President & Fellows of Harvard College v. Harvard Professional University / Educational services
Claim Number: FA1911001873165
Complainant is President & Fellows of Harvard College (“Complainant”), represented by Steven A. Abreu of Sunstein Kann Murphy & Timbers LLP, USA. Respondent is Harvard Professional University / Educational services (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harvarduni.us>, 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, Panelist.
Complainant submitted a Complaint to the Forum electronically on November 26, 2019; the Forum received payment on November 26, 2019.
On November 27, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <harvarduni.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of December 17, 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@harvarduni.us. Also on November 27, 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 December 20, 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 usTLD 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 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the oldest institution of higher education in the United States. Complainant has rights in the HARVARD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,624,908, registered Nov. 27, 1990). Respondent’s <harvarduni.us> Domain Name is confusingly similar to Complainant’s mark as Respondent merely adds the term “uni,” an abbreviation of the word “university,” and the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Complainant has not licensed, authorized, or otherwise permitted Respondent to use Complainant’s mark, and Respondent is using the Domain Name to create a false association between itself and Complainant.
Respondent registered or is using the Domain Name in bad faith. It is attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s mark. It registered the Domain Name to disrupt Complainant’s business and to prevent Complainant from reflecting its mark in a corresponding domain name. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the HARVARD mark when it registered the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
C. Additional Submission—Complainant
In response to a Rule 12 request from the Panel, Complainant filed an Additional Submission on December 23, 2019. Among other allegations contained in this filling, Complainant stated that it had undertaken a worldwide trademark search on available CompuMark databases for any filings or registrations for the mark “HarvardUni,” and that no third-party filings were discovered.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(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 will draw upon UDRP precedent as applicable in rendering its decision, except where differences in the two policies require a different analysis.
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 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
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. 1,624,908) on November 27, 1990 (Declaration of Enrique J. Calixto). Complainant’s registration of its mark with the USPTO is sufficient to demonstrate its rights in that mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <harvarduni.us> Domain Name is confusingly similar to Complainant’s HARVARD mark as it incorporates the mark in its entirety, merely adding the descriptive term “uni,” a common abbreviation for “university,” and the ccTLD “.us.” These changes are not sufficient to distinguish the Doman Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See 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).”), see also Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding, “The ccTLD “.us” designation is inconsequential to a Policy ¶ 4(a)(i) analysis.”). 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.
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 respondent to come forward with evidence that it has rights or legitimate interests in it. See 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 four 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) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s use 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;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent or 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) Complainant has not licensed, authorized, or otherwise permitted Respondent to use Complainant’s mark, and (ii) Respondent is using the Domain Name to promote a false association with Complainant. These allegations are addressed as follows:
Complainant states that it has never licensed or authorized Respondent to use its mark in any way (Declaration of Enrique J. Calixto). 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. See 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), see also 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.”).
It is difficult without conducting a world-wide trademark search to determine whether a third party is or is not the owner or beneficiary of a trademark that is identical to the domain name involved in any particular proceeding, as contemplated by Policy ¶ 4(c)(i). In its Additional Submission, however, Complainant stated that it did undertake a worldwide trademark search on available CompuMark databases for any filings or registrations for the exact mark “HarvardUni,” and that no third-party filings were discovered. This is a substantial step toward a prima facie case as to the Policy ¶ 4(c)(i) issue. Additionally, because of the close similarity between Complainant’s HARVARD mark and the <harvarduni.com> Domain Name, it is unlikely that any competent trademark authority, especially the USPTO, would have registered HARVARDUNI or HARVARDUNI.COM as a trademark. Finally, Respondent has defaulted and there is no evidence in the record that Respondent is the owner or beneficiary of a trademark that is identical to the Domain Name.
