President and Fellows of Harvard College v. Nina Quach / harvardedu
Claim Number: FA1811001814665
Complainant is President and Fellows of Harvard College (“Complainant”), represented by Thomas L. Holt of Perkins Coie LLP, Illinois, USA. Respondent is Nina Quach / harvardedu (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harvardedu.biz>, registered with Tucows Domains Inc..
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 1, 2018; the Forum received payment on November 1, 2018.
On November 2, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <harvardedu.biz> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 November 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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@harvardedu.biz. Also on November 5, 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 November 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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, established in 1636, is the oldest institution of higher learning in the United States and uses the HARVARD trademark to provide and market its products and services. Complainant claims rights in the HARVARD trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,608,533, registered on July 31, 1990). Respondent’s domain name <harvardedu.biz> is confusingly similar to the HARVARD trademark as it contains the trademark in its entirety, adding the descriptive term “edu” and the “.biz” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <harvardedu.biz> domain name. Respondent is not permitted or licensed to use Complainant’s HARVARD trademark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <harvardedu.biz> domain name to conduct a fraudulent email phishing scheme.
Respondent has registered and used the <harvardedu.biz> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name to conduct a fraudulent email phishing scheme. Finally, Respondent had actual knowledge of Complainant’s HARVARD trademark prior to registering the <harvardedu.biz> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the U.S. trademark registrations
- No. 1,578,190 HARVARD UNIVERSITY (word), registered January 16, 1990, for services in class 41
- No. 1,608,533 HARVARD (word), registered July 31, 1990, for services in class 41
- No. 2,498,203 HARVARD COLLEGE (word), registered October 16, 2001, for services in class 41
- No. 2,624,200 HARVARD BUSINESS REVIEW (word), registered September 24, 2002, for goods in class 16
- No. 2,699,321 HARVARD UNIVERSITY (word), registered March 25, 2003, for services in class 41
- No. 3,377,384 HARVARD (word), registered February 5, 2008, for goods in class 18
- No. 3,697,974 HARVARD WORLDWIDE (word), registered October 20, 2009, for services in classes 36 and 41
- No. 4,190,797 HARVARD BUSINESS REVIEW (word), registered August 14, 2012, for goods in class 9 and services in class 41
- No. 5,112,523 HARVARD REVIEW (word), registered January 3, 2017, for goods in class 16
The Respondent registered the <harvardedu.biz> domain name on October 22, 2018.
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 Complainant has registered the HARVARD trademark with the USPTO (e.g., Reg. No. 1,608,533, registered on July 31, 1990).
The Panel finds that registration of a trademark with the USPTO is sufficient to establish rights in a trademark for the purposes of Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The relevant part of the disputed domain name is “harvardedu”. The addition of the generic Top-Level Domain “.biz” is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Panel notes that the disputed domain name <harvardedu.biz> is confusingly similar to the Complainant’s trademark HARVARD, as the domain name incorporates the trademark in its entirety while only adding “edu”.
The addition of the generic term “edu” is definitely not enough to differentiate the disputed domain name from the Complainant’s trademark. The said generic term is in fact related to the Complainant’s services, as “edu” is a well-known acronym for “education”, as well as being the top-level domain for educational institutions – such as the Complainant. 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).
The Panel concludes that the disputed domain name <harvardedu.biz> is confusingly similar to the trademark HARWARD in which the Complainant has rights (Policy ¶ 4(a)(i)).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); 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 has no rights or legitimate interests in the <harvardedu.biz> domain name as Respondent is not authorized to use Complainant’s HARVARD trademark and is not commonly known by the disputed domain name.
Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(ii). The Panel notes that the Registrar identifies the Respondent as “Nina Quach / harvardedu”. As Respondent has not provided any further information, and as it is obvious that Respondent is not authorized by Complainant to use the HARVARD trademark, the Panel concludes that Respondent is not commonly known by the disputed domain name as such. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name).
Moreover, Complainant argues that Respondent is not using the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to impersonate Complainant as part of a fraudulent scheme. Use of an email address associated with the disputed domain name to pass off as a complainant in furtherance of phishing is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”).
The Panel agrees that Respondent’s use of the <harvardedu.biz> disputed domain name indicates clearly that Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent has registered and uses the <harvardedu.biz> domain name in bad faith. Complainant alleges Respondent attempts to disrupt Complainant’s business. Specifically, Complainant argues that Respondent is attempting to impersonate Complainant as part of an email phishing scheme, presumably for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
The Panel notes that the Respondent uses an email address associated with the disputed domain name to impersonate Complainant and send phishing e-mails to Complainant’s customers, presumably designed to solicit information under false pretenses, asking for complete information related to the Form W-9. As Form W-9 requires listing a tax ID or Social Security number, both the person filling it out and the company receiving the completed form must guard it carefully during transmission and after receipt to protect against identity theft. The Panel concludes that it is a fact that the Respondent had no rights to identify itself as the Complainant, and thereby collecting tax ID and/or Social Security numbers from physical persons and/or companies related to the Complainant.
The Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
The said use also clearly indicates that Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark, which also indicates bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harvardedu.biz> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 9, 2018
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