American University v. Richard Cook
Claim Number: FA0311000208629
Complainant is American University, Washington, DC (“Complainant”) represented by Sherri N. Blount, of Fitch, Even, Tabin & Flannery, 1801 K Street NW, Suite 401L, Washington, DC 20006. Respondent is Richard Cook (“Respondent”), PO Box 1445, Kingsland, GA 31548.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allamericanuniversity.us>, registered with Go Daddy Software, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 6, 2003; the Forum received a hard copy of the Complaint on November 10, 2003.
On November 7, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <allamericanuniversity.us> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 1, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On December 9, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 makes the following assertions:
1. Respondent’s <allamericanuniversity.us> domain name is confusingly similar to Complainant’s AMERICAN UNIVERSITY mark.
2. Respondent does not have any rights or legitimate interests in the <allamericanuniversity.us> domain name.
3. Respondent registered and/or used the <allamericanuniversity.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an internationally recognized university that was chartered by an Act of the U.S. Congress in 1893. Since that time, Complainant has used the AMERICAN UNIVERSITY mark to market the educational services Complainant provides to undergraduate and graduate students. Complainant filed a trademark application for the AMERICAN UNIVERSITY mark with the U.S. Patent and Trademark Office (“USPTO”) on January 21, 2000 (App. No. 75,901,070). Complainant also holds several registrations worldwide that incorporate the AMERICAN UNIVERSITY mark, including, a European Community Trademark for the AU AMERICAN UNIVERSITY mark registered with the Office for Harmonization in the Internal Market (Reg. No. 002260099 – registered July 18, 2002).
Respondent registered the <allamericanuniversity.us> domain name on February 19, 2003. Respondent’s domain name resolves to a website that portrays itself as “All American University” and provides links to <faringtonuniversity.org> and <amsteaduniversity.org>, which sell degrees online for the undergraduate, master, and doctorate levels.
Respondent, in a previous dispute, was ordered to transfer the <allamericanuniversity.com>, <allamericanuniversity.net>, <allamericanuniversity.org>, <allamericanuniversity.biz>, and <allamericanuniversity.info> domain names to Complainant. Respondent was using four of the five domain names to sell online diplomas. See Am. Univ. v. Cook, FA 159549 (Nat. Arb. Forum Aug. 21, 2003).
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the 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.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Identical and/or Confusingly Similar
Complainant has established common law rights in the AMERICAN UNIVERSITY mark through its use of the mark in commerce since 1893. Complainant has also established statutory rights that incorporate the AMERICAN UNIVERSITY mark through the registration of marks with recognized trademark offices such as the Office for Harmonization in the Internal Market. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the UDRP does not require that the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction).
Respondent’s <allamericanuniversity.us> domain name is confusingly similar to Complainant’s AMERICAN UNIVERSITY mark because the domain name incorporates Complainant’s mark. Respondent has simply added the generic word “all” to Complainant’s mark and added the country code “.us.” Neither the addition of the generic word “all” nor the attachment of the country code “.us” to Complainant’s mark is sufficient to distinguish Respondent’s domain name. Both parties provide undergraduate and graduate level diplomas; therefore, Respondent causes confusion for Internet users because they might mistakenly assume that Respondent’s website is associated with Complainant. Respondent’s attempt to distinguish the <allamericanuniversity.us> domain name from Complainant’s mark is not sufficient to circumvent Complainant’s rights in the AMERICAN UNIVERSITY mark nor does it avoid the confusingly similar element of Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has submitted uncontested evidence that Respondent has used the goodwill associated with Complainant’s mark in an attempt to commercially benefit from such use. Respondent’s use of the <allamericanuniversity.us> domain name to sell diplomas is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).
Furthermore, the WHOIS information for the <allamericanuniversity.us> domain name lists Respondent, Richard Cook, as the registrant; however, it fails to establish Respondent as an “individual, business, or other organization” commonly known by the domain name. Respondent is not affiliated with Complainant and the evidence does not establish that Respondent is authorized or licensed to register or use domain names that incorporate the AMERICAN UNIVERSITY mark. Therefore, Respondent does not have rights or legitimate interests in the <allamericanuniversity.us> domain name pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply), see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Finally, Respondent’s failure to dispute the allegations in the Complaint further suggests that Respondent lacks rights or legitimate interests in the <allamericanuniversity.us> domain name pursuant to Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered the <allamericanuniversity.us> domain name and incorporated Complainant’s mark with the intent to commercially benefit from the goodwill associated with Complainant’s mark. Respondent offers diplomas for undergraduate and graduate level students via its domain name. Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith. See Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to UDRP ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to UDRP ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <allamericanuniversity.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 22, 2003
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page