The Trustees of Columbia University in the City of New York v. George Billis
Claim Number: FA1604001671587
Complainant is The Trustees of Columbia University in the City of New York (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is George Billis (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <columbiauniversity.nyc>, registered with GoDaddy.com, LLC.
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.
Complainant submitted a Complaint to the Forum electronically on April 22, 2016; the Forum received payment on April 22, 2016.
On April 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <columbiauniversity.nyc> 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 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@columbiauniversity.nyc. Also on April 22, 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.
A timely Response was received and determined to be complete on May 12, 2016.
Complainant's Additional Submission was received on May 16, 2016, and it was timely.
On May 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant has used the COLUMBIA UNIVERSITY mark in connection with its preeminent university since 1896. Complainant claims ownership of the COLUMBIA UNIVERSITY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,524,893, registered Feb. 14, 1989). Respondent’s <columbiauniversity.nyc> is confusingly similar to Complainant’s mark. The disputed domain name consists of the entire mark absent the space between the words of the mark and the generic top level domain (“gTLD”) “.nyc.”
ii) Respondent has no rights or legitimate interests in respect of the <columbiauniversity.nyc> domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. The disputed domain name currently resolves to a page that invites visitors to enter their name and email address in an attempt to phish for personal information.
iii) Respondent registered the <columbiauniversity.nyc> domain name in bad faith. Respondent’s effort to capitalize on Internet user confusion in an attempt to phish for Internet users’ sensitive personal information. Respondent registered and used the <columbiauniversity.nyc> domain name with actual/constructive knowledge of the COLUMBIA UNIVERSITY mark and Complainant’s rights in the mark.
B. Respondent
i) Complainant does not own a registered trademark for <columbiauniversity.nyc>.
ii) Respondent has rights and legitimate interests in the <columbiauniversity.nyc> domain name. Respondent intends to use the <columbiauniversity.nyc> domain name to host a webpage for users to post complaints.
iii) Respondent did not register the disputed domain name in bad faith. Respondent is not a cybersquatter. Respondent is not attempting to phish for Internet users’ personal information.
C. Complainant's Additional Submission
Because Complainant established a prima facie case under the UDRP, the burden then shifted to Respondent to rebut such a case and show he is making a legitimate and good faith use of the disputed domain name.
Respondent mistakenly argues that Complainant does not have a trademark registration for the full domain name COLUMBIAUNIVERSITY.NYC. However, the UDRP merely requires that domain name be confusingly similar to Complainant's mark.
Respondent now claims he intends to use the disputed domain name as a 'complaint' site for an undisclosed individual. These allegations, unaccompanied by any documented proof created prior to the time Complainant put Respondent on notice of claims, fail to rebut the prima facie case established by Complainant that Respondent lacks a legitimate right in the disputed domain name. To the extent Respondent actually does not intend to set up a site expressing some third party's views about Complainant, that still would not be a legitimate or fair use of the disputed domain name.
There is no evidence as to what Respondent's purported future site will look like and whether Respondent will benefit commercially from the site in some manner. The only reasonable inference is that Respondent chose the disputed domain name to attract Internet users to his site based on the fame and reputation of Complainant's COLUMBIA UNIVERSITY mark. Respondent also fails to provide any justification or concrete evidence as to why he also has registered domain names with the .nyc TLD that similarly incorporate the famous marks of third parties. This pattern of cybersquatting is further evidence of bad faith.
Respondent's allegations of 'bullying' are unfounded.
To the extent Respondent attempts to provide evidence of his purported bona fide use of the disputed domain name in response to this Additional Submission, such evidence should be rejected by the Panel pursuant to the Forum's Supplemental Rule 7(f).
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s 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.
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.
