”).
The disputed domain name is confusingly similar to Complaint’s mark because it differs from the mark only through the addition of the descriptive term “university” and the addition of the gTLD “.org.” Panels have held that adding a descriptive term and a gTLD to a mark does not alter the domain to an extent that would prevent a finding of confusing similarity. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
WHOIS information associated with the domain shows that Respondent registered the domain using the name, “Sandeep Kulshrestha,” which does not appear to resemble the disputed domain. Panels have held that a respondent is not commonly known by a disputed domain name under such circumstances. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). Thus the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The disputed domain name resolves to a website offering various degree programs purportedly offered at “Stockton University,” which are similar to the offerings of Complainant. Prior panels have found that using a confusingly similar domain to offer services that compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”). Accordingly, the Panel finds that Respondent’s use does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000 0937.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
As previously noted, the disputed domain name resolves to a website that appears to offer programs for study including, “Psychology, Business, Internet Expressive Arts, Leadership, Modern History and Communication.” But Respondent’s web site shows no physical address, no information that suggests where the university is located, and no information about accreditation. Respondent’s offering of services similar to Complainant’s own services competes with and disrupts Complainant’s business. Panels have found bad faith where a respondent registered and used a domain for the purpose of offering services that compete with a complainant. See Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark). Thus, the Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iii).
Further, Respondent’s use of a confusingly similar domain to offer services similar to Complainant’s indicates an attempt to confuse and attract internet users for commercial gain. Past panels have found a respondent to have acted in bad faith where a respondent used a complainant’s mark in a domain to confuse and attract Internet users to a commercial website. 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). Thus the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stocktonuniversity.org> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 6, 2016
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