NATIONAL ARBITRATION FORUM

DECISION

Massachusetts Institute of Technology v. Mehmet Hakan Peker / LabsDGs

Claim Number: FA2310002065972

PARTIES

Complainant is Massachusetts Institute of Technology ("Complainant"), represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is Mehmet Hakan Peker / LabsDGs ("Respondent"), Turkey.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <edu-mit.institute>, registered with Squarespace Domains LLC.

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.

The Honorable Neil Anthony Brown KC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 12, 2023; Forum received payment on October 12, 2023.

On October 16, 2023, Squarespace Domains LLC confirmed by e-mail to Forum that the <edu-mit.institute> domain name is registered with Squarespace Domains LLC and that Respondent is the current registrant of the name. Squarespace Domains LLC has verified that Respondent is bound by the Squarespace Domains 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 October 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@edu-mit.institute. Also on October 17, 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 November 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

1. The Complainant is a famous United States university founded in 1859 and incorporated by statute in 1861 and it is particularly renowned for its work in science and engineering.

2. The Complainant, as well as operating from Cambridge Massachusetts, has partnerships with other universities around the world.

3. The Complainant has rights in the MIT service mark, Registered No.1,562,643, registered with the United States Patent and Trademark Office ( "USPTO") on October 24, 1989 and for several other marks for MIT registered with USPTO and other authorities including the Office for Harmonization in the Internal Market of the European Union (collectively "the MIT trademark").

4. The Complainant also owns the domain name <mit.edu> which the Complainant uses in its activities, including for a website at www.mit.edu and for email purposes.

5. On May 15, 2023, the Respondent registered the domain name <edu-mit.institute> ("the disputed domain name").

6. The disputed domain name is identical or confusingly similar to the MIT trademark. Forum

7. The Respondent has caused the disputed domain name to resolve to the Complainant's website at www.mit.edu and by that means has sought to impersonate the Complainant and pass itself off as the Complainant or as someone who is employed by or otherwise endorsed by or affiliated with the Complainant which it is not.

8. The Respondent has also by means of its LinkedIn page and otherwise, fraudulently portrayed itself as being a professional researcher of the Complainant and has sought to give the false impression that it is associated with, employed by, endorsed by or sponsored by the Complainant, which it is not.

9. By reason of the matters aforesaid, the Respondent has no right or legitimate interest in respect of the disputed domain name.

10. By reason of the matters aforesaid, the Respondent has registered and used the disputed domain name in bad faith.

11. The Respondent has attempted to sell the domain name to the Complainant.

12. As the Complainant has made out all of the matters it is required to be proved under the Policy, the disputed domain name should be transferred to the Complainant.

B. Respondent

Respondent failed to submit a Response in this proceeding. However, in response to a cease and desist letter sent by the Complainant, the Respondent has attempted to sell the domain name to the Complainant for $25,000, further particulars of which reply are referred to later in this decision.

FINDINGS

1. The Complainant is a famous United States university founded in 1859 and incorporated by statute in 1861 and it is particularly renowned for its work in science and engineering.

2. The Complainant, as well as operating from Cambridge Massachusetts, has partnerships with other universities around the world.

4. The Complainant also owns the domain name <mit.edu> which the Complainant uses in its activities, including for a website at www.mit.edu and for email purposes.

5. On May 15, 2023, the Respondent registered the domain name <edu-mit.institute> ( "the disputed domain name").

6. The Respondent has caused the disputed domain name to resolve to the Complainant's website at www.mit.edu.

7. The disputed domain name is identical or confusingly similar to the MIT trademark.

8. The Respondent has no rights or legitimate interests in the disputed domain name.

9. The disputed domain name was registered and used in bad faith.

10. The Complainant has made out its case and the disputed domain name should be transferred to the Complainant.

DISCUSSION

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 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

The first question that arises is whether the Complainant has rights in a

trademark or service mark on which it may rely. The evidence shows that the Complainant has established its rights in the MIT mark by virtue of its registration of the service mark for MIT, Registered No.1,562,643, registered with the United States Patent and Trademark Office ("USPTO") on October 24, 1989 and several other marks for MIT registered with USPTO and other authorities including the Office for Harmonization in the Internal Market of the European Community (collectively "the MIT trademark").

The Complainant has adduced evidence of the foregoing registrations, which the Panel has examined and which it finds in order. Registration of a trademark with a recognized authority is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i) and also that the Complainant "has" a trademark, which is the element that it must prove and which it has established. Since Complainant has registered and has established its rights in the MIT trademark through its registration of the mark, the Panel finds that the Complainant has rights in the MIT mark under Policy ¶ 4(a)(i) and standing to bring this proceeding.

