University of Indianapolis v. Whois Agent
Claim Number: FA1404001556305
Complainant is University of Indianapolis (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Whois Agent (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uindy.com>, registered with Moniker Online Services LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2014; the National Arbitration Forum received payment on April 28, 2014.
On April 29, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <uindy.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@uindy.com. Also on May 2, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
i. Complainant, University of Indianapolis, offers more than 80 undergraduate programs and 27 master’s degree programs, and five doctoral programs to students from 55 different nations around the world.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the UINDY mark (e.g., Reg. No. 2,755,827, registered August 26, 2003).
iii. Respondent’s <uindy.com> domain name is identical to Complainant’s UINDY mark.
iv. Respondent has no rights or legitimate interests in the disputed domain name.
v. Respondent is not commonly known by the disputed domain name.
vi. Respondent is using the <uindy.com> domain name to divert Internet users to a commercial website that displays links to third-party websites, including links to direct competitors of Complainant.
vii. Respondent forwards some Internet users that enter the term <uindy.com> into their browser URL address bar to the website at <http://yourpcbundle.com/us/22/index.php?s-2169158604> where visitors are told that their flash player needs to be updated and are encouraged to install “Flash Player Pro.”
viii. Respondent registered and is using the disputed domain name in bad faith.
ix. Respondent’s disputed domain name resolves to a website that prominently features a search engine with numerous links to various goods and services that are identical to, and compete with, Complainant’s goods and services.
x. Respondent has constructive, if not actual, notice of Complainant’s UINDY mark.
xi. Respondent registered the <uindy.com> domain name on August 20, 2006.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the UINDY mark. Respondent’s domain name is confusingly similar to Complainant’s UINDY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <uindy.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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."
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.
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.”).
Complainant asserts that it offers more than 80 undergraduate programs and 27 master’s degree programs, and five doctoral programs to students from 55 different nations around the world. Complainant owns trademark registrations with the USPTO for the UINDY mark (e.g., Reg. No. 2,755,827, registered August 26, 2003). Although Respondent resides in China, Complainant is not required to register its mark in the country of Respondent’s residence under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel determines that Complainant’s USPTO registration of the UINDY mark demonstrates that it has rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant claims that Respondent’s <uindy.com> domain name is identical to Complainant’s UINDY mark. Respondent’s addition of a generic top-level domain (“gTLD”) does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a gTLD is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel holds that Respondent’s <uindy.com> domain name is identical to Complainant’s UINDY mark according to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent is not commonly known by the disputed domain name. Complainant contends that Respondent has no trademark or intellectual property rights in the disputed domain name. Complainant further argues that Respondent is not and has never been a licensee of Complainant. The registrant of the <uindy.com> domain name is identified as “Whois Agent” in the WHOIS information. Based on the relevant evidence in the record, the Panel finds that Respondent is not commonly known by the <uindy.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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).
Complainant claims that Respondent is using the <uindy.com> domain name to divert Internet users to a commercial website that displays links to third-party websites, including links to direct competitors of Complainant. Respondent’s domain name provides competing links titled “University College Degree,” “Indianapolis Indiana Colleges,” “University Indianapolis,” and others. Complainant asserts that Respondent derives commercial benefit from its offering of linked websites. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that, because “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Thus, the Panel holds that Respondent is not using the <uindy.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondent forwards some Internet users that enter the term <uindy.com> into their browser URL address bar to the website at <http://yourpcbundle.com/us/22/index.php?s-2169158604> where visitors are told that their flash player needs to be updated and are encouraged to install “Flash Player Pro.” Complainant alleges that Internet users choosing to install “Flash Player Pro” actually end up downloading malware onto their computers. In Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009), the panel found that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Thus, the Panel holds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent’s disputed domain name resolves to a website that prominently features a search engine with numerous links to various goods and services that are identical to, and compete with, Complainant’s goods and services. Respondent’s <uindy.com> domain name leads to a webpage offering competing links such as “At Home College,” “On Line Degree Courses,” “Ohio State University Online,” and others. Complainant argues that Respondent receives commissions for diverting Internet users to third-party websites via the search engine and links located at Respondent’s website. Complainant alleges that Respondent’s use of the UINDY mark in its domain name creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s website for Respondent’s commercial gain. Accordingly, the Panel concludes that Respondent has registered and is using the <uindy.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant asserts that Respondent forwards some Internet users that enter the term <uindy.com> into their browser URL address bar to the website at <http://yourpcbundle.com/us/22/index.php?s-2169158604> where visitors are told that their flash player needs to be updated and are encouraged to install “Flash Player Pro.” Complainant argues that Internet users choosing to install “Flash Player Pro” actually end up downloading malware onto their computers. In Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010), the panel found that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv). Consequently, the Panel holds that Respondent has registered and is using the <uindy.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent has constructive, if not actual, notice of Complainant’s UINDY mark. Complainant asserts that at the time of Respondent’s registration of the <uindy.com> domain name, the UINDY mark was in use and many applications had been filed to register the UINDY mark. In light of the similarity between the disputed domain name and Complainant’s mark, and due to the fame of Complainant's mark, the Panel finds that Respondent had actual knowledge of the UINDY mark. Accordingly, the Panel holds that Respondent registered the <uindy.com> domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
The Panel finds 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 <uindy.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 6, 2014
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