national arbitration forum

 

DECISION

 

Tufts University v. Stevan Obradovic

Claim Number: FA0701000881136

 

PARTIES

Complainant is Tufts University (“Complainant”), represented by Gary W. Smith, of Posternak Blankstein & Lund LLP, 800 Boylston Street, Boston, MA 02199.  Respondent is Stevan Obradovic (“Respondent”), 240 West Newton Street, Boston, MA 02116.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tuftsgeek.com>, registered with Go Daddy Software, Inc.

 

PANEL

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.

 

 Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 2, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 10, 2007.

 

On January 3, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <tuftsgeek.com> domain name 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On January 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 6, 2007 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@tuftsgeek.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 14, 2007 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <tuftsgeek.com> domain name is confusingly similar to Complainant’s TUFTS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <tuftsgeek.com> domain name.

 

3.      Respondent registered and used the <tuftsgeek.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Tufts University, is a university based in Massachusetts that currently has more than 8,500 enrolled students.  Complainant has used the TUFTS mark since the University was founded in 1852, and Complainant holds numerous registered trademarks with the United States Patent and Trademark Office (“USPTO”) for the TUFTS mark (i.e. Reg. No. 1,910,498 issued August 8, 1995).

 

Respondent registered the <tuftsgeek.com> domain name on July 19, 2006.  Respondent is using the disputed domain name to redirect Internet users to Respondent’s website that commercially offers advice services for an hourly rate.  Respondent recently offered to sell the <tuftsgeek.com> domain name registration to Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant’s registrations of the TUFTS mark with the USPTO predate Respondent’s registration of the disputed domain name.  Under Policy ¶ 4(a)(i), registration of a mark with an appropriate governmental authority such as the USPTO confers rights in that mark to Complainant.  Therefore, the Panel finds that Complainant has established rights in the TUFTS mark pursuant to Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 200) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”).

 

Respondent’s <tuftsgeek.com> domain name incorporates Complainant’s TUFTS mark in its entirety and adds the term “geek.”  Complainant’s TUFTS mark remains the dominant element in the disputed domain name, and the addition of the term “geek” does not make it distinctive enough to avoid a finding of confusing similarity.  Therefore, the Panel concludes that Respondent’s <tuftsgeek.com> domain name is confusingly similar to Complainant’s TUFTS mark pursuant to 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 the complainant combined with a generic word or term); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <tuftsgeek.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Because of Respondent’s failure to respond to the Complaint, the panel assumes 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).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <tuftsgeek.com> domain name.  The WHOIS information identifies Respondent as “Stevan Obradovic,” and Complainant has alleged that Respondent does not have any established trademark rights or goodwill associated with Complainant’s TUFTS mark.  The Panel finds no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name.  Therefore, the Panel concludes that Respondent is not commonly known by the <tuftsgeek.com> domain name pursuant to Policy ¶ 4(c)(ii).  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 Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Respondent is using the <tuftsgeek.com> domain name to redirect Internet users to Respondent’s website that commercially offers advice services for an hourly rate.  Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s TUFTS mark, and such use constitutes neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent recently offered to sell the <tuftsgeek.com> domain name registration to Complainant.  The Panel finds that this provides evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

Respondent’s <tuftsgeek.com> domain name, which is confusingly similar to Complainant’s TUFTS mark, is likely to cause confusion among customers searching for information on Complainant’s university.  Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the advice services offered on Respondent’s website.  Respondent is attempting to commercially benefit from the unauthorized use of Complainant’s mark.  Therefore, the Panel finds that such registration and use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tuftsgeek.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  February 19, 2007

 

 

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