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant's MIT registered trademark. The Complainant argues that the disputed domain name is confusingly similar to its MIT trademark because it consists of the mark itself, to which has been added "edu", understood to be short for "education", a hyphen and the gTLD ".institute". The Panel agrees with the Complainant's submission. Under Policy ¶ 4(a)(i), the addition of a generic, descriptive or commonly used expression word to a trademark does not negate a confusing similarity which is otherwise present between the domain name thus created and a trademark, as it is in the present case. The principal future of the disputed domain name is the acronym MIT which is an abbreviation of the name of the Complainant and a widely used and understood expression that identifies the Complainant. There can be no doubt, therefore, that the domain name includes the MIT trademark. Indeed, the addition of the term "edu" and a hyphen, especially when placed beside the well-known name of an educational institution necessarily implies that the domain name is referring to the trademark of that institution and internet users may wonder if this is really so. Adding the generic Top Level Domain ".institute" also cannot negate a confusing similarity that is otherwise present between a domain name and a trademark, as it is in the present case. Indeed, when the top level domain is a specific one as in the present case, it really emphasizes the view that the domain name is covered by the ambit of the Top Level Domain and relates to an institute. Taken as a whole, the domain name means and would be interpreted by internet users to mean that it is invoking the Complainant, its MIT trademark and acronym and its use by the Complainant or with its approval and that the Respondent is using it legitimately. The domain name is therefore similar to the trademark and confusingly so.

The Panel therefore finds that the Respondent's domain name is confusingly similar to Complainant's MIT mark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests

It is now well established that the 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) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:

(a) the Respondent has chosen to take the Complainant's MIT trademark and to use it in its domain name, added only the term "edu", a hyphen and the gTLD ".institute", none of which negates the confusing similarity between the domain name and the mark but exacerbates it, generating the clear impression that it is referring to and invoking the MIT trademark and its platform and that it is authorized to do so. The Respondent had no right to do any of this, meaning that there is no foundation at all for finding that it had the right to do so or that it gave the Respondent any legitimate interest in the domain name so created;

(b) the Respondent registered the disputed domain name on May 15, 2023, which it had no right to do and no legitimate interest in doing so;

(c) in registering the domain name on May 15, 2023, the Respondent was clearly invoking the MIT trademark which the Complainant had been using in its business since at least October 24, 1989 when it was registered and of course for many years before that time;

(d) the evidence shows that the Respondent is using the domain name to provide a direct link to the Complainant's website, showing an intention to advance the Respondent's attempt at impersonating and passing itself off as the Complainant. That in itself negates any possibility that the Respondent is using the domain name to provide a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy 4(c)(iii). The consequence, again, must be that the Respondent has no right or legitimate interest in the domain name;

(e) the evidence shows that the domain name was intended and in fact has been used to promote the Respondent's impersonation of the MIT mark and the Complainant's own official website. The consequence, again, must be that the Respondent has no right or legitimate interest in the domain name;

(f) the evidence even goes so far as to show that the Respondent is falsely portraying itself as a professional researcher of the Complainant's, as is also shown by the Respondent's LinkedIn page. The Respondent in fact is not an academic or other employee of the Complainant;

(g) the evidence also shows that when the Complainant's representative sent a cease and desist letter to the Respondent on October 6, 2023, the Respondent replied, stating in effect that it would sell the domain name, euphemistically described as a "services", for $25,000;

(h) there is no evidence that the Respondent is commonly known by the domain name or MIT within the meaning of Policy ¶4(c)(ii);

(i) the evidence shows that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized the Respondent to register the domain name or to use the MIT trademark in any way;

(j) the Respondent had an opportunity to show circumstances to the contrary of the above conclusions if it believed they were justified but it has not done so.

The Complainant has also cited several prior UDRP decisions that support its contentions.

All of these matters go to make out the prima facie case against Respondent.

Complainant has thus made out the second of the three elements that it must establish.

Registration and Use in Bad Faith

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 that it 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.

The Complainant has relied on several grounds to show that this is so, and the Panel agrees with each of them.

First, the evidence shows that when the Respondent registered the disputed domain name it had actual notice of the Complainant and its trademark as it is common sense that that is so and as the MIT and its mark are famous.

Secondly, the evidence shows that the Respondent has registered and used the domain name with the intention of selling it within the meaning of Policy ¶ 4(b)(i).

Thirdly, the evidence shows that the Respondent registered the domain name for the purpose of disrupting the business of the Complainant within the meaning of Policy ¶4(b)(iii) as a competitor which the Respondent sought to make the Complainant.

Fourthly, the evidence shows that by using the domain name as the Respondent has done, shows that it was attempting to attract internet users to its webpage to generate confusion within the meaning of Policy ¶ 4(b)(iv) by targeting the Complainant and its MIT trademark.

Fifthly, the Respondent's modus operandi shows that it set about targeting the Complainant, passing itself off as the Complainant and making false representations about its alleged association with the Complainant which are themselves acts of bad faith registration and use of the domain name.

Sixthly, the evidence shows that the Respondent configured MX records that indicate an intention to use the domain name including the MIT mark for improper email purposes, including promoting the false notion that the Respondent was employed by or professionally associated with the Complainant.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the MIT trademark and in view of the conduct that the Respondent has engaged in when using the domain name, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

Complainant has correctly cited several prior UDRP decisions that support its contentions.

Complainant has thus made out the third of the three elements that it must establish.

As the Complainant has established all of the elements required to be proved under the Policy, it is entitled to the relief it seeks.

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 <edu-mit.institute> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Neil Anthony Brown KC

Panelist

Dated: November 9, 2023