The Pennsylvania State University v. Mark Lin
Claim Number: FA1712001761542
Complainant is The Pennsylvania State University (“Complainant”), represented by Brad R. Newberg of McGuireWoods LLP, Virginia. Respondent is Mark Lin (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pennstatefootballzone.com>, registered with eNom, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 6, 2017; the Forum received payment on December 6, 2017.
On December 6, 2017, eNom, LLC confirmed by e-mail to the Forum that the <pennstatefootballzone.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 December 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2017 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@pennstatefootballzone.com. Also on December 7, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant contends as follows:
Complainant is the flagship public university of the Commonwealth of Pennsylvania, founded in 1855.
Complainant uses its PENN STATE mark in conjunction with a variety of consumer goods and services.
Complainant owns registered trademarks for PENN STATE with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,308,610, registered Dec. 11, 1984).
Respondent’s <pennstatefootballzone.com> domain name is virtually identical and confusingly similar to the PENN STATE mark because the mark is incorporated entirely. The addition of a generic top-level domain (“gTLD”) does not distinguish the disputed domain name from the PENN STATE mark. Moreover, the addition of the generic words “football” and “zone” do not distinguish the disputed domain name from Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has never licensed or authorized Respondent to use the PENN STATE mark. Based on the WHOIS information of record, Respondent is not commonly known by the disputed domain name. Respondent is using the disputed domain name to divert internet users to Respondent’s own commercial website, displaying competing goods of Complainant. Respondent’s goods are designed to falsely suggest to consumers an association and sponsorship by Complainant and Respondent’s products are either knock-off products sold under counterfeit marks or Complainant’s actual marks. Either way, Respondent is not engaged in a bona fide offering of goods or services, and is trying to confuse consumers in order to trade off Complainant’s goodwill.
Respondent registered and uses the disputed domain name in bad faith. Respondent incorporates Complainant’s protected logo and trade dress which is also in furtherance of passing itself off as Complainant. Further, Respondent is intentionally using the disputed domain name to create the appearance of an affiliation between Complainant and Respondent. Additionally, Respondent is creating confusion regarding the at-issue domain name for commercial gain and diverts internet users who are seeking Complainant’s products and services to a webpage selling competing goods. Lastly, Respondent has actual knowledge of Complainant’s rights the PENN STATE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in PENN STATE.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its PENN STATE trademark.
Respondent uses the <pennstatefootballzone.com> domain name to divert internet users to its own website where it passes itself off as Complainant and offers to sell unlicensed counterfeit or knock-offs of Complainant’s trademarked merchandise.
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(f), 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 (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.”).
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant demonstrates rights in its PENN STATE mark by showing it registered such mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <pennstatefootballzone.com> domain name contains Complainant’s entire PENN STATE trademark less its space. The spaceless mark is suffixed with the generic/descriptive term “football” followed by the generic/descriptive term “zone” to which is appended a necessary top-level domain name, here “.com,” completing the domain name. The differences between Complainant’s trademark and Respondent’s <pennstatefootballzone.com> domain name fail to distinguish the domain name from the mark for the purpose of Policy ¶ 4(a)(i). The inclusion of generic terms does nothing to differentiate the domain name from Complainant’s trademark under the Policy. In fact, the inclusion of the terms “football” and “zone” only adds to any confusion between the two as they are apparent references to Complainant’s football activities and related merchandise. The top-level domain name, required by all domain names, is of no consequence regarding Policy ¶ 4(a)(i) analysis. Therefore, the Panel concludes that Respondent’s <pennstatefootballzone.com> domain name is identical to Complainant’s PENN STATE trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also, Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”)
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Pablo Palermo” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <pennstatefootballzone.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <pennstatefootballzone.com> domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 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).
Respondent’s <pennstatefootballzone.com> domain name addresses a website that inappropriately trades on Complainant’s PENN STATE trademark and trade dress to sell counterfeit and/or unlicensed PENN STATE related merchandise. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) see also, Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also, eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below there is sufficient evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses its confusingly similar domain name to pass itself off as Complainant so that it may market counterfeit and/or unlicensed PENN STATE merchandise. Using the at-issue domain name in this manner demonstrates bad faith registration and use of the <pennstatefootballzone.com> domain name pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Additionally, Respondent registered <pennstatefootballzone.com> knowing that Complainant had trademark rights in the PENN STATE trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s suffixing the PENN STATE mark within the at-issue domain name with terms that suggest Complainant’s football related activities and merchandise; and from Respondent’s display of Complainant’s logo, trade dress and merchandize on the at-issue domain name’s referenced website. Clearly, Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <pennstatefootballzone.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pennstatefootballzone.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 8, 2018
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