The Board of Trustees of the Leland Stanford Junior University v. Brendan Ward / Treats
Claim Number: FA1808001800016
Complainant is The Board of Trustees of the Leland Stanford Junior University (“Complainant”), represented by James Menker of Holley & Menker, P.A., Florida, USA. Respondent is Brendan Ward / Treats (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stanford-alumni.com>, <stanford-hpi.org>, and <stanford-hpi.com>, registered with Tucows Domains Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2018; the Forum received payment on August 3, 2018.
On August 7, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <stanford-alumni.com>, <stanford-hpi.org>, and <stanford-hpi.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 August 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2018 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@stanford-alumni.com, postmaster@stanford-hpi.org, postmaster@stanford-hpi.com. Also on August 17, 2018, 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 September 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is an internationally well-known, premier educational and research university. Complainant is regarded as one of the best universities in the world and, as a consequence thereof, Complainant’s STANFORD mark has become well known among a wide spectrum of customers in the United States and other countries around the world. Complainant has rights in the STANFORD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,221,613, registered Dec. 28, 1982). Respondent’s <stanford-alumni.com>, <stanford-hpi.org>, and <stanford-hpi.com> domain names are substantially identical to Complainant’s STANFORD mark.
Respondent has no rights or legitimate interests in the <stanford-alumni.com>, <stanford-hpi.org>, and <stanford-hpi.com> domain names. Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose, and Respondent holds no property rights in the STANFORD mark or any of the domain names. Further, Respondent does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make any use of the <stanford-hpi.com> domain name. Additionally, Respondent uses the <stanford-alumni.com> and <stanford-hpi.org> domain names to redirect users to Complainant’s own website. Finally, Respondent uses the <stanford-alumni.com> domain name as part of ongoing commercial email solicitations to third parties.
Respondent registered and uses the <stanford-alumni.com>, <stanford-hpi.org>, and <stanford-hpi.com> domain names in bad faith. While Respondent does not currently use the <stanford-hpi.com> domain name in connection with a bona fide offering of goods or services, any future use would undoubtedly create confusion with Complainant and its educational offerings. Additionally, Respondent continues to use the <stanford-alumni.com> domain name as part of ongoing commercial email solicitations to third parties even after Complainant sent notices of the infringing use. Further, Respondent undoubtedly knew of Complainant’s rights in the STANFORD mark prior to registering the confusingly similar domain names, or at minimum when Respondent renewed the registrations for the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is The Board of Trustees of the Leland Stanford Junior University (“Complainant”), of Stanford, CA, USA. Complainant is the owner of the domestic registration for the mark STANFORD, which it has used continuously since at least as early as 1982, in connection with its provision of goods and services in the fields of education, research, athletics, and entertainment.
Respondent is Brendan Ward / Treats (“Respondent”), of San Francisco, CA, USA. Respondent’s registrar’s address is listed as Toronto, Canada. The Panel notes that Respondent registered the <stanford-alumni.com>, <stanford-hpi.org>, and <stanford-hpi.com> domain names on or about the dates of March 23, 2017, March 27, 2017, and March 27, 2017, respectively
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.”).
Complainant claims rights in the STANFORD mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,221,613, registered Dec. 28, 1982). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has established rights in the STANFORD mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <stanford-alumni.com>, <stanford-hpi.org>, and <stanford-hpi.com> domain names are substantially identical to Complainant’s mark. The Panel notes that while Complainant does not make any specific contentions, the domain names appear to add a hyphen, an additional term, and a generic top-level domain (“gTLD”). Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also 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)). The Panel here finds that the disputed domain names are confusingly similar to the STANFORD mark under Policy ¶4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant here has set forth the requisite prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the three at-issue domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Brendan Ward / Treats” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the STANFORD mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner. As Respondent has failed to contest these allegations, the Panel here finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Further, Complainant contends that the <stanford-hpi.com> domain name resolves to a website that lacks any substantive content. Failure to make active use of a confusingly similar domain name may evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage for the <stanford-hpi.com> domain name, which displays the message “stanford-hpi.com is a totally awesome idea still being worked on. Check back later.” The Panel here finds that Respondent fails to use the resolving webpage for the disputed domain name, thus failing to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant claims that Respondent uses the <stanford-alumni.com> and <stanford-hpi.org> domain names to redirect users to Complainant’s own website. Using a confusingly similar domain name to redirect users to a complainant’s own webpage is generally not a use indicative of possessing rights and legitimate interests per Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). The Panel here finds that, to the extent Complainant’s assertion is well founded, redirecting users to Complainant’s own website does not confer rights and legitimate interests in the domain name per Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant argues that Respondent uses the <stanford-alumni.com> domain name as part of ongoing commercial email solicitations to third parties. Complainants may use evidence of fraudulent email communications to evince a lack of any bona fide offering of goods or services or legitimate noncommercial or fair use. See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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)). Complainant provides copies of the emails sent by Respondent using the disputed domain name purporting to offer job openings to individuals without any mention of a business related to the job offer. The Panel here finds that Respondent uses the domain name in connection with fraudulent emails, failing to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant avers that while Respondent does not currently use the <stanford-hpi.com> domain name in connection with a bona fide offering of goods or services, any future use would undoubtedly create confusion with Complainant and its educational offerings. Failing to use a domain name can still violate Policy ¶ 4(b)(iv), attraction for commercial gain. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). As noted above, Complainant provides a screenshot of the resolving webpage for the <stanford-hpi.com> domain name, which displays the message “stanford-hpi.com is a totally awesome idea still being worked on. The Panel here finds that Respondent registered the <stanford-hpi.com> domain name to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent continues to use the <stanford-alumni.com> domain name as part of ongoing commercial email solicitations to third parties even after Complainant sent notices of the infringing use. Using a confusingly similar domain name in connection with fraudulent email communications can evince bad faith under Policy ¶ 4(a)(iii). See Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum December 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”). Complainant provides copies of the emails sent by Respondent using the disputed domain name purporting to offer job openings to individuals without any mention of a business related to the job offer. The Panel here finds that Respondent uses the <stanford-alumni.com> domain name to send fraudulent email communications to third parties, evincing bad faith registration and use under the Policy.
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <stanford-alumni.com>, <stanford-hpi.org>, and <stanford-hpi.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Sept. 24, 2018
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