DECISION

 

President and Fellows of Harvard College v. Hendrik Petrus Hough

Claim Number: FA1905001841892

 

PARTIES

Complainant is President and Fellows of Harvard College (“Complainant”), represented by Andrew J. Avsec of Brinks Hofer Gilson & Lione, Illinois, USA.  Respondent is Hendrik Petrus Hough (“Respondent”), South Africa.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <harvardkonsult.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 6, 2019; the Forum received payment on May 6, 2019.

 

On May 8, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <harvardkonsult.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name.  PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2019 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@harvardkonsult.com.  Also on May 8, 2019, 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 May 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

1.     Complainant, the President and Fellows of Harvard College, is a charitable and educational corporation organized and existing under the laws of the Commonwealth of Massachusetts. Complainant has rights in the HARVARD mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,608,533, registered July 31, 1990). See Compl. Annex J. Respondent’s <harvardkonsult.com> domain name is confusingly similar to Complainant’s HARVARD mark because it wholly incorporates Complainant’s HARVARD mark, and merely adds the generic term “konsult” (misspelling of “consult”) and the “.com” generic top-level domain (“gTLD”).

 

2.    Respondent lacks rights or legitimate interests in the <harvardkonsult.com> domain name. Respondent is not commonly known by the disputed domain name, and is not authorized to use Complainant’s HARVARD mark. See Compl. Annex B. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent implies a fraudulent affiliation with Complainant. See Compl. Annexes N and P.

 

3.    Respondent registered and uses the <harvardkonsult.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name in order to create the confusion that some association exists between Complainant and Respondent. See Compl. Annexes N and P. Finally, Respondent had actual knowledge of Complainant’s HARVARD mark prior to registering the disputed domain name.  

 

B.   Respondent

1.    Respondent did not submit a Response in this proceeding.

 

FINDINGS

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

 

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

 

3.    Respondent registered or used the <harvardkonsult.com> domain name in bad faith.

 

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."

 

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the HARVARD mark based upon its registration with the USPTO (e.g., Reg. No. 1,608,533, registered July 31, 1990). See Compl. Annex J. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has rights in the HARVARD mark per Policy ¶ 4(a)(i).

 

Next, Complainant argues Respondent’s <harvardkonsult.com> is confusingly similar to Complainant’s mark as it wholly incorporates the HARVARD mark and merely adds the generic term “konsult” (misspelling of “consult”) and the “.com” gTLD. The addition of generic or descriptive terms and a gTLD to a complainant’s mark have been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). 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 The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel agrees with Complainant and find Respondent’s disputed domain name to be confusingly similar to the Complainant’s HARVARD mark.

 

Rights or Legitimate Interests

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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <harvardkonsult.com> domain name as Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the HARVARD mark. Where a response is absent, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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.”). Complainant provides WHOIS information for Respondent indicating Respondent is known as “Hendrik Petrus Hough” and no information of the record  indicates that Respondent was authorized to use the Complainant’s HARVARD mark. To the contrary, though Respondent has answered cease-and-desist letters from Complainant, Respondent has not followed through on transferring the disputed domain name. See Compl. Annexes B and O. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy  ¶ 4(c)(ii).

 

Next, Complainant argues Respondent has no rights or legitimate interests in the <harvardkonsult.com> domain name as Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent implies a fraudulent affiliation with Complainant. See Compl. Annexes N and P. Use of a disputed domain name to divert Internet users to websites to market or offer similar services by passing off as a complainant does 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). ). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the disputed domain name’s resolving webpage which features Complainant’s HARVARD mark, and a statement that the founder of Respondent’s Harvard Business Consulting has taken Harvard classes, which Complainant asserts exacerbates the risk that customers would believe that the business consulting services provided and advertised through the disputed domain name originate from, are affiliated with, or licensed or authorized by Complainant. See Compl. Annexes N and P Therefore, the Panel finds that Respondent has failed to provide 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).

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and uses the <harvardkonsult.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name in order to create the confusion that some association exists between Complainant and Respondent. See Compl. Annexes N and P. Use of a disputed domain name to resolve to a website that confuses users into believing that a respondent is complainant, or is otherwise affiliated or associated with complainant, is evidence of bad faith registration and use. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides screenshots of the disputed domain name’s resolving webpage which features Complainant’s HARVARD mark, and a statement that the founder of Respondent’s Harvard Business Consulting has taken Harvard classes, which Complainant asserts exacerbates the risk that customers would believe that the business consulting services provided and advertised through the disputed domain name originate from, are affiliated with, or licensed or authorized by Complainant. See Compl. Annexes N and P. Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).

 

Finally, Complainant asserts that Respondent had actual notice of Complainant’s rights in the HARVARD mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered <harvardkonsult.com>.  The Panel has found that a respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users, thus constituting actual knowledge of Complainant’s mark prior to registration and bad faith per Policy ¶ 4(a)(iii).”). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). Thus, the Panel finds that Respondent had actual notice of Complainant’s rights in the HARVARD mark under Policy ¶ 4(a)(iii).

 

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 <harvardkonsult.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  June 11, 2019