The Trustees of Columbia University in the City of New York v. Kostiantyn Golubtsov / lama.Media
Claim Number: FA2012001925070
Complainant is The Trustees of Columbia University in the City of New York (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Kostiantyn Golubtsov / lama.Media (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cabotprize.com>, registered with URL Solutions, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2020; the Forum received payment on December 15, 2020.
On December 17, 2020, URL Solutions, Inc. confirmed by e-mail to the Forum that the <cabotprize.com> domain name is registered with URL Solutions, Inc. and that Respondent is the current registrant of the name. URL Solutions, Inc. has verified that Respondent is bound by the URL Solutions, 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 December 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2021 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@cabotprize.com. Also on December 18, 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 January 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it operates Columbia University in New York City, one of the most famous and preeminent universities in the world. Founded in 1754 as King’s College, the university was renamed Columbia University in 1896 and since that time continually and consistently has offered and provided educational services of the highest caliber under the Columbia University name and mark. Since 1938, Complainant has administered The Maria Moors Cabot Prizes, known as the CABOT PRIZE, the oldest international award in journalism. The prizes recognize journalists and news organizations with a distinguished body of work that has contributed to Inter-American understanding. The industrialist and philanthropist, Godfrey Lowell Cabot, who founded the Cabot Corporation and was also a major benefactor of both MIT and Harvard, where the general science library is named in his honor, established the CABOT PRIZE in 1938, in memory of his wife. The prizes under the CABOT PRIZE name and mark have been awarded annually since 1939, by Complainant, on recommendation of the dean of the Graduate School of Journalism and the Cabot Prize Board, which is composed of journalists and educators. Complainant has rights in the CABOT PRIZE mark under common law through media recognition of the mark, the promotion of an award under the mark since as early as 1939, and the website it previously maintained and operated at the disputed domain name.
Complainant alleges that the disputed domain name is identical or confusingly to its CABOT PRIZE mark because it wholly incorporates the mark and merely adds the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the CABOT PRIZE mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant. The resolving website displays content that Complainant previously displayed at the disputed domain name, purporting to offer and allow application for the CABOT PRIZE and speaking as if the site were an official website associated with Complainant. Additionally, Complainant used to own the disputed domain name, but the registration lapsed and Respondent opportunistically registered the disputed domain name. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Specifically, Respondent attempts to divert customers by purporting to offer Complainant’s services. The resolving website displays material copyrighted by Complainant. Additionally, Respondent opportunistically registered the disputed domain name when Complainant’s ownership of the disputed domain name lapsed. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has common law rights in the mark CABOT PRIZE and uses it to administer the well-known CABOT PRIZE journalism award.
Complainant’s rights in its mark long predate the registration of the disputed domain name.
The disputed domain name was registered in 2019.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays content from Complainant’s prior use of the disputed domain name, including Complainant’s Columbia University name, mark, and logo. It purports to offer and allow applications for the CABOT PRIZE.
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”).
Complainant argues it has common law trademark rights in the CABOT PRIZE mark. Complainant provides evidence of secondary meaning of the CABOT PRIZE mark through media recognition of the mark, the promotion of an award under the mark since as early as 1939, and its previous ownership of the disputed domain name. A registered trademark is not required to establish rights in a mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). In order to establish common law rights, a complainant must provide evidence that the mark has acquired secondary meaning. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Since Complainant has provided sufficient evidence to establish secondary meaning, the Panel finds that Complainant has common law rights in the CABOT PRIZE mark.
The disputed domain name is identical to Complainant’s CABOT PRIZE mark as it contains the mark in its entirety and merely adds the “.com” gTLD. The addition of a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See 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.”). Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not authorized or licensed to Respondent any rights in its CABOT PRIZE mark. Respondent is not commonly known by the disputed domain name: absent a reply, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). Here, the WHOIS information for the disputed domain name lists the registrant as “Kostiantyn Golubstov”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to pass itself off as Complainant: Complainant provides evidence of Respondent using content from Complainant’s prior use of the disputed domain name, including Complainant’s Columbia University name, mark, and logo. The resolving website purports to offer and allow applications for the CABOT PRIZE and gives the impression that it is an official website associated with Complainant. Where respondent uses a domain to pass off as complainant, the Panel may find that respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content.”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: as already noted, the resolving website displays content from Complainant’s prior use of the disputed domain name, including Complainant’s Columbia University name, mark, and logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Further, also as noted above, Respondent is using the disputed domain name to disrupt Complainant’s business by displaying the content that Complainant previously displayed using the disputed domain name; the resolving website purports to offer and allow applications for the CABOT PRIZE, and gives the impression that it is an official website associated with Complainant. This can impede the user’s ability to reach Complainant’s legitimate website and constitutes bad faith use under the Policy. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Further, Respondent impersonates Complainant, and this is also evidence of bad faith registration and use. See Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Forum Nov. 9, 2004) (“Respondent’s use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”). Thus the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Respondent’s unauthorized reproduction of Complainant’s copyrighted materials is further evidence of Respondent’s bad faith use and registration of the disputed domain name. See Disney Enterprises, Inc. v. Cano, FA 1443902 (Forum Jun. 10, 2012) (offering unauthorized copies of copyrighted works is evidence of bad faith); see also Disney Canada, Inc. (formerly Club Penguin Entertainment Inc.) v. Nikola Petkovic, FA 1751333 (Forum Nov. 15, 2017) (bad faith where “Respondent has decided to provided significant amount of infringing materials on the website under the disputed domain name and under Complainant’s . . . mark”). Thus the Panel finds bad faith registration and use on this ground also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cabotprize.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 13, 2021
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