DECISION

 

The Trustees of Davidson College Corp. v. Le Van Tung

Claim Number: FA2504002152145

 

PARTIES

Complainant is The Trustees of Davidson College Corp. ("Complainant"), represented by Amanda L. DeFord of McGUIREWOODS LLP, Virginia, USA. Respondent is Le Van Tung ("Respondent"), Vietnam.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <davidsonarchivesandspecialcollections.org> ("Domain Name"), 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.

 

David L. Kreider, Chartered Arbitrator (UK), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 23, 2025; Forum received payment on April 23, 2025.

 

On April 24, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <davidsonarchivesandspecialcollections.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 April 30, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2025 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@davidsonarchivesandspecialcollections.org. Also on April 30, 2025, 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.

 

A timely Response was received and determined to be complete on May 1, 2025.

 

On May 5, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David L. Kreider 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

Established in 1837, Davidson College is a liberal arts college in North Carolina. The Complainant has for several years made its archives and special library collections available electronically via the Internet. As part of those efforts, the Complainant registered the Domain Name <davidsonarchivesandspecialcollections.org> in October 2019 and used the Domain Name over a period of five (5) years to host webpages through which the Complainant's archives and special collections could be accessed, until October 28, 2024.

 

Fewer than two months after the Complainant had stopped hosting webpages letting users access it's special collections and archive services electronically, the Complainant alleges, the Respondent registered the Domain Name <davidsonarchivesandspecialcollections.org> and began using it to redirect unsuspecting users to various Vietnamese gambling websites operated under the brand name "SUNWIN".

 

The Respondent has opportunistically registered the Domain Name for its own commercial gain. This is evidence of bad faith registration. See Featurewell.com Inc. v. August Johansen, FA22080020006821 (Forum Aug. 31, 2022) ("Where a Respondent registers a disputed domain name opportunistically, the Panel may find bad faith registration."); see also 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").

 

The Respondent's use of the Domain Name to redirect visitors to unrelated Vietnamese gambling website demonstrates bad faith registration and use. See Naperville Heritage Society v. Ghost Callofduty, FA2112744 (Forum Sept. 20, 2024) ("[P]ointing a domain name containing another's trade mark to drive traffic to a gambling site is registration and bad faith use under the Policy."); America Honda Motor Co. v. Admin Hosting/Room 9999, FA2084611 (Forum March 18, 2024) (finding bad faith use and registration where the respondent used the domain name <hondatop.com> to host websites "featuring gaming and gambling content").

 

This is particularly true, the Complainant asserts, where Respondent's webpages hosted at the Domain do not use DAVIDSON in any manner or have anything to do with special collections or archives. CW Brands LLC v. qiang zhang/jiu long cheng, FA2122607 (Forum Nov. 29, 2024) (finding bad faith use and registration where the "Respondent does not show the trademark on its site," making it "clear that the use of Complainant's trademarks is only done with the intention of creating an association with Complainant and its products").

 

B. Respondent

The Respondent argues that the Domain Name was not registered with the intent to confuse users or exploit any association with Davidson College, that the Respondent's websites are not related to education, archives, or special collections, and do not use the name Davidson anywhere in their content.

 

"To further avoid confusion or unintentional traffic", the Respondent claims it has implemented geolocation restrictions so only users in Vietnam can access the websites, thus showing, it is alleged, that the Respondent "did not intend to target any audience associated with the Complainant".

 

The Respondent alleges that the Domain Name was available and not in use at the time of registration and that the Respondent did not know about Davidson College's past use of the Domain Name. The Domain Name is used as part of a local business project in Vietnam, and there is no attempt to mislead, impersonate, or gain from any brand confusion. The Domain Name, it is alleged, is used purely for a local purpose unrelated to education or the Complainant's services.

 

FINDINGS

1.       The Complainant obtained, inter alia, registration of its DAVIDSON and DAVIDSON COLLEGE Mark (the "Marks") in the United States at least as early as 2003.

2.       The Complainant registered the Domain Name <davidsonarchivesandspecialcollections.org> on October 28, 2019, and used the Domain Name to host webpages through which the Complainant's archives and special collections could be accessed.

3.       The Complainant's registration of the Domain Name expired on October 28, 2024. The Domain Name was thereafter acquired by the Respondent with effect from the original date of registration, October 28, 2019.

4.       The Respondent admits that the Respondent's websites to which the Domain Name resolves are not related to education, archives, or special collections, and do not show or use the name Davidson.

5.       The Complainant's evidence proves the Respondent is using the Domain Name to redirect users of the public Internet to various Vietnamese gambling websites operated under the brand name "SUNWIN", which is unrelated 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.

