The City University of New York v. Peter Altman / Fun & Fun Co LTD
Claim Number: FA2307002054485
Complainant is The City University of New York (“Complainant”), represented by Alexa Fritsche of Complainant’s Office of the General Counsel, New York, USA. Respondent is Peter Altman / Fun & Fun Co LTD (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brooklyncenter.org> (“Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on July 25, 2023; Forum received payment on July 25, 2023.
On July 26, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <brooklyncenter.org> domain name 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 July 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2023 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@brooklyncenter.org. Also on July 27, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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, The City University of New York, is a public institution of higher education with over 200,000 students on 25 campuses. Since 1930 Complainant has operated a college known as Brooklyn College, with a current student enrollment of 15,938 students and a substantial reputation in education and research. Furthermore, Complainant operates a School of Arts which prior to 2019 was known as the Brooklyn Center for the Performing Arts which offered a performing arts program at Brooklyn College and the surrounding community. Complainant has common law rights in the BROOKLYN COLLEGE mark based on its use since 1930 for educational, research and professional services. Respondent’s <brooklyncenter.org> domain name is confusingly similar to the BROOKLYN COLLEGE mark as it replaces the ‘college’ element with the similar ‘center’ element and adds the “.org” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <brooklyncenter.org> domain name since Respondent is not licensed or authorized to use Complainant’s BROOKLYN COLLEGE marks and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. From 2001 to 2021 Complainant (and related entities) owned the <brooklyncenter.org> domain name and used it for a website to promote the (as it was then known) Brooklyn Center for the Performing Arts. Following the failure to renew the registration of the Domain Name, Respondent registered the Domain Name and has used it to resolve to a website (“Respondent’s Website”) that poses as the real website for the Brooklyn Center for the Performing Arts located at Brooklyn College. Respondent collects personal information from visitors to the Respondent’s Website.
Respondent registered and uses the <brooklyncenter.org> domain name in bad faith by passing off as Complainant by diverting Internet users to a site posing as an official website of Complaint for the purpose of obtaining personal information from third parties.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BROOKLYN COLLEGE mark. The Domain Name is confusingly similar to Complainant’s BROOKLYN COLLEGE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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 and 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”).
As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the BROOKYLN COLLEGE mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant has provided education and research services under the BROOKYLN COLLEGE mark since 1930. It has extensively used the mark for these services having educated hundreds of thousands of students in the last 90 years. The Panel is satisfied that Complainant’s 90 years of continuous use of the BROOKYLN COLLEGE mark for charitable services is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the BROOKYLN COLLEGE mark for the purposes of Policy ¶ 4(a)(i). 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.”).
The Panel finds that the <brooklyncenter.org> domain name is confusingly similar to Complainant’s BROOKYLN COLLEGE mark because it wholly incorporates one key element of Complainant’s BROOKYLN COLLEGE mark and replaces the other (“college”) with the similar word (“center”) which could easily lead to confusion. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
In support of the above conclusion on confusing similarity the Panel notes that section 1.15 of the WIPO Overview states that “In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.” In the present case, by reason of the facts outlined under the elements below, it is clear that Respondent has sought to target and indeed pass itself off as Complainant through the use of the Domain Name. The Panel finds that the intention of Respondent to mislead Internet users into thinking it is Complainant or connected with Complainant confirms the confusingly similar nature of the Domain Name.
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and 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) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the BROOKYLN COLLEGE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Peter Altman / Fun & Fun Co LTD” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to the Respondent’s Website which passes off as an official website for the Brooklyn Center for the Performing Arts at Brooklyn College. Respondent then solicits personal information from visitors to the Respondent’s Website which it can then potentially misuse. Respondent’s use of the Domain Name to impersonate Complainant for the purpose of commercial gain through acquisition of personal information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent acquired the Domain Name, on or about June 2021, Respondent had actual knowledge of Complainant’s BROOKYLN COLLEGE mark. The Domain Name was formally owned by Complainant who let it expire in 2021. Respondent registered the Domain Name and uses it for a website that passes itself off as Complainant for financial gain or to disrupt Complainant’s business. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to pass itself off as the Complainant by passing itself off as the Complainant’s performing arts entity, presumably for commercial gain from misleading visitors and acquiring their personal information. Use of a disputed domain name to imitate a complainant’s website can be evidence of an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv).
Furthermore, the Panel notes that the actions of Respondent, in registering the Domain Name following the failure of Complainant to renew the Domain Name (and then using it to take advantage of any reputation that arose from its use by Complainant) amounts to opportunistic registration which may in and of itself be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Aurbach v. Saronski, FA 155133 (Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”); see also Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brooklyncenter.org> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 17, 2023
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