The Board of Regents of The University of Texas System v. JASPER JUHL / BITSWAT LLC
Claim Number: FA1705001730192
Complainant is The Board of Regents of The University of Texas System (“Complainant”), represented by Steven M. Espenshade of Pirkey Barber PLLC, Texas, U.S.A. Respondent is JASPER JUHL / BITSWAT LLC (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hirealonghorn.net>, registered with eNom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2017; the Forum received payment on May 4, 2017.
On May 5, 2017, eNom, LLC confirmed by e-mail to the Forum that the <hirealonghorn.net> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 May 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2017 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@hirealonghorn.net. Also on May 9, 2017, 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 June 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 provides university-level educational services. Complainant uses the HIRE A LONGHORN mark in connection with a job bank program for University of Texas students seeking part-time employment. Complainant owns a federal trademark registration for the LONGHORNS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,231,408, registered Mar. 15, 1983). Complainant also holds many registrations for variations of the LONGHORNS mark, including for LONGHORN, LONGHORN BAND, LONGHORN RUN, etc., (known collectively as LONGHORN marks). Respondent’s <hirealonghorn.net> is confusingly similar to Complainant’s LONGHORN marks because the domain name incorporates the mark in its entirety and merely adds the generic phrase “hire a” and a generic top-level domain name (“gTLD”), “.net”.
Respondent has no right or legitimate interests in the <hirealonghorn.net> domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the LONGHORN marks. Previously, Respondent used the disputed domain name in connection with a website that offered information regarding employment opportunities for students at the University of Texas, which very closely resembled Complainant’s own hosted website. Respondent currently uses the disputed domain name to redirect users to a page on Complainant’s website. Respondent also uses the disputed domain name to create email accounts by which he fraudulently passes off as Complainant and pretends to be a recruiter for Complainant. Such use of the domain name is not a bona fide offer of goods or services or a legitimate non-commercial fair use.
Respondent has registered and is using the <hirealonghorn.net> domain name in bad faith. Respondent uses the confusingly similar disputed domain name to redirect Internet users to complainant’s official website. Furthermore, Respondent’s attempts to falsely present himself as Complainant’s employee for the purpose of engaging in fraudulent activity supports a finding of bad faith use. Further, Respondent used a privacy service to mask his identity when he registered the disputed domain name. Finally, Respondent had actual knowledge of Complainant’s rights at the time of registration evinced by Respondent’s fraudulent email scheme, and the current use of the disputed domain name redirecting users to Complainant’s own hosted webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, The Board of Regents of The University of Texas System, provides university-level educational services. Complainant uses the HIRE A LONGHORN mark in connection with a job bank program for University of Texas students seeking part-time employment. Complainant owns a federal trademark registration for the LONGHORNS mark with the USPTO (Reg. No. 1,231,408, registered Mar. 15, 1983). Complainant also holds many registrations for variations of the LONGHORNS mark, including for LONGHORN, LONGHORN BAND, LONGHORN RUN, etc., (known collectively as LONGHORN marks). Respondent’s <hirealonghorn.net> is confusingly similar to Complainant’s LONGHORN marks.
Respondent, JASPER JUHL / BITSWAT LLC, registered the <hirealonghorn.net> domain name on August 17, 2016.
Respondent has no right or legitimate interests in the <hirealonghorn.net> domain name. Respondent currently uses the disputed domain name to redirect users to a page on Complainant’s website. Respondent also uses the disputed domain name to create email accounts by which he pretends to be a recruiter for Complainant.
Respondent has registered and is using the <hirealonghorn.net> 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(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 has rights in LONGHORN marks through registration with the USPTO. See See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (registration of a mark with the USPTO sufficiently establishes rights in that mark).
Respondent’s <hirealonghorn.net> domain name is confusingly similar to Complainant’s LONGHORN marks because the domain name incorporates the mark in its entirety and merely adds the generic phrase “hire a” and a gTLD, “.net”.
Respondent is not commonly known by the <hirealonghorn.net> domain name. Complainant has not authorized Respondent to use its LONGHORN marks. The WHOIS information of record lists “Jasper Juhl” as the registrant name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (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); see also Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Respondent currently uses the domain name to redirect Internet users to Complainant’s website. Respondent’s use of the disputed domain name to resolve to Complainant’s website is not a bona fide offering of goods or services or a legitimate non-commercial fair use. See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”).
Respondent is using the disputed domain name to create emails which he uses to pretend to be a recruiter employed by Complainant. Respondent is currently using the disputed domain name to redirect users to a page on Complainant’s website that provides resources and information for job-seeking students and employers, as well as a link to Complainant’s HIRE A LONGHORN job bank. Respondent has used these email accounts for a fraudulent scheme in which Respondent contacts UT students via email and misrepresents himself as a “Recruiter” in UT’s HIRE A LONGHORN program. Respondent’s use of a disputed domain name to send fraudulent emails, especially when that domain name resolves to Complainant’s own website, precludes Respondent’s claim of using the disputed domain name for a bona fide offer of goods or services or legitimate non-commercial fair use. See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1403001550388 (Forum May 5, 2014) (finding no bona fide offer or fair use when Respondent was using the domain name to send emails impersonating Complainant in order to defraud customers and that domain name resolved to a website similar to Complainant’s website).
Respondent has registered and is using the <hirealonghorn.net> domain name in bad faith because Respondent is using the domain name to redirect Internet users to Complainant’s website. Using a confusingly similar domain name to redirect users to a complainant’s own website can show bad faith registration and use under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii
Respondent’s use of the <hirealonghorn.net> domain name is disruptive because Respondent is using the disputed domain name to create the false impression that Respondent is employed by Complainant. See Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Respondent uses the disputed domain name to send fraudulent emails to students. Therefore, Respondent has registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Respondent used a privacy service to mask his identity when he registered the disputed domain name. A Respondent’s attempt to hide its identity when registering the disputed domain name supports a finding of bad faith. See Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding that the respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar was an example of bad faith conduct).
Respondent had actual knowledge of Complainant’s rights and therefore registered and is using the <hirealonghorn.net> domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent’s fraudulent email activity and use of the disputed domain name to resolve to Complainant’s website shows actual knowledge. Redirecting a user to a complainant’s website can show actual knowledge of a complainant’s mark. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hirealonghorn.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 13, 2017
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