Acton Educational Services, Inc. d/b/a West
Coast University v. Kevin Ho
Claim Number: FA0606000738154
PARTIES
Complainant is Acton Educational Services, Inc. d/b/a West Coast University
(“Complainant”), represented by Michelle
A. Hon, of Duane Morris, LLP, 101 West Broadway,
Suite 900, San Diego, CA 92101.
Respondent is Kevin Ho (“Respondent”),
The Zhonghe Building Duyuan Road, Chengdu 610015 China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wcuedu.us>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on June 23, 2006; the Forum received a hard copy
of the Complaint on June 26, 2006.
On June 26, 2006, Enom, Inc. confirmed by e-mail to the Forum that
the <wcuedu.us> domain name is registered with Enom, Inc. and that Respondent is the
current registrant of the name. Enom,
Inc. has verified that Respondent is bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the U. S. Department of Commerce’s usTLD
Dispute Resolution Policy (the “Policy”).
On June 29, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 19, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On July 26, 2006, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole
Panelist in this proceeding.
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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of West Coast University, which was first established in
1909.
Complainant purchased West Coast University in 1997 and continues to operate
under the WEST COAST UNIVERSITY mark.
Complainant has filed two trademark applications with the United States
Patent and Trademark Office (“USPTO”) for the WEST COAST UNIVERSITY mark
(Serial No. 78/791,625, filed January 13, 2006 and Serial No. 78/7916,55, filed
January 13, 2006).
Complainant also holds registrations for the domain names
<westcoastuniversity.com> and <westcoastuniversity.edu>.
Respondent registered the <wcuedu.us> domain name on April 13, 2005.
Respondent’s disputed domain name
resolves to a website that is not in use.
Respondent’s <wcuedu.us> domain name is confusingly similar to Complainant’s WEST COAST UNIVERSITY mark.
Respondent does not have any rights
or legitimate interests in the <wcuedu.us> domain name.
Respondent registered and used the <wcuedu.us>
domain name in bad faith.
B. Respondent failed to submit a response in this proceeding.
FINDINGS
(1) the domain name registered by the Respondent is confusingly similar
to a trademark
in which the Complainant
has rights; and
(2) Respondent has no rights or legitimate interests in respect of the
domain name; and
(3) the same domain name has been registered or is being used in bad
faith.
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.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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 and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that a respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of a complaint to be deemed
true); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or
confusingly similar to a
trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name;
and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel may draw upon UDRP precedent as
applicable in rendering its decision.
Complainant is not required to own a trademark registration to establish rights in the WEST COAST UNIVERSITY mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Respondent does not dispute that Complainant has established common law rights in the WEST COAST UNIVERSITY mark through continuous and extensive use of the mark in connection with its operation of the West Coast University. Furthermore, Complainant has filed for trademark rights in the WEST COAST UNIVERSITY mark and has registered the <westcoastuniversity.com> and <westcoastuniversity.edu> domain names. This is sufficient for Complainant’s WEST COAST UNIVERSITY mark to have acquired common law rights recognizable under the Policy. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that a complainant had common law rights in the mark FISHTECH).
Turning to the core issue under this heading, there is no dispute that Respondent’s <wcuedu.us> domain name is confusingly similar to Complainant’s WEST COAST UNIVERSITY mark under Policy ¶ 4(a)(i), as it merely combines a common abbreviation for Complainant’s mark with the educational reference letters “edu” and a country code top-level domain name (“ccTLD”). See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY registered mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar).
The Panel therefore finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <wcuedu.us> domain name. Complainant has the initial burden of establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, however, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
Because Complainant has established
rights to the WEST COAST UNIVERSITY mark, while Respondent has not come forward
with any evidence showing that it is the owner or beneficiary of a mark
identical to the <wcuedu.us> domain name, Complainant has
satisfied Policy ¶ 4(a)(i). See Meow Media Inc. v. John Basil a/k/a American Software Factory Corp.,
Inc., FA 113280 (Nat. Arb.
Forum Aug. 20, 2002) (finding that there was no evidence that a respondent was
the owner or beneficiary of a mark that is identical to the
<persiankitty.com> domain name); see
also Pepsico, Inc. v. Becky a/k/a Joe Cutroni, FA 117014 (Nat. Arb. Forum Sept. 3, 2002)
(holding that because a respondent did not own any trademarks or service marks
reflecting the <pepsicola.us> domain name, it had no rights or legitimate
interests pursuant to Policy ¶ 4(c)(i).
Moreover, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. There is also no evidence in the record of this proceeding to suggest that Respondent is or has ever been known by the disputed domain name. In Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003), the panel found that without demonstrable evidence to support the assertion that a respondent was commonly known by a domain name, that assertion must be rejected. See also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
Additionally, there is no dispute that Respondent is not actively using the <wcuedu.us> domain name, but rather is passively holding it. Respondent has not responded to the Complaint to offer any evidence of its rights or legitimate interests in the disputed domain name, nor has any intent to use the disputed domain name been shown. The Panel concludes that Respondent has failed to make a case for either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where a respondent failed to submit a response to a complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in a domain name where there is no proof that a respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of a domain name dispute, the domain name did not resolve to a website, and the same respondent was not commonly known by the domain name).
For these reasons, the Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Based on the uncontested evidence of record, Respondent is not currently using the disputed domain name, nor has it advanced any evidence of an intent to use it. In Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), a panel found that a respondent made no use of the domain name or website that connected with the domain name, and that passive holding of a disputed domain name permitted an inference of registration and use in bad faith. See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that holding an infringing domain name without active use can constitute use in bad faith). We agree. Accordingly, the Panel concludes that Respondent’s passive holding of the <wcuedu.us> domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel thus
finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is
Ordered that the <wcuedu.us> domain name be TRANSFERRED
forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 7, 2006
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