President and Fellows of Harvard College v. Ryan Page
Claim Number: FA1903001836579
Complainant is President and Fellows of Harvard College (“Complainant”), represented by Thomas L. Holt of Perkins Coie LLP, Illinois, USA. Respondent is Ryan Page (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harvardpurchasing.com> registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 March 29, 2019; the Forum received payment on March 29, 2019.
On March 30, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <harvardpurchasing.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 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@harvardpurchasing.com. Also on April 1, 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 April 25, 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. Established in 1636, Complainant is the oldest institution of higher learning in the United States. Complainant asserts rights in the HARVARD marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,608,533, registered July 31, 1990). Respondent’s <harvardpurchasing.com>[i] is confusingly similar to Complainant’s HARVARD mark as the domain name wholly incorporates the HARVARD mark with the addition of the descriptive term “purchasing” and the generic top level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <harvardpurchasing.com> domain name. Respondent is not authorized or licensed to use Complainant’s HARVARD mark.
3. Additionally, Respondent does not use the <harvardpurchasing.com> domain name for a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to pose as Complainant and place fraudulent orders with third parties.
4. Respondent both registered and uses the <harvardpurchasing.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the domain name, diverting third parties.
5. Finally, Respondent had actual knowledge of Complainant’s rights in the HARVARD mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HARVARD mark. Respondent’s domain name is confusingly similar to Complainant’s HARVARD mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <harvardpurchasing.com> 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the HARVARD mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,608,533, registered July 31, 1990). Registration of a mark with a governmental authority is sufficient to establish rights in the mark for purposes of Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Thus, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <harvardpurchasing.com> is confusingly similar to Complainant’s HARVARD mark because the domain name wholly incorporates the HARVARD mark with the addition of the descriptive term “purchasing” and the ”.com” gTLD. The addition of a descriptive term and gTLD to a complainant’s mark is insufficient to differentiate a domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Thus, the <harvardpurchasing.com> domain name is confusingly similar to Complainant’s HARVARD mark per Policy ¶ 4(a)(i).
The Panel finds
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <harvardpurchasing.com> 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 lacks rights or legitimate interest in the <harvardpurchasing.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been given license or consent to use the HARVARD mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a 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). Additionally, lack of authorization to use a complainant’s mark may indicate the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <harvardpurchasing.com> domain name lists the registrant as “Ryan Page,” and there is no other evidence to suggest that Respondent was authorized to use the HARVARD mark. Therefore, Respondent is not commonly known by the <harvardpurchasing.com> domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent does not use the <harvardpurchasing.com> domain name for a legitimate noncommercial or fair use because Respondent intends to derive commercial gain from the <harvardpurchasing.com> domain name by impersonating agents of Complainant via email to fraudulently solicit purchases. This use to send fraudulent emails purportedly from agents’ of a complainant 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)). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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 an email allegedly sent by Respondent posing as “Sara Malconian” from “smalconian@harvard.edu” or “smalconian@harvardpurchasing.com”. Thus, Respondent does not use the <harvardpurchasing.com> domain name for to be either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and used the <harvardpurchasing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name infringes on the HARVARD mark and uses the domain name to redirect third parties for its own commercial gain by impersonating agents of Complainant via email to fraudulently solicit purchases. Use of an e-mail address associated with a domain name to pass itself off as a complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv). See 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 per Policy ¶ 4(b)(iv)). The record contains an email presumably sent by Respondent posing as “Sara Malconian” from “smalconian@harvard.edu” or “smalconian@harvardpurchasing.com” attempting to solicit services. Therefore, the Panel agrees that Respondent both registered and used the <harvardpurchasing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues Respondent had actual notice of Complainant’s rights in the HARVARD mark because the HARVARD mark enjoys such fame and repute that it cannot be reasonably argued that Respondent was not aware of Complainant’s rights when registering the <harvardpurchasing.com> domain name in 2019. Actual knowledge of a complainant’s mark may be established where the mark is famous, thus indicating bad faith under Policy ¶ 4(a)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). Therefore, the Panel holds that Respondent had actual notice of rights in the HARVARD mark prior to registration of the <harvardpurchasing.com> domain name per Policy ¶ 4(a)(iii).
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 <harvardpurchasing.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 30, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page