Complaint Exhibit 4 is a screenshot of the web page resolving from the Domain Name. It features the name “Harvard” prominently in the banner at the top of the page, with the words “Professional University” printed immediately below it but in much smaller, barely legible font. The name “Harvard” and other features on the page are printed in the crimson color Complainant uses in its web site, a page of which is incorporated into the Complaint at paragraph 10. Respondent’s site advertises that it a professional university that teaches vocational programs. It also displays a logo consisting of a three-point shield in the same shape as that used by Complainant, contained within a circle. While the logo is not identical to that of Complainant, it is very similar. There is no question that Respondent’s site, taken as a whole, is intended to convey the impression that it is associated with Complainant and offers services very similar if not identical to those offered by Complainant. Respondent is attempting to pass off as Complainant in order to offer competing services. Using a disputed domain name for the purposes of deceiving Internet users into believing an affiliation exists between a complainant and the respondent in order to offer competing services is neither a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iv). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”), see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).[i]
The WHOIS report submitted as Complaint Exhibit 2 lists the registrant of the Domain Name as “Harvard Professional University / Educational services.” While the first of these names is not identical to the <harvarduni.com> Domain Name, it is very similar and might suggest that the Respondent has been commonly known by the Domain Name or a close variation thereof. This is not conclusive, however, because as discussed above Respondent is not authorized to use Complainant’s mark, and the evidence before the Panel gives no indication that Respondent used the Harvard Professional University name for any purpose other than to register the Domain Name. In its Additional Submission, Complainant pointed out that the address and contact information Respondent listed for itself when it registered the Domain Name is not correct. The Complaint Exhibit 2 WHOIS report lists Respondent’s address as “3306 Rosemont Avenue” as both the street address and the city and lists Illinois as the State, but it also lists 92618 as the zip code. 92618 is the zip code for Irvine, California. According to Complainant’s Additional Submission, there is no Rosemont Avenue in Irvine, California.
Registering a domain name in a name that is similar or identical to the domain name is not, by itself, sufficient to demonstrate that the respondent “has been commonly known by” it for the purposes of Policy ¶ 4(c)(iii). There must be some evidence, independent of the registration, that the respondent used the name in a business or some other undertaking, or that persons have by other means come to associate the respondent with that name. If a person could acquire rights or legitimate interests in a domain name under Policy ¶ 4(a)(ii) by simply registering it in a similar or identical alias, the provisions of Policy ¶ 4(a)(ii) would be essentially meaningless. See Augusta National, Inc. v. Ryan Carey, FA1758547 (Forum Dec. 21, 2017) (“If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(ii) by the simple expedient of incorporating the complainant’s mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated.”), see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). On the evidence before the Panel, it is clear that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).
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.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent’s web site or location or of a product of service on the respondent ‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. Also, by registering and using a confusingly similar domain name to attract Internet traffic to Respondent’s own web site, where it passes off as and offers the same types of services offered by Complainant, Respondent is disrupting the business of Complainant. This fits squarely within the circumstances articulated by Policy ¶¶ 4(b)(iii) and (iv) and is clear evidence of bad faith registration and use. See Walgreens Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”), see also 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).”), Dell Inc. v. Prashant Chhibber, FA 1785651 (Forum June 1, 2018) (“Respondent offers support services related to Complainant’s products that are in direct competition with the services Complainant offers. The Panel finds that Respondent registered and used the domain names in bad faith per Policy ¶ 4(b)(iii).”).
Next, as argued by Complainant, Respondent’s registration of the Domain Name prevents Complainant from reflecting its mark in that name. Complainant’s principal web site is located at <harvard.edu> but the Domain Name, which adds to Complainant’s mark a common abbreviation for “university,” is such that it could easily be useful or valuable to Complainant for attracting Internet users to its site. Respondent’s conduct in this regard fits within the circumstances set forth in Policy ¶ 4(b)(ii) and is further evidence of bad faith registration.
Finally, Complainant asserts that Respondent had constructive or actual knowledge of Complainant and its HARVARD mark when it registered the Domain Name in January 2018 (the WHOIS report submitted as Complaint Exhibit 2 establishes the creation date). Arguments of bad faith based on constructive notice are not well-taken, as UDRP panels have most frequently declined to find bad faith based upon constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Nevertheless, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name. Complainant’s HARVARD mark has been used for more than 300 years and is known throughout the world. Respondent copied that mark verbatim into the Domain Name. It uses the dominant HARVARD element of the mark in the name of the entity advertised on the resolving web site, which entity offers the same types of services as Complainant. 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. See Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark 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 <harvarduni.us> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
December 24, 2019
[i] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include the provisions incorporated into the usTLD Policy as ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii)
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