President and Fellows of Harvard College v. Belfer Center
Claim Number: FA1902001830439
Complainant is President and Fellows of Harvard College (“Complainant”), represented by Thomas L. Holt of Perkins Coie LLP, Illinois, USA. Respondent is Belfer Center (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <belfercenter.net>, registered with NameCheap, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2019; the Forum received payment on February 19, 2019.
On February 19, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <belfercenter.net> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2019 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@belfercenter.net. Also on February 21, 2019, 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 March 14, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is the oldest institution of higher learning in the United States. The Belfer Center is a hub of Complainant’s Harvard Kennedy School’s research, teaching, and training in international security and diplomacy, environmental and resource issues, and science and technology policy. Complainant has established common law rights in the BELFER CENTER mark. Respondent’s <belfercenter.net>[i] domain name is confusingly similar to Complainant’s mark as it incorporates entirely the BELFER CENTER mark and merely adds the “.net” generic top-level domain (gTLD).
2. Respondent lacks rights and legitimate interest in the <belfercenter.net> domain name as Complainant has been using the BELFER CENTER mark exclusively and continuously for over 20 years and has not licensed or authorized Respondent to use or register domain names incorporating the mark.
3. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name as Respondent attempts to divert Internet users from Complainant’s website to the <belfercenter.net> domain name.
4. Respondent registered and uses the domain name in bad faith as Respondent uses the <belfercenter.net> domain name to redirect Internet users searching for Complainant’s website back to Complainant’s own website.
5. Based on the fame and widespread use of Complainant’s mark, Respondent had actual knowledge of Complainant’s rights in the BELFER CENTER mark at the time of registration, which demonstrates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law rights for the BELFER CENTER mark. Respondent’s domain name is confusingly similar to Complainant’s BELFER CENTER mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <belfercenter.net> domain name and that Respondent registered and uses the 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 holds common law rights in the BELFER CENTER mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant has provided evidence that: 1) it has used the BELFER CENTER mark in connection with its Harvard Kennedy School since 1997; 2) it has been recognized six years in a row as the world’s #1 University Affiliated Think Tank by the University of Pennsylvania’s Think Tank and Civil Societies Program; and 3) it has promoted its work through publications and policy discussions, workshops, seminars, and conferences. The Panel holds that Complainant does have common law rights in the BELFER CENTER name for the purposes of Policy ¶ 4(a)(i).
Complainant contends Respondent’s <belfercenter.net> domain name is confusingly similar to Complainant’s BELFER CENTER mark as it wholly incorporates the BELFER CENTER mark and merely adds the “.net” gTLD. The addition of a gTLD to a mark incorporated in its entirety can be found to be identical to a complainant’s mark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Therefore, Respondent’s <belfercenter.net> domain name is identical or confusingly similar to Complainant’s BELFER CENTER mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <belfercenter.net> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent is not commonly known by the <belfercenter.net> domain name as Complainant has been using the BELFER CENTER mark continuously and exclusively for over 20 years and Respondent is not licensed or authorized to use or register domain names incorporating the mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is has rights or legitimate interest in a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information identifies the registrant as “Belfer Center.” While Respondent appears to be commonly known by the <belfercenter.net> domain name, it has failed to provide affirmative evidence to confirm the WHOIS information. 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). Therefore, the Panel holds that Respondent is not commonly known by the <belfercenter.net> domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent uses the <belfercenter.net> domain name to divert Internet users to Respondent’s website in competition with Complainant. Use of a domain name incorporating the mark of another to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides the Declaration of Josh Burek who alleges Respondent used the <belfercenter.net> domain name to issue a fake press release purporting to be from Complainant that drew considerable attention in policy, government, and media circles. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent uses the <belfercenter.net> domain name to redirect Internet users back to Complainant’s own website. Using a confusingly similar domain name to resolve to a complainant’s own website can support a finding of bad faith 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).”). Complainant provides the Declaration of Josh Burek who alleges the <belfercenter.net> domain name now redirects to Complainant’s own website. As such, the Panel holds that Respondent registered and uses the <belfercenter.net> domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent was aware of Complainant’s rights in the BELFER CENTER mark at the time of registration of the <belfercenter.net> domain name. Actual knowledge of a complainant’s mark prior to registering a domain name incorporating that mark can support a finding of bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Complainant contends it cannot be reasonably argued that Respondent was unaware of Complainant’s rights in the mark at the time of registration based on Complainant’s consistent and prominent use of the mark. The Panel agrees.
The Panel finds Complainant has satisfied 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 <belfercenter.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 21, 2019
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