The City University of New York v. Daniel Chow c/o Registrant
Claim Number: FA0609000802352
Complainant is The City University of New York (“Complainant”), represented by Jane E. Davis, of The City University of New York, Office of the General Counsel, 535 E. 80th Street, New York 10021. Respondent is Daniel Chow c/o Registrant (“Respondent”), P.O. Box No. 71826, KCPO, Hong Kong HK 852.
The domain name at issue is <baruchcollege.com>, registered with Onlinenic, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 22, 2006.
On September 22, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <baruchcollege.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name). Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 September 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 18, 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@baruchcollege.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <baruchcollege.com> domain name is identical to Complainant’s BARUCH COLLEGE mark.
2. Respondent does not have any rights or legitimate interests in the <baruchcollege.com> domain name.
3. Respondent registered and used the <baruchcollege.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The City University of New York, is the largest urban university in the United States and the third-largest public university system. Over 400,000 students, including adult and continuing education students, attend classes at one of Complainant’s nineteen campuses within New York City. Complainant has continuously used the BARUCH COLLEGE mark since 1953, when its Board of Trustees renamed the School of Business and Civic Administration the “Bernard M. Baruch School of Business and Civic Administration of the City College of the College of the City of New York.” Since 1968, the school has simply been known as BARUCH COLLEGE and has been an independent senior college in Complainant’s university system. Complainant’s school under the BARUCH COLLEGE mark currently offers twenty-three undergraduate majors, sixty minors, and thirty graduate-level programs, as well as numerous adult and continuing education courses. The school is also home to the largest fully accredited business school in the United States. According to Complainant’s enrollment records, in Fall 2005, approximately 15,756 students attended its educational institution under the BARUCH COLLEGE mark.
Respondent’s <baruchcollege.com> domain name, which it registered on November 24, 2001, resolves to a commercial search engine displaying links to various content, including links to other educational institutions.
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.
The Panel finds that Complainant is not required to own a trademark registration in order to establish rights in the BARUCH COLLEGE mark pursuant to Policy ¶ 4(a)(i). See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also 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).
Complainant has continuously used the BARUCH COLLEGE mark
since the 1950s to refer to one of its educational institutions. This educational institution is home to the
largest fully accredited business school in the United States and offers
numerous undergraduate and graduate degree programs. As a result of such continuous and extensive use, the Panel finds
that Complainant’s BARUCH COLLEGE mark has acquired secondary meaning in
connection with Complainant’s college and therefore, Complainant has
established common law rights in the BARUCH COLLGE mark under Policy ¶
4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104
(Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated
common law rights in the ATPE mark through continuous use of the mark in
connection with educational services for over twenty-five years); see also Quality Custom Cabinetry, Inc.
v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7,
2002) (finding that the complainant established common law rights in the mark
through continuous use of the mark since 1995 for the purpose of Policy ¶
4(a)(i)).
As the <baruchcollege.com>
domain name incorporates Complainant’s BARUCH COLLEGE mark in its entirety and
merely eliminates the space between words and adds the generic top-level domain
“.com,” Respondent has failed to sufficiently distinguish the disputed domain
name from Complainant’s mark.
Consequently, the Panel holds that the <baruchcollege.com> domain name is identical to the mark pursuant
to Policy ¶ 4(a)(i). See Blue Sky Software Corp. v. Digital
Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to the complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference"); see also Croatia
Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name
<croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES
trademark).
The Panel concludes that Complainant has satisfied this element of the Policy.
Complainant alleges that Respondent lacks rights and
legitimate interests in the <baruchcollege.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 it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima
facie case that the respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the
respondent to show that it does have rights or legitimate interests in a domain
name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
contested domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); see
also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20,
2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the domain name under the name “Daniel
Chow c/o Registrant,” and there is no other evidence in the record implying that
Respondent is commonly known by the <baruchcollege.com>
domain name. Therefore, Respondent has
not established rights or legitimate interests in the contested domain name
pursuant to Policy ¶ 4(c)(ii). See The Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly
known by the disputed domain names where the WHOIS information, as well as all
other information in the record, gave no indication that the respondent was
commonly known by the disputed domain names, and the complainant had not
authorized the respondent to register a domain name containing its registered
mark); see also M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other
evidence in the record).
Furthermore, Respondent operates a website at the <baruchcollege.com> domain name
displaying links to various content unrelated to Complainant. In Golden Bear Int’l, Inc. v. Kangdeock-ho,
FA 190644 (Nat. Arb. Forum Oct. 17, 2003), the respondent registered the
<nicklausgolf.com> domain name, which included the complainant’s NICKLAUS
mark, and used it to operate a website displaying links to third-party
websites. The panel held that the
respondent’s diversion of Internet users to websites unrelated to the
complainant’s mark did not represent 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). Because Respondent is also diverting Internet users
seeking information on Complainant’s educational institution under the BARUCH
COLLEGE mark to a website containing links to third-party websites,
Respondent’s use of the disputed domain name provides evidence that it lacks
rights and legitimate interests in the <baruchcollege.com>
domain name pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
The Panel concludes that Complainant has satisfied this element of the Policy.
Respondent is using the <baruchcollege.com> domain name, which is identical to Complainant’s
BARUCH COLLEGE mark, to redirect Internet users seeking information on
Complainant’s educational institution to a website displaying links to
unrelated content. In Kmart v. Khan, FA 127708 (Nat. Arb.
Forum Nov. 22, 2002), the respondent registered the <bigkmart.com> domain
name and was using it to operate a website featuring links to various content
unrelated to the complainant. The Panel
inferred that the respondent made a profit from the amount of Internet traffic
it diverted to other websites, and that therefore, the respondent was
“commercially benefiting from the likelihood of confusion it has created
through the use of Complainant’s mark” in violation of Policy ¶ 4(b)(iv). Id. Similarly, Respondent is diverting Internet
users to websites unrelated to Complainant’s BARUCH COLLEGE mark for its own
commercial gain. The Panel infers that
Respondent is profiting from redirecting Internet users to these third-party
websites. As a result, the Panel finds
that Respondent has registered and is using the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA
672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered
and used the <myspacebot.com> domain name in bad faith by diverting
Internet users seeking the complainant’s website to its own website for
commercial gain because the respondent likely profited from this diversion
scheme).
The Panel concludes that Complainant has satisfied this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baruchcollege.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 7, 2006
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