The Pennsylvania State University v. Malcolm Robbins
Claim Number: FA2107001955075
Complainant is The Pennsylvania State University (ďComplainantĒ), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA.† Respondent is Malcolm Robbins (ďRespondentĒ), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nardep.info>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2021; the Forum received payment on July 14, 2021.
On July 14, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nardep.info> 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 ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).
On July 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to email@example.com.† Also on July 15, 2021, 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 Respondentís registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
On August 9, 2021, the Panel requested Additional Information from Complainant pursuant to Rule 12 of the Policy, allowing Respondent time to make submissions thereon within two days of receipt of same. On August 11, 2021, Complainant timely responded to said request. Respondent did not respond.
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 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, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant submits that it is the flagship public university of the Commonwealth of Pennsylvania, founded in 1855 and has grown to 24 campuses, 34,000 faculty and staff members, and over 100,000 students with an established reputation throughout the United States and the world for its educational programs, offering undergraduate and graduate academic courses as well as a variety of research and policy centers.
One of Complainantís well-known, well-respected policy centers is the National Agricultural and Rural Development Policy Center, which is commonly referred to as NARDeP which is funded by the USDA National Institute of Food and Agriculture and organized by the Regional Rural Development Centers, Complainantís NARDeP Center.
Complainant explains that the NARDep Center, established in 2012, is a flexible national network of scientists and analysts who work together to meet the needs of local, state, and federal policy matters which has engaged dozens of experts at land-grant universities, national organizations, and agencies to develop and deliver timely policy-relevant information for national leaders in the public and private sectors, via policy briefs, data briefs, webinars, working papers, and a book. Examples of these publications can be found at Complainantís webpages hosted at https://aese.psu.edu/nardep.
Complainant asserts that it has common law rights in NARDeP as a word mark and in a device mark NARDeP NATIONAL AGRICULTURAL & RURAL DEVELOPMENT POLICY CENTER, which it uses in association with the provision of its policy services.
Complainant adds that it also previously owned and used the disputed domain name <nardep.info> up until approximately August 2020, when it elected to move the webpages for its NARDeP Center to Complainantís subpages for Complainantís College of Agricultural Sciences, which as noted above are hosted at https://aese.psu.edu/nardep.
Complainant further submits that since its first use of the word mark and the device, they have become a substantial reservoir of consumer goodwill and respect for its services through extensive use, advertising and promotion of its services under the marks. Complainant submits that the marks have acquired favorable industry acceptance and recognition so that the relevant consuming public and trade have come to recognize them as identifiers of Complainant as the source of trusted policy-development services.
Complainant submits that the disputed domain name is confusingly similar to the NARDeP mark as it completely subsumes the mark. See Appian Corp. v. Wellman Yu, FA1774962 (Forum Apr. 9, 2018) (finding <appianlife.com> confusingly similar to APPIAN).
Complainant adds that the generic Top-Level Domain <.info> extension does not reduce the confusing similarity of the disputed domain name to Complainantís NARDeP marks.
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Complainant has never granted Respondent any license or other rights to use the NARDeP marks in commerce for any purpose, and Respondent is not otherwise affiliated with or part of the NARDeP Center.
Complainant asserts that it has consistently used the NARDeP marks in the United States since at least as early as 2012 and through long and extensive use they have become well-known by relevant consumers and are distinctive of Complainantís services.
Complainant adds that upon information and belief, Respondent is not commonly known by any name related to the disputed domain name, which is confirmed by the unmasked WHOIS registration information for the disputed domain name. See 24 Hour Fitness USA, Inc. v. Domain Admin/Private Registrations Aktien Gesellschaft, FA1599649 (Forum Feb. 16, 2015) (finding that WHOIS registry information is a factor in determining that a registrant is not commonly known by a domain name).
Complainant refers to screen captures of the website to which the disputed domain name currently resolves, as well as an archive copy of Complainantís website to which the disputed domain name historically resolved, both of which are produced as evidence in an annex to the Complainant.
The screen captures show that Respondentís website features elements of Complainantís former legitimate webpages hosted at the disputed domain name.
The NARDeP mark and the device mark relied upon by Complainant are prominently displayed on both. While Respondent has no association with Complainant his website also provides prominent links to copyrighted materials published by the NARDeP Center. Of particular concern is that Respondentís website includes what appear to be a number of pay-per-click links to personal injury attorneys in cities across the country.
Complainant asserts that these personal injury attorneys are in no way affiliated with Complainant or its recognized NARDeP Center, and Complainant submits that the inclusion of these pay-per-click links therefore shows that Respondentís use of the disputed domain name does not constitute a bona fide offering of goods or services or legitimate non-commercial or fair use. See Trulia, Inc. v. Armen A, FA1586491 (Forum Dec. 2, 2014) (finding that a parked page containing pay-per-click advertising links that resolve to the websites of Complainantís competitors did ďnot constitute a Policy ∂ 4(c)(i) bona fide offering of goods or services, or a Policy ∂ 4(c)(iii) legitimate noncommercial fair useĒ).
