President and Fellows of Harvard College v. Rudy Afriyadi
Claim Number: FA1905001841891
Complainant is President and Fellows of Harvard College (“Complainant”), represented by Andrew J. Avsec of Brinks Hofer Gilson & Lione, Illinois, USA. Respondent is Rudy Afriyadi (“Respondent”), Cambodia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harvardsmhl.org>, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on May 6, 2019; the Forum received payment on May 6, 2019.
On May 7, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <harvardsmhl.org> domain name (the 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 May 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 30, 2019 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@harvardsmhl.org. Also on May 10, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
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.
A. Complainant
Established in 1636, Complainant is the oldest institution of higher learning in the United States. Complainant asserts rights in the HARVARD mark based upon its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,608,533, registered July 31, 1990). Respondent’s <harvardsmhl.org> Domain Name is confusingly similar to Complainant’s HARVARD mark as it incorporates the HARVARD mark in its entirety, adding the abbreviation of Harvard’s Student Mental Health Liaisons “smhl” and the “.org” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use as the Domain Name resolves to an unrelated webpage about gambling. Respondent is not authorized or licensed to use Complainant’s HARVARD mark, and Respondent has not been commonly known by the Domain Name.
Respondent registered and used the <harvardsmhl.org> domain name in bad faith. Respondent is using the Domain Name to attract, for commercial gain, users to its web site by creating confusion as to the source, sponsorship, endorsement or affiliation of its web site. Further, Respondent had actual knowledge of Complainant’s rights in the HARVARD mark when it acquired the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at ¶ 4.3, 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”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The HARVARD mark was registered to Complainant with the USPTO (Reg. No. 1,608,533) on July 31, 1990. Complaint Annex M. Registration of a mark with the USPTO is sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <harvardsmhl.org> Domain Name is confusingly similar to Complainant’s mark as it incorporates the HARVARD mark verbatim, merely adding the letters “smhl” and the “.org” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). The addition of an abbreviation and a gTLD to a complainant’s mark fails to differentiate a domain name from a complainant’s mark. Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach, FA 1516146 (Forum Oct. 2, 2013) (finding that the disputed domain names fully incorporate Complainant’s THOMSON REUTERS mark while merely adding the term “scie,” “ahci,” “sci,” or “ssci.” The Panel stated, “Each of these added terms constitutes an abbreviation of Complainant’s SCIENCE CITATION INDEX EXPANDED, ARTS & HUMANITIES CITATION INDEX, SCIENCE CITATION INDEX, or SOCIAL SCIENCES CITATION INDEX marks,” and held that such abbreviations constituted confusing similarity under Policy ¶ 4(a)(i).), The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Further, the WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the HARVARD mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to the respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made 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 consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or other fair use because the name resolves to a web site which features information about gambling, (ii) Respondent is not affiliated with, authorized by, or otherwise licensed to use the HARVARD mark, and (iii) Respondent is not commonly known by the Domain Name. These allegations are supported by competent evidence.
Complaint Annex F is a screenshot of the web site resolving from the Domain Name. The title at the top of the page reads “Harv Poker,” and a tool bar just beneath that contains options listed as “Harvard News,” “About Harvard,” and “Contact Harvard.” Respondent is thus using the Domain Name and the resolving web site falsely to imply some sort of affiliation or association between Complainant and Respondent when the substantive content of the web site is completely unrelated to Complainant or any of its activities or undertakings. Using a confusingly similar domain name in this manner has often been held not to qualify as 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)). Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”).
Complainant states that Respondent is not affiliated or associated in any way with Complainant, and that it has never licensed or authorized Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS report submitted as Complaint Annex B lists the registrant of the Domain Name as “Rudy Afriyadi.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that, in the absence of evidence to the contrary, a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Name within the meaning of Policy ¶ 4(c)(ii).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s uses of the Domain Name discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith registration and use upon the foregoing grounds set forth in the Policy and upon additional grounds adopted by UDRP panels over the years.
First, it is evident that Respondent registered and is using the Domain Name intentionally to attract, for commercial gain, Internet users to its website at <harvardsmhl.org> by creating a likelihood of confusion with Complainant and its HARVARD mark as to the source, sponsorship, affiliation, or endorsement of that web site.[i] Respondent’s use of the Domain Name with Complainant’s mark so obviously incorporated into it, together with Respondent’s use of the “Harvard News,” “About Harvard,” and “Contact Harvard” options listed in the tool bar at the top of the web page, would naturally cause an Internet visitor, at least on first impression, to believe that Respondent’s web site is sponsored by Complainant. Respondent’s web site is obviously commercial in nature, and Respondent’s conduct thus fits clearly within the circumstances articulated by Policy ¶ 4(b)(iv) and constitutes evidence of bad faith. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Second, Complainant and its HARVARD mark are known and famous throughout the world. President and Fellows of Harvard College v. Nikolay, D2005-0120 (WIPO May 16, 2005) (referring to the HARVARD mark as a “distinctive and famous mark”), President and Fellows of Harvard College v. Texas International Property Associates, D2008-0597 (WIPO July 7, 2008) (referring to the HARVARD mark as “famous”). It is evident from this fame and notoriety and from the close similarity between Complainant’s mark and Respondent’s Domain Name that Respondent had actual knowledge of Complainant’s mark when it acquired the Domain Name in November 2018. See WHOIS report, Complaint Annex B for date of acquisition. This is further supported by the fact that prior to Complainant sending a take-down demand to the registrar in February 2019, Respondent’s web site displayed the HARVARD Veritas Shield and Wreath logo with the words “Harvard Poker” printed immediately adjacent to it. Complaint Annex E. Following this demand Respondent deleted the logo and Harvard Poker elements but kept the “Harvard News,” “About Harvard” and “Contact Harvard” options in the tool bar at the top of the age. This demonstrates beyond question that Respondent had actual knowledge of Complainant and its rights in the mark when it acquired the Domain Name. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <harvardsmhl.org> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
June 5, 2019
[i] The Domain Name was formerly owned by the Student Mental Health Liaisons, a student organization at Harvard (Complaint Annex D), which inadvertently neglected to renew its registration. The letters “smhl” are an acronym for that group’s name. Respondent acquired the Domain Name shortly after the SMHL registration expired.
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