The Pennsylvania State University v. Domain Administrator / Domain Maybe For Sale
Claim Number: FA2009001911493
Complainant is The Pennsylvania State University (“Complainant”), represented by Claire Hagan Eller of McGuireWoods LLP, Pennsylvania, USA. Respondent is Domain Administrator / Domain Maybe For Sale (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pennstatenittanybeer.com>, registered with Dynadot Llc; Dynadot, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 8, 2020; the Forum received payment on September 8, 2020.
On September 9, 2020, Dynadot Llc; Dynadot, LLC confirmed by e-mail to the Forum that the <pennstatenittanybeer.com> domain name is registered with Dynadot Llc; Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot Llc; Dynadot, LLC has verified that Respondent is bound by the Dynadot Llc; Dynadot, 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 September 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 2020 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@pennstatenittanybeer.com. Also on September 24, 2020, 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 October 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed
The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, The Pennsylvania State University, is the flagship public university of the commonwealth of Pennsylvania. Complainant has rights in the PENN STATE and NITTANY LIONS marks based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,308,610, registered Dec. 11, 1984; Reg. No. 1,325,426, registered Mar. 19, 1985). See Compl. Exs. B & C. Respondent’s <pennstatenittanybeer.com> domain name is virtually identical to Complainant’s marks because it subsumes both marks, adding the term “beer” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <pennstatenittanybeer.com> domain name. Respondent is not commonly known by the name and is not licensed by Complainant to use the mark in any way. Further, Respondent fails to use the disputed domain name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use because Respondent inactively holds the domain name. Additionally, Respondent previously used the disputed domain to host a page offering the domain name for sale.
Respondent registered and used the <pennstatenittanybeer.com> domain name in bad faith. Respondent offered the disputed domain name for sale in excess of out-of-pocket costs. Additionally, Respondent has displayed a pattern of bad faith conduct. Finally, Respondent had knowledge of Complainant’s rights in the PENN STATE and NITTANY LIONS marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is the flagship public university of the commonwealth of Pennsylvania.
2. Complainant has established its trademark rights in the PENN STATE and NITTANY LIONS marks based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,308,610, registered Dec. 11, 1984; Reg. No. 1,325,426, registered Mar. 19, 1985).
3. Respondent registered the disputed domain name on August 27, 2019.
4. Respondent inactively holds the domain name and has previously used the disputed domain to host a page offering the domain name for sale.
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).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the PENN STATE and NITTANY LIONS marks based on registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in that mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence of its registrations with the USPTO (e.g. Reg. No. 1,308,610, registered Dec. 11, 1984; Reg. No. 1,325,426, registered Mar. 19, 1985). See Compl. Exs. B & C. Therefore, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PENN STATE and NITTANY LIONS marks. Complainant argues that Respondent’s <pennstatenittanybeer.com> domain name is virtually identical to Complainant’s marks because it subsumes both marks, adding the term “beer” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD to a mark is generally insufficient to negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See 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 find that the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PENN STATE and NITTANY LIONS trademarks and to use them in its domain name;
(b) Respondent registered the disputed domain name on August 27, 2019;
(c) Respondent inactively holds the domain name and has previously used it to host a page offering the domain name for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <pennstatenittanybeer.com> domain name because Respondent is not commonly known by the name and is not licensed by Complainant to use the mark in any way. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Also, lack of authorization to use a mark may show that the respondent is not commonly known by that 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). The WHOIS information of record identifies the registrant of the disputed domain name as “Domain Maybe For Sale / Domain Administrator” and Complainant claims that Respondent has never been licensed to use Complainant’s mark. See Amend. Compl. Ex. A. Therefore, the panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <pennstatenittanybeer.com> domain name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use because Respondent inactively holds the domain name. Failure to make active use of a disputed domain name supports a finding that the domain name is not being used in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the blank webpage resolving at the disputed domain. See Compl. Ex. G. The Panel therefore agrees that Respondent does not use the disputed domain name in connection with 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);
(g) Complainant also argues that Respondent previously used the <pennstatenittanybeer.com> domain to host a page offering the domain name for sale. A respondent’s offer to sell a disputed domain name may evidence that the respondent lacks rights and legitimate interests in a disputed domain name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides a screenshot of a page previously resolving at the disputed domain name, which lists the domain name for sale for a price of $990.00. See Compl. Ex. H. The Panel agrees with Complainant that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <pennstatenittanybeer.com> domain name in bad faith because Respondent offered the disputed domain name for sale in excess of out-of-pocket costs. Offering a disputed domain name for sale may evidence bad faith under Policy ¶ 4(b)(i), especially when the sale is in excess of the costs associated with registration. See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i). ”). As previously noted, the disputed domain name previously resolved to a website listing the domain name for sale for a price of $990.00. See Compl. Ex. H. Thus, the Panel finds bad faith pursuant to Policy ¶ 4(b)(i).
Secondly, Complainant submits that Respondent has displayed a pattern of bad faith conduct. A history of negative UDRP decisions against a respondent may support a finding of bad faith under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant claims that Respondent has been determined in other UDRP decisions to have registered domain names in bad faith, but Complainant provides no evidence of such proceedings. As the Panel agrees with Complainant’s submissions and in all the circumstances, the Panel finds bad faith under Policy ¶ 4(b)(ii).
Thirdly, Complainant submits that Respondent had knowledge of Complainant’s rights in the PENN STATE and NITTANY LIONS marks. Actual knowledge of a complainant’s rights in a mark evidences bad faith under Policy ¶ 4(a)(iii) and may be shown by the entirety of circumstances surrounding registration and use of the domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Reapondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant claims that Respondent must have had actual knowledge of Complainant’s rights in the marks since Respondent uses two of Complainant’s marks together in a single domain name. As the Panel determines that actual knowledge exists, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the PENN STATE and NITTANY LIONS marks and in view of the conduct of Respondent in using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pennstatenittanybeer.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 21, 2020
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