 

Identical and/or Confusingly Similar

The Complainant argues that the Domain Name subsumes the DAVIDSON (U.S. Reg. No. 2,784,338), DAVIDSON & Design (U.S. Reg. No. 2,784,337), and DAVIDSON (U.S. Reg. No. 4,583,032) Marks and is confusingly similar to the Complainant's registered Marks. See, e.g., The Trustees of Davidson College Corp. v. Timo Petr, FA1917271 (Forum Nov. 12, 2020) (finding "Davidson-edu.com" to be confusingly similar to Davidson's DAVIDSON Family of Marks). Moreover, the inclusion of "archives and special collections" in the Domain Name, the Complainant argues, increases the likelihood of confusion between the Domain Name and the Marks, because Davidson's library maintains "archives and special collections" to benefit its students, staff, faculty, and the public.

 

The Panel agrees and finds that the first element at Policy Paragraph 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

The Complainant alleges it has never granted the Respondent any license or other rights to use the Marks in commerce for any purpose and that, to its knowledge, the Respondent is not commonly known by any name related to the Marks, and that the Respondent's use of the Domain Name to redirect consumers to gaming websites hosted with no reference to DAVIDSON on the webpages supports a finding that Respondent is not making a bona fide offering of goods or services or legitimate non-commercial or fair use.

 

Under accepted UDRP practice, the Complainant having proved prima facie that the Respondent has no rights or legitimate interests in the Domain Name, the burden shifts to the Respondent to adduce evidence to show its rights or legitimate interests in the Domain Name.

 

The Respondent alleges it has implemented certain unspecified "geolocation restrictions" to block all users except those from Vietnam from accessing the Domain Name and the Respondent's websites which, it is alleged, shows that the Respondent did not intend to target any audience associated with the Complainant. 

 

Even if this Panel accepted the Respondent's implicit proposition that cybersquatting, if confined within the borders of the infringer's home nation state, is harmless and inconsequential (which it does not), the Respondent has adduced no evidence to support its naked allegations.

 

The Complainant asserts that the Respondent has no reason to register a Domain consisting of Davidson's well-known DAVIDSON Marks and the generic words "archives" or "special collections" other than to deceive unsuspecting consumers into thinking the Domain Name is part of the webpages used to host and offer Davidson's archival and special collection services. See The Trustees of Davidson College Corp. v. Timo Petr, FA1917271 (finding "actual knowledge of [Davidson's] rights in the DAVIDSON mark" when registering a DAVIDSON-formative name based on the "notoriety of [Davidson's] DAVIDSON trademark" and inclusion of elements in the domain that relate to a college).

 

The Panel understands that gaming and gambling, including the online variety, is strictly regulated by the authorities in Vietnam. The Panel considers it plausible that another reason the Respondent might register and use a domain consisting of Davidson's well-known DAVIDSON Marks and the generic words "archives" or "special collections" might be to deceive and conceal its online gambling businesses from the prying eyes of the authorities and mask itself behind the Complainant's established reputation and good name.

 

The second element at Policy Paragraph 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

The Respondent's decision to opportunistically register the Domain Name for its own commercial gain is evidence of its bad faith registration and use. See Featurewell.com Inc. v. August Johansen, FA22080020006821 (Forum Aug. 31, 2022) ("Where a Respondent registers a disputed domain name opportunistically, the Panel may find bad faith registration."); see also 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.").

 

Respondent's use of the Domain to redirect visitors to Vietnamese gambling websites is further persuasive evidence of bad faith registration and use. See Naperville Heritage Society v. Ghost Callofduty, FA2112744 (Forum Sept. 20, 2024) ("[P]ointing a domain name containing another's trade mark to drive traffic to a gambling site is registration and bad faith use under the Policy."); America Honda Motor Co. v. Admin Hosting/Room 9999, FA2084611 (Forum March 18, 2024) (finding bad faith use and registration where the respondent used the domain name <hondatop.com> to host websites "featuring gaming and gambling content").

 

As admitted by the Respondent in its Response, the Respondent's webpages hosted at the Domain Name do not use DAVIDSON or have anything to do with special collections or archives. CW Brands LLC v. qiang zhang/jiu long cheng, FA2122607 (Forum Nov. 29, 2024) (finding bad faith use and registration where the "Respondent does not show the trademark on its site," making it "clear that the use of Complainant's trademarks is only done with the intention of creating an association with Complainant and its products").

 

The Panel finds by the greater weight of the evidence before it that the Respondent has opportunistically registered and is using the Domain Name in bad faith for its own commercial gain and that the third element at Policy Paragraph 4(a)(iii) is satisfied.

 

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 <davidsonarchivesandspecialcollections.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David L. Kreider, Panelist

Dated:  May 6, 2025