Great Lakes Higher Education Corporation v. Charles Abrams
Claim Number: FA1607001685539
Complainant is Great Lakes Higher Education Corporation (“Complainant”), represented by Laura M Konkel of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Charles Abrams (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mygreatlakes.info> and <mygreatlakesloans.com>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2016; the Forum received payment on July 26, 2016.
On July 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mygreatlakes.info> and <mygreatlakesloans.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@mygreatlakes.info, postmaster@mygreatlakesloans.com. Also on July 27, 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 August 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the largest student loan servicers in the United States. In connection with its business as a loan servicer, Complainant uses the GREAT LAKES mark. Complainant’s rights in the GREAT LAKES mark stem from its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,417,350, registered Apr. 29, 2008). Respondent’s domains are confusingly similar to Complainant’s mark as the domains include the entire GREAT LAKES mark and differ through the addition of the terms “my” and, in one domain, “loans.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domains and has not been authorized to use the GREAT LAKES mark by Complainant. Further, Respondent’s use of the disputed domains, to resolve to parked pages hosting links for competing student loan services, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domains in bad faith. Respondent’s use of the domains to host competing links disrupts and competes with Complainant’s business, and confuses and attracts Internet users for commercial gain.
B. Respondent
Respondent failed to submit a response in this proceeding.
Complainant is Great Lakes Higher Education Corporation, of Madison, WI, USA. Complainant is the owner of the domestic registration for the mark GREAT LAKES, which it has continuously used since at least as early as 1988, in connection with its business of providing student loan servicing.
Respondent is Charles Abrams of Lake Worth, FL, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the disputed domain <mygreatlakes.info> was created on or about January 25, 2016, and the <mygreatlakesloans.com> domain was created on or about November 21, 2015.
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 (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 claims rights in the GREAT LAKES mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,417,350, registered Apr. 29, 2008). Past panels have held that a complainant has rights in a mark based on registration of the mark with the USPTO. See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.). The Panel here finds that Complainant’s registration gives it rights in the GREAT LAKES mark for purposes of Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s domains are confusingly similar to the GREAT LAKES mark in which Complainant asserts rights. Respondent’s domain <mygreatlakes.info> includes the GREAT LAKES mark and adds the generic top-level domain (“gTLD”) “.info” and the generic term “my.” The domain <mygreatlakesloans.com> adds the gTLD “.com,” the term “my,” and the term “loans.” Respondent’s domains also eliminate the spacing between the words of Complainant’s mark. Prior panels have held that the inclusion of a gTLD in a domain is generally not a relevant consideration when analyzing confusing similarity under Policy ¶ 4(a)(i). See Infineon Technologies AG v. mustafa mashari, FA 1619868 (Forum June 27, 2015) (holding “the addition of the “.info” gTLD is seen as irrelevant to its analysis”); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
Previous panels have also found that the addition of generic terms to a mark does not alleviate the similarity between a domain and a mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Panels have additionally found that elimination of the spacing between the words of a complainant’s mark does not serve to adequately distinguish a respondent’s domain from a complainant’s mark. The Panel here finds that Respondent’s domains are confusingly similar to the GREAT LAKES mark in which Complainant asserts rights.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), 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). Complainant has met this burden.
Complainant claims that Respondent is not commonly known by the disputed domain names or authorized to use Complainant’s mark. WHOIS information associated with the disputed domains identifies Respondent as “Charles Abrams,” which does not resemble the disputed domains. Respondent failed to provide any other information to show that Respondent has been commonly known by the domains or authorized to use the GREAT LAKES mark. Previous panels have found a respondent to not be commonly known by a disputed domain based on WHOIS information and a lack of information to the contrary. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel here finds that Respondent is not commonly known by the disputed domains under Policy ¶ 4(c)(ii).
Complainant next contends that Respondent is not using the disputed domains in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domains resolve to parked websites hosting commercial links for products and services that appear to compete with Complainant’s business such as “Top 5 Student Loans,” “Top 7 Student Loan Deals,” and “Subsidized Student Loan.” Prior panels have held that using a confusingly similar domain to resolve to a website hosting competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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)). Panels have also found that a respondent is responsible for the content of a domain, even if the domain is parked. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). The Panel here finds that Respondent’s use of the domains to advertise services in competition with Complainant is not a use within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domains.
The Complainant has proven this element.
Complainant argues that Respondent’s use of the domains to host competing advertisements disrupts and competes with Complainant’s business, and confuses and attracts Internet users for commercial gain. Respondent’s domains both resolve to parked websites hosting links to services that compete with those offered by Complainant. Past panels have found bad faith registration and use under Policy ¶ 4(b)(iii) when a respondent uses a confusingly similar domain to host links to competing services. See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum January 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)).
Prior panels have also found bad faith under Policy ¶ 4(b)(iv) where a respondent commercially benefits from displaying links on a domain that incorporates another’s mark. See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). The Panel here finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iii) and/or ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <mygreatlakes.info> and <mygreatlakesloans.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Sept. 6, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page