President and Fellows of Harvard College v. Sunil Shahzad
Claim Number: FA1808001802728
Complainant is President and Fellows of Harvard College (“Complainant”), represented by Thomas L. Holt of Perkins Coie LLP, Illinois, USA. Respondent is Sunil Shahzad (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harvard-edu.us>, registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 22, 2018; the Forum received payment on August 22, 2018.
On August 22, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <harvard-edu.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@harvard-edu.us. Also on August 23, 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 September 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
1. Respondent’s <harvard-edu.us> domain name is confusingly similar to Complainant’s HARVARD mark.
2. Respondent does not have any rights or legitimate interests in the <harvard-edu.us> domain name.
3. Respondent registered and uses the <harvard-edu.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Harvard College, is the oldest institution of higher learning in the United States. Complainant holds a registration for the HARVARD mark with the United States Patent and Trademark Office ("USPTO”) (Reg. No. 1,608,533 registered July 31, 1990).
Respondent registered the <harvard-edu.us> domain name on August 2, 2018, and uses it to redirect third parties from Complainant’s bank account to its own bank account.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 Panel finds that Complainant has rights in the HARVARD mark under Policy ¶ 4(a)(i) based upon its registration of the mark with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides copies of its registrations with the USPTO (e.g., Reg. No. 1,608,533 registered July 31, 1990).
Respondent’s <harvard-edu.us> domain name incorporates the HARVARD mark in its entirety, and adds a descriptive term, a hyphen, and a ccTLD. The addition of a descriptive term and a ccTLD is insufficient to distinguish a disputed domain name from a complainant’s mark. See Kurk Wasserman Consulting, L.L.C. v. ming li, FA 1782613 (Forum May 29, 2018) (“Respondent’s <lilashserum.us> domain name is confusingly similar to the LILASH mark as Respondent merely adds the descriptive term “serum” and the “.us” ccTLD to the mark.”). The addition of a hyphen is also irrelevant under Policy ¶ 4(a)(i) analysis. See Yahoo! Inc. v. HEIDI BUI, FA 1638878 (Forum Oct. 26, 2015) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Accordingly, the Panel finds that Respondent’s <harvard-edu.us> domain name is confusingly similar to Complainant’s HARVARD mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <harvard-edu.us> domain name. The WHOIS information of record identifies the Respondent as “Sunil Shahzad.” There is no evidence in the record to show that Respondent owns rights in a trademark identical to the domain name or is commonly known by the domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <harvard-edu.us> domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name); see also Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (“Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant further alleges that Respondent fails to use the <harvard-edu.us> domain name for a bona fide offering of goods and services or a legitimate noncommercial or fair use. Complainant provides a copy of an email it received, which shows that Respondent used the domain name in the email address to solicit confirmation of a bank account, presumably to obtain funds from users. The Panel finds that this use does not constitute a bona fide offering of goods and services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant claims that Respondent registered and uses the <harvard-edu.us> domain name to redirect Internet users to its website for commercial gain. Use of a disputed domain name to redirect users for commercial gain may evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). As noted above, Complainant shows Respondent uses the disputed domain name to send emails impersonating Complainant in order to solicit payments from users. Therefore, the Panel finds that Respondent attempts to commercially benefit from the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also claims that Respondent registered the <harvard-edu.us> domain name with actual knowledge of Complainant’s rights in the HARVARD mark. The Panel agrees, based on the fame of the HARVARD mark, and finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the <harvard-edu.us> domain name, further evidence of bad faith under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harvard-edu.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 18, 2018
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