Complainant then alleges that the disputed domain name was registered and is being used in bad faith, stating that although there is little publicly available information regarding Respondent, Respondentís business evidently involves registering the well-known trademarks of other entities in order to trade off the goodwill in those trademarks for its own financial gain.
Complainant explains that it owned and used the disputed domain name for almost 8 years until August 2020 but almost immediately after Complainant opted not to renew its registration for <nardep.info>, Respondent swooped in and registered it.
Respondent then proceeded to use the disputed domain name to host webpages that copy prominent elements of Complainantís prior NARDeP Center webpages, prominently display Complainantís common law trademarks and provide links to copyrighted policy briefs published by the NARDeP Centeróbut with added links that appear to be pay-per-click links to personal injury attorneys in a variety of cities across the United States.
Complainant adds that its NARDeP marks have no meaning other than as an identifier of Complainant and its goods and services. Accordingly, there can be little doubt that Respondent registered the disputed domain name with Complainant, and its marks, squarely in mind. See Black Hills Ammunition, Inc. v. Wall, FA1541570 (Forum Mar. 17, 2014) (finding actual knowledge because there was no legitimate reason for Respondent ďto register a domain name containing ĎBlack Hills Amoí other than to trade on Complainantís trademark rights and that ĎBlack Hills Amoí means nothing other than Complainantís trademarkĒ).
Complainant further alleges that Respondentís use of the disputed domain name shows that it was aware of Complainant and is using the disputed domain name in bad faith to confuse Internet users, attract Internet traffic by associating itself with Complainantís NARDeP Center with which it has no connection, and thereby make profit, in bad faith, through its pay-per-click revenue.†
Respondent failed to submit a Response in this proceeding.
Complainant is a public university, founded in the Commonwealth of Pennsylvania in 1855 and among its services it includes a policy centre commonly referred to as NARDeP, being and acronym for the National Agricultural and Rural Development Policy Century.
Complainant claims common law trademark rights in the acronym NARDeP and a device or logo incorporating the words NARDeP NATIONAL AGRICULTURAL & RURAL DEVELOPMENT POLICY CENTER.
There is no information available to this Panel except for that provided in the Complaint, the Registrarís WhoIs and the information provided by the Registrar to the Forum in response to the Forumís request for verification of the registration details for the disputed domain name.
The Registrar has identified Respondent as the registrant of the disputed domain name <nardep.info> which was registered on August 2, 2012 and resolves to a website to which provides information about the activities of Complainantís NARDeP, policy centre but also links to advertisements for legal services for personal injuries claims.
It is of particular relevance that Complainant states that it owned the disputed domain name until August 2020 when it opted not to renew the registration and when it ďelected to move the webpages for its NARDeP Center to Complainantís subpages for Complainantís College of Agricultural SciencesĒ.
How the disputed domain name came to be transferred to Respondent has not been explained how the disputed domain name came to have been transferred to Respondent.
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 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) (ďBecause Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the ComplaintĒ).
The disputed domain name is clearly identical to the mark NARDeP in which Complainant has rights but as this Panel finds below that there is no evidence that the disputed domain name was registered in bad faith it is not necessary to determine whether Complainant has acquired common law in the marks as claimed.
As Complainant has not shown that the disputed domain name was registered in bad faith it is not necessary to make any findings in respect of Respondentís rights in the disputed domain name.
The WhoIs information adduced as evidence in the Complaint and confirmed by the Registrar when responding to the Forumís request for verification of the registration details of the disputed domain name in the course of this Complaint states that the disputed domain name was registered on August 2, 2012. This is the time when Complainant claims to have first used the NARDeP name and mark and subsequently used the mark for 8 years.
Complainant has asserted that it in August 2020 it opted not to renew the registration when it ďelected to move the webpages for its NARDeP Center to Complainantís subpages for Complainantís College of Agricultural SciencesĒ
Notwithstanding that the uncontested evidence is that Complainant has no connection or affiliation with Respondent, the evidence before this Panel is that the disputed domain name was registered in August 2012.
It follows that the registration in issue was made by Complainant and not Respondent. There is no evidence of any registration by, re-registration by, or even transfer of ownership of the disputed domain name to, Respondent or any other party in August 2020. The evidence is that the 2012 registration was updated on September 14, 2020 and the expiration date is August 2, 2021.
Complainant has therefore failed to prove that the disputed domain name was registered in bad faith and the application must be refused.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <nardep.info> domain name REMAIN WITH Respondent.
James Bridgeman SC
Dated:† August 16, 2021
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