The Pennsylvania State University v. Jennifer chow
Claim Number: FA2103001936066
Complainant is The Pennsylvania State University ("Complainant"), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Jennifer chow ("Respondent"), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <psujersey.com>, registered with GoDaddy.com, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 10, 2021; the Forum received payment on March 10, 2021.
On March 11, 2021, GoDaddy.com, LLC confirmed by email to the Forum that the <psujersey.com> domain names is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@psujersey.com. Also on March 16, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 April 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is the flagship public university of the Commonwealth of Pennsylvania. It was founded in 1855 and now has 24 campuses, 34,000 faculty and staff members, and over 100,000 students. Complainant is a member of the Big Ten Conference, one of the most widely recognized intercollegiate athletic conferences in the United States.
Complainant sells jerseys and other consumer goods bearing its trademarks, including PSU, PENN STATE, and others, either directly or through authorized licensees. Due to the popularity of Complainant's sports teams, these goods are sold throughout the world. Complainant has used the PSU mark in connection with apparel and other consumer goods since at least as early as 1973, and owns two United States trademark registrations for PSU in standard character form. The first of these, issued in 1984, covers a variety of consumer goods including shirts, t-shirts, jerseys, and certain other items in class 25 (clothing). The second, issued on August 21, 2018, covers additional types of clothing and other consumer goods.
Respondent registered the disputed domain name <psujersey.com> on August 9, 2018 (approximately two months after the application for Complainant's second PSU trademark was published, and two weeks before the registration issued). The domain name is being used for a website that advertises and sells athletic jerseys bearing Complainant's marks. The website prominently displays Complainant's PSU and PENN STATE marks, and otherwise mimics the appearance of websites that offer similar goods on behalf of Complainant or its authorized licensees. Complainant states that Respondent is not commonly known by the disputed domain name and has not been granted any license or other rights to use Complainant's trademarks, including the right to sell products bearing those marks.
Complainant contends on the above grounds that the disputed domain name <psujersey.com> is confusingly similar to its PSU mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <psujersey.com> incorporates Complainant's registered PSU trademark, adding the generic term "jersey" (which refers to a type of goods for which Complainant uses the mark) and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., The Pennsylvania State University v. Milen Radumilo, FA 1894602 (Forum June 5, 2020) (finding <givetopsu.org> confusingly similar to PSU); The Pennsylvania State University v. Aaron Brooks, FA 1803778 (Forum Sept. 26, 2018) (finding <pennstatebasketballjersey.club> confusingly similar to PENN STATE); Paris Saint Germain Football v. Ai Si Ai Si, Ma Guobao, Yin Lin, Mi Ni Mi Ni, D2015-1396 (WIPO Oct. 17, 2015) (finding <psgjerseys.com> confusingly similar to PSG); Texas A&M University v. Lai Hai, FA 1484059 (Forum Mar. 22, 2013) (finding <12thmanjersey.com> confusingly similar to 12TH MAN). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. Its sole use has been for a website that displays Complainant's marks and otherwise mimics the websites of Complainant's licensees, and that promotes directly competing and likely unlicensed merchandise.[i] Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., The Pennsylvania State University v. Aaron Brooks, supra (finding lack of rights or interests in similar circumstances); Paris Saint Germain Football v. Ai Si Ai Si, Ma Guobao, Yin Lin, Mi Ni Mi Ni, supra (same); Texas A&M University v. Lai Hai, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's registered PSU mark. Respondent is using that domain name for a website that mimics the appearance of legitimate websites authorized to sell Complainant's licensed apparel, and that offers such apparel or counterfeit versions thereof in direct competition with authorized licensees. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., The Pennsylvania State University v. Aaron Brooks, supra (finding bad faith in similar circumstances); Paris Saint Germain Football v. Ai Si Ai Si, Ma Guobao, Yin Lin, Mi Ni Mi Ni, supra (same); Texas A&M University v. Lai Hai, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <psujersey.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 8, 2021
[i] While it is possible that Respondent is an unauthorized reseller of legitimate merchandise licensed by Complainant, Respondent has not come forward to make such a claim, and in any event Respondent’s use of Complainant’s marks in its domain name and website far exceed what would be permissible as a nominative fair use. See, e.g., Brooks Sports, Inc. v. Betty Turner, FA 1930944 (Forum Mar. 9, 2021).
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