Maricopa County Community College
District v. Asia Ventures, Inc.
Claim
Number: FA0508000540758
Complainant is Maricopa County Community College District (“Complainant”),
represented by Christopher T. Pierson, of Lewis and Roca LLP,
40 North Central Avenue, Phoenix, AZ 85004.
Respondent is Asia Ventures, Inc.
(“Respondent”), GPO 11136, Central, HK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <riosaladocollege.com>, registered with The
Registry At Info Avenue d/b/a IA Registry.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
15, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 17, 2005.
On
August 16, 2005, The Registry At Info Avenue d/b/a IA Registry confirmed by
e-mail to the National Arbitration Forum that the <riosaladocollege.com>
domain name is registered with The Registry At Info Avenue d/b/a IA Registry
and that Respondent is the current registrant of the name. The Registry At Info Avenue d/b/a IA
Registry has verified that Respondent is bound by the The Registry At Info
Avenue d/b/a IA Registry registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
August 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 8, 2005 by which Respondent could file a response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@riosaladocollege.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 15, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 <riosaladocollege.com>
domain name is confusingly similar to Complainant’s RIO SALADO COMMUNITY
COLLEGE mark.
2. Respondent does not have any rights or
legitimate interests in the <riosaladocollege.com> domain name.
3. Respondent registered and used the <riosaladocollege.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Maricopa Community College District, is an educational institution located
within Maricopa County, Arizona.
Complainant is the country’s largest community college district with an
enrollment of over a quarter of a million students. Complainant founded Rio Salado Community College in 1978 and
continuously has provided educational services under the RIO SALADO COMMUNITY
COLLEGE mark for over twenty-five years.
Respondent
registered the <riosaladocollege.com> domain name on December 25,
2001. Respondent is using the disputed
domain name to redirect Internet users to Respondent’s commercial website that
advertises services and provides links for competing higher education services.
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 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 (Nat. Arb. 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.”).
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.
Under Policy ¶
4(a)(i), a complainant need not hold a registered trademark to establish rights
in a mark. Complainant’s RIO SALADO COMMUNITY
COLLEGE mark has acquired secondary meaning through Complainant’s continuous
use of the mark in commerce since 1978 in connection with Complainant’s higher
education services. Thus, Complainant
has established common law rights in the RIO SALADO COMMUNITY COLLEGE
mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant’s trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also 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
Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
the said name [<keppelbank.com>] in connection with its banking business,
it has acquired rights under the common law).
Complainant
contends that Respondent’s <riosaladocollege.com> domain name is
confusingly similar to Complainant’s mark.
The disputed domain name features the majority of the distinguishing
characteristics contained in Complainant’s mark while omitting the term
“community.” Panels have found that the
omission of a term from an established mark, while retaining the distinguishing
characteristics, fails to sufficiently distinguish the disputed domain name
pursuant to Policy ¶ 4(a)(i). See
Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum
Jan. 16, 2001) (finding that the domain name <wellness-international.com>
is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see
also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr.
20, 2001) (finding that the <westjets.com> domain name is confusingly
similar to the complainant’s mark, where the complainant holds the WEST JET AIR
CENTER mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <riosaladocollege.com>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel infers that Respondent does not have
rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that respondent does not have
rights or legitimate interests with respect to the domain name, it is incumbent
on respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent does not have rights or legitimate interests is sufficient to
shift the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is
using the confusingly similar domain name to operate a website that features
links to various competing websites for which respondent presumably receives
referral fees. Such diversionary use
for Respondent’s own commercial gain is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb.
Forum May 12, 2003) (finding that the respondent did not have rights or
legitimate interests in a domain name that used the complainant’s mark and
redirected Internet users to website that pays domain name registrants for
referring those users to its search engine and pop-up advertisements); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding
that the respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use of the domain
name).
Furthermore, no affirmative
evidence has been set forth showing that Respondent is commonly known by the
disputed domain name. In the absence of
such evidence, the Panel finds that Respondent has failed to establish rights
or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that the respondent does not have rights in a domain name
when the respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <riosaladocollege.com> domain name, which is confusingly
similar to Complainant’s RIO SALADO COMMUNITY COLLEGE mark, to redirect
Internet users to Respondent’s commercial website that features links to
services that compete with Complainant’s services. The Panel finds that such use constitutes disruption and is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding the respondent acted in bad faith by attracting Internet users to a
website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to a
competing website. Because Respondent’s
domain name is confusingly similar to Complainant’s RIO SALADO COMMUNITY
COLLEGE mark, Internet users accessing Respondent’s domain name may become
confused as to Complainant’s sponsorship of and affiliation with the resulting
website. Thus, Respondent’s use of the <riosaladocollege.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant’s mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Drs. Foster &
Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad
faith where the respondent directed Internet users seeking the complainant’s
site to its own website for commercial gain).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <riosaladocollege.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
September 28, 2005
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