Complainant has used the COLUMBIA UNIVERSITY mark in connection with its preeminent university since 1896. Complainant claims ownership of the COLUMBIA UNIVERSITY mark through its registration with the USPTO (e.g., Reg. No. 1,524,893, Reg. Date Feb. 14, 1989). Registration with the USPTO adequately proves a Complainant’s rights in a mark. See, e.g., BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015). The Panel agrees that Complainant has satisfied the rights requirement of Policy ¶ 4(a)(i).
Complainant argues Respondent’s <columbiauniversity.nyc> is confusingly similar to Complainant’s mark. The disputed domain name consists of the entire mark absent the space between the words of the mark and the gTLD “.nyc.” As spaces between words are impermissible in a domain name and a gTLD is required, these modifications to a mark are insufficient to distinguish a disputed domain name. See, e.g., Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007). The Panel agrees that Complainant has established the burden of proving confusing similarity 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 (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 (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 posits that Respondent has no rights or legitimate interests in respect of the <columbiauniversity.nyc> domain name. In supporting its position under this element of the Policy, Complainant urges that Respondent is not commonly known by the disputed domain name based on all relevant evidence on record, nor is Respondent a licensee of Complainant. The Panel notes, Respondent does not rebut Complainant’s contention in its response. The Panel accepts Complainant’s contentions under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant argues that Respondent is operating a phishing scheme to collect the personal information of Internet users, and that such use is not a bona fide offering or a legitimate noncommercial or fair use. “Phishing” is defined as the practice of attempting to defraud consumers into revealing personal and/or proprietary information. See, e.g., Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004). Attempting to collect Internet users’ personal information by using a confusingly similar domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”)
Respondent submits that it intends to use the <columbiauniversity.nyc> domain name to host a criticism website of Complainant’s university. Complainant rebuts, in its Additional Submission, that Respondent's allegations, unaccompanied by any documented proof created prior to the time Complainant put Respondent on notice of claims, fail to rebut the prima facie case established by Complainant that Respondent lacks a legitimate right in the disputed domain name.
Complainant also rebuts that to the extent Respondent actually does not intend to set up a site expressing some third party's views about Complainant, that still would not be a legitimate or fair use of the disputed domain name. Complainant keeps arguing that there is no evidence as to what Respondent's purported future site will look like and whether Respondent will benefit commercially from the site in some manner, and that the only reasonable inference is Respondent chose the disputed domain name to attract Internet users to his site based on the fame and reputation of Complainant's COLUMBIA UNIVERSITY mark.
This Panel finds that Respondent has made no demonstration of any attempt to utilize the disputed domain with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant provides evidence that the <columbiauniversity.nyc> domain name reportedly resolves to a webpage designed to collect Internet users’ personal information. The pertinent webpage is an indication of bad faith per Policy ¶ 4(a)(iii), as the Policy ¶ 4(b) elements are non-exclusive. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum August 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Accordingly, the Panel agrees that Respondent’s attempt to phish for Internet users’ personal information indicates bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the COLUMBIA UNIVERSITY mark prior to registration of the domain name. Complainant contends that Complainant's widespread use of the mark and its trademark registrations with the USPTO supports this position. Complainant posits that Respondent’s intended use of the disputed domain name as a website criticizing Complainant suggests that Respondent was aware of Complainant’s rights in the mark. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel infers from the fame of Complainant’s mark and the use manner of the disputed domain name by Respondent that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Lastly, Complainant contends in its Additional Submission that Respondent also fails to provide any justification or concrete evidence as to why he also has registered domain names with the “.nyc” TLD that similarly incorporate the famous marks of third parties, such as SOTHEBYS INTERNATIONAL REALITY, SCHWAB ADVISORS and NEW YORK UNIVERSITY. Complainant concludes that this pattern of cybersquatting is further evidence of bad faith.
However, in the absence of any UDRP rulings in relation to Respondent’s such domain names as above incorporating famous marks, the Panel declines to accept Complainant’s allegations merely on the basis of the fact that Respondent has registered domain names with the “.nyc” TLD that similarly incorporate the famous marks of third parties.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <columbiauniversity.nyc> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 23, 2016
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