The Trustees of Davidson College v. Somsak Jinaphan / iDigitalAsset LLC
Claim Number: FA1803001774657
Complainant is The Trustees of Davidson College (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Somsak Jinaphan / iDigitalAsset LLC (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <davidson.college>, registered with eNom, 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 March 6, 2018; the Forum received payment on March 6, 2018.
On March 6, 2018, eNom, LLC confirmed by e-mail to the Forum that the <davidson.college> 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 March 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2018 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@davidson.college. Also on March 6, 2018, 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 April 3, 2018, 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 is a group of trustees that is responsible for the oversight, management, and operation of Davidson College. Established in 1837, Davidson College is a liberal arts college in North Carolina that is dedicated to assisting students in developing humane instincts and disciplined and creative minds for lives of leadership and service. Through its intellectually rigorous academic courses and Division I athletics program, Davidson College attracts and serves young adults from across the nation as well as around the world. Davidson’s reputation for excellence is unmatched, and the loyalty and reverence for the school by students, alumni, faculty, staff, and family of those individuals is immeasurable. Complainant has rights in the DAVIDSON mark through its trademark registrations in the United States in 2003.
Complainant alleges that the disputed domain name is identical to its DAVIDSON mark as Respondent merely adds the “.college” generic top level domain (“gTLD”) to the mark. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not authorized to use Complainant’s DAVIDSON mark and is not commonly known by the disputed domain name. Additionally, Respondent previously hosted pay-per-click links at the disputed domain name. Currently, Respondent is attempting to sell the disputed domain name which further indicates Respondent lacks rights and legitimate interests. Complainant cites UDRP precedents to support its position.
Respondent registered and is using the disputed domain name in bad faith as Respondent attempted to sell the disputed domain name. Respondent also previously attempted to divert users to the disputed domain name that featured pay-per-click links, through which Respondent presumably commercially benefits from user confusion. Furthermore, Respondent failed to provide complete and correct WHOIS information when it registered the disputed domain name. Finally, Respondent had actual knowledge of Complainant’s rights in the DAVIDSON mark at the time of registration and subsequent use. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark DAVIDSON, with rights dating back to 1995. The mark is used to market Complainant’s college and related educational activities.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is attempting to sell the disputed domain names and has used it to resolve to a website that offers links to products and services unrelated to Complainant.
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.”).
The disputed domain name is identical to Complainant’s DAVIDSON mark, as Respondent merely adds the gTLD “.college” to the mark. Addition of a gTLD, especially one that is descriptive of a complainant’s business, is an insufficient change under Policy ¶ 4(a)(i) to distinguish the resultant domain name from the mark. See Avaya Inc. v. Robert Bird, FA 1603045 (Forum Mar. 12, 2015) (“The Panel agrees that the disputed domain names are confusingly similar to the AVAYA mark pursuant to Policy ¶ 4(a)(i) as the added terms are descriptive of and related to Complainant’s offerings, and in the cases of <avaya.help>, and <avayaphone.systems>, the added gTLD adds to the confusion . . .”). Therefore, the Panel finds that the disputed domain name is identical to Complainant’s DAVIDSON mark per Policy ¶ 4(a)(i).
Respondent is not authorized to use Complainant’s DAVIDSON mark. Further, Respondent is not commonly known by the disputed domain name: in cases where a respondent fails to submit a response, WHOIS information may be used to determine whether respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Complainant provides a copy of the WHOIS information for the disputed domain name which identifies Respondent as “Somsak Jinaphan / iDigitalAsset LLC.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent previously used the disputed domain name to host pay-per-click links: Complainant provides a screenshot of the disputed domain name dated November 27, 2017, which features a variety of hyperlinks to products and services not related to Complainant. Featuring pay-per-click links at a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Thus the Panel finds that Respondent’s use of the disputed domain name to feature unrelated hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Furthermore, Respondent attempts to sell the disputed domain name. Complainant provides a screenshot of a website that indicates the disputed domain name is for sale and directs users to contact the domain holder for information. Evidence of a respondent’s intent to sell a disputed domain name may support a finding that the respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Accordingly, the Panel finds that Respondent’s attempts to sell the disputed domain name indicate that Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent (who did not submit a Response) 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.
Indeed, as already noted, Respondent attempts to sell the disputed domain name. Attempting to sell a disputed domain name may demonstrate bad faith registration and use under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Thus, the Panel finds that Respondent’s attempts to sell the disputed domain name demonstrate bad faith registration and use per Policy ¶ 4(b)(i).
Additionally, Respondent formerly attempted to attract users to the resolving website and commercially benefit from a parked page which hosted pay-per-click hyperlinks not related to Complainant. Featuring a parked page with pay-per-click hyperlinks may demonstrate bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Thus, the Panel finds that Respondent’s hosting of pay-per-click hyperlinks at the disputed domain name indicates bad faith per 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 <davidson.college> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 4, 2018
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