Campus Circle, Incorporated v. MustNeed.com
Claim Number: FA0607000744613
Complainant is Campus Circle, Incorporated (“Complainant”), represented by Sandra Pedersen, of Wildman, Harrold, Allen & Dixon LLP, 225 West Wacker Drive, Suite 2900, Chicago, IL 60606. Respondent is MustNeed.com (“Respondent”), P.O. Box 3506, Taipei, Taiwan 100-00 TW.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <campuscircle.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 10, 2006.
On July 10, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <campuscircle.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 July 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 3, 2006 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@campuscircle.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 9, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <campuscircle.com> domain name is identical to Complainant’s CAMPUS CIRCLE mark.
2. Respondent does not have any rights or legitimate interests in the <campuscircle.com> domain name.
3. Respondent registered and used the <campuscircle.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Campus Circle, Incorporated, publishes alternative entertainment newspapers that cater to young adults aged 18 to 34 years old. In addition to traditional paper copies, Complainant’s CAMPUS CIRCLE newspaper is also available online at the <campuscircle.net> domain name.
Complainant has continuously used the CAMPUS CIRCLE mark in connection with its newspapers since 1990. Complainant has also registered the CAMPUS CIRCLE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,335,704 issued March 28, 2000).
Respondent registered the <campuscircle.com> domain name on September 7, 2001. The disputed domain name resolves to a web directory containing various links to third-party websites that have no connection or affiliation with Complainant.
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.
Due to Complainant’s registration of the CAMPUS CIRCLE mark with the USPTO, Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <campuscircle.com> domain name
contains Complainant’s entire registered CAMPUS CIRCLE mark and merely adds the
generic top-level domain (“gTLD”) “.com,” which most previous panels have held
is irrelevant when conducting a Policy ¶ 4(a)(i) analysis. The Panel finds that the mere addition of a
gTLD is not enough for Respondent to sufficiently distinguish the <campuscircle.com>
domain name from Complainant’s CAMPUS CIRCLE mark and as a result, the disputed
domain name is identical to the mark under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants . . .
."); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name,
<kioti.com>, is identical to Complainant's KIOTI mark because adding a
top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <campuscircle.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the <campuscircle.com>
name. See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise); see also Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). However, the Panel will now examine the record to determine if
Respondent has rights or legitimate interests under Policy ¶ 4(c).
Because the WHOIS database lists the registrant of the <campuscircle.com> domain name as “Mark Kraemer, P.C.,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <campuscircle.com> domain name, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Systems, LLC v. Snowden, FA 715089 (Nat. Arb. Forum Jul. 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also 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).
Respondent’s <campuscircle.com> domain name
resolves to a web page displaying links to various third-party websites with no
connection to Complainant. In The
Royal Bank of Scotland Group plc v. Demand Domains, FA 714952 (Nat. Arb.
Forum Aug. 2, 2006), the respondent was operating a commercial web directory at
a domain name confusingly similar to the complainant’s PRIVILEGE mark. The panel in that case found that this type
of use was 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), as the respondent presumably earned “click-through” fees for each
consumer it redirected to other websites.
In the instant case, Respondent is also likely profiting from
“click-through” fees, and the Panel finds that Respondent is not using the <campuscircle.com>
domain name in connection with 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 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).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel concludes that 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 <campuscircle.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 23, 2006
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