DECISION

 

The City University of New York v. Surya Kumar / IMPOWER SOLUTIONS PVT LTD

Claim Number: FA2409002117296

 

PARTIES

Complainant is The City University of New York ("Complainant"), represented by Alexa Fritsche, New York, USA. Respondent is Surya Kumar / IMPOWER SOLUTIONS PVT LTD ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cunymed.org>, registered with GoDaddy.com, 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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 25, 2024. Forum received payment on September 25, 2024.

 

On September 25, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <cunymed.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 September 26, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2024 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@cunymed.org. Also on September 26, 2024, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On October 17, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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 formal response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Founded in 1847, Complainant, The City University of New York, is the largest urban university in the United States. Complainant has continually used the CUNY mark and name since at least as early as 1964 to identify its educational, research and professional training services and cultural and community offerings. Complainant's medical school, CUNY School of Medicine, has been providing medical education to students for decades. Due to the Complainant's extensive use of the mark and substantial promotional activities over 60 years, CUNY has acquired secondary meaning in connection with educational, research and professional services, cultural and community offerings. Complainant has common law rights in the CUNY and CUNY SCHOOL OF MEDICINE marks and has registered the CUNY mark with the United States Patent and Trademark Office ("USPTO").

 

Complainant was the owner of the <cunymed.org> domain name from June 2022 through the spring of 2024 and used it in connection with the CUNY School of Medicine until December 2023. Thereafter the domain name automatically redirected visitors to Complainant's "www.medicine.cuny.edu" website in connection with the CUNY School of Medicine. In the spring of 2024, the registration of the <cunymed.org> domain name lapsed due to an administrative oversight.

 

Respondent's <cunymed.org> domain name is confusingly similar to Complainant's CUNY mark.

 

Respondent has no rights or legitimate interests in the <cunymed.org> domain name since Respondent is not licensed or authorized to use Complainant's CUNY mark and is not commonly known by that name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to misleadingly divert unwary visitors seeking information regarding Complainant to an imposter website unrelated to Complainant for commercial gain and to tarnish the name and reputation of Complainant.

 

Respondent registered the <cunymed.org> domain name in bad faith with actual knowledge of Complainant's rights in the CUNY mark and uses it in bad faith by linking the domain name to a website that mimics and passes itself off as a legitimate CUNY School of Medicine website by displaying the CUNY trademark and referencing the "City University of New York". This creates a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website, as well as tarnishing Complainant's registered trademark, creating a negative association with Complainant and damaging Complainant's public reputation as a public institution of higher education.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding. Forum received an email from Respondent on October 3, 2024 stating that Respondent acquired the domain name at auction and without any prior knowledge of Complainant's CUNY trademark, having conducted a trademark search for CUNYMED and found no registered marks specifically related to this term.

 

FINDINGS

Complainant has established all the elements entitling it to relief.

 

DISCUSSION

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 the domain name should be cancelled or transferred:

 

(i)                      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)                      Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)                      the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a formal 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 as 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').

 

Identical and/or Confusingly Similar

Complainant has shown that it has rights in the CUNY mark both at common law and through registrations with the USPTO (e.g., Reg. No. 2,793,510, registered on December 16, 2003).

 

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.

 

The Panel finds Respondent's <cunymed.org> domain name to be confusingly similar to Complainant's CUNY mark, only differing by the addition of "med" an abbreviation of "medical", which does nothing to distinguish the domain name from the mark. The inconsequential ".org" generic top-level domain ("gTLD") may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

 

Complainant has established this element.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

 

(i)         before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)         Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

 

(iii)         Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

The <cunymed.org> domain name was initially registered by Complainant on June 30, 2022. That registration lapsed in 2024 and Respondent acquired the domain name at auction and registered it on or around August 8, 2024. It resolves to a website which prominently displays Complainant's CUNY mark, followed by "medical", and the statement: "Welcome to CUNYMed, the hub of excellence in medical education and health within the City University of New York (CUNY) system." The website also contains a review of a dietary supplement posted on September 18, 2024, with a link to the website of the supplement.

 

These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <cunymed.org> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA 1849706 (Forum July 17, 2019).

 

In light of the content of Respondent's website, the Panel is not persuaded by Respondent's informal submission that Respondent was unaware of Complainant's CUNY mark when registering the domain name.

 

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.

 

Complainant has established this element.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:

(iv)        by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.

The circumstances set out above in relation to the second element satisfy the Panel that, despite its claim to have been unaware that CUNY was a registered trademark, Respondent was nevertheless fully aware of Complainant's CUNY mark, whether registered or at common law,  when Respondent registered the <cunymed.org> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark as to the source of Respondent's website and of the goods and services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).

 

Complainant has established this element.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cunymed.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Alan L. Limbury, Panelist

Dated: October 21, 2024