National Merit Scholarship Corporation v. Fahad Muhammad
Claim Number: FA2107001955914
Complainant is National Merit Scholarship Corporation (“Complainant”), represented by Peter G. Byrne of Morgan, Lewis & Bockius LLP, California, USA. Respondent is Fahad Muhammad (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalmeritscholarships.com>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2021; the Forum received payment on July 20, 2021.
On July 21, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nationalmeritscholarships.com> 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 July 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2021 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@nationalmeritscholarships.com. Also on July 22, 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 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 August 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, National Merit Scholarship Corporation, operates an independent non-profit institution hosting annual academic competitions for college scholarships.
Complainant has rights in the NATIONAL MERIT, MERIT SCHOLAR and MERIT SCHOLARSHIP marks through registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <nationalmeritscholarships.com> domain name is identical or confusingly similar to Complainant’s marks, merely combining the marks, removing spaces within the marks, adding the letter “s,” and appending the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <nationalmeritscholarships.com> domain name as it is not commonly known by the at-issue domain name and is neither an authorized user nor licensee of NATIONAL MERIT, MERIT SCHOLAR or MERIT SCHOLARSHIP. Additionally, Respondent does not use the domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent purports to offer its own scholarships via a website addressed by the at-issue domain name.
Respondent registered and uses the <nationalmeritscholarships.com> domain name in bad faith. Respondent uses the at-issue domain name to offer scholarships competing with those offered by Complainant, disrupting Complainant’s business and likely leading to commercial gain for Respondent. Additionally, Respondent also uses the domain name to display pay-per-click advertisements. Furthermore, Respondent’s use of a privacy service provides additional evidence of Respondent’s bad faith. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the marks since Respondent offers identical or highly-similar scholarship services at the resolving webpage for the <nationalmeritscholarships.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in NATIONAL MERIT, MERIT SCHOLAR and MERIT SCHOLARSHIP.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the NATIONAL MERIT, MERIT SCHOLAR and MERIT SCHOLARSHIP trademarks.
Respondent uses the at-issue domain name to address a website that offers products that compete with Complainant’s scholarship offerings and that displays pay-per-click advertising.
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) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of any of its NATIONAL MERIT, MERIT SCHOLAR or MERIT SCHOLARSHIP trademarks with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <nationalmeritscholarships.com> domain name incorporates Complainant’s NATIONAL MERIT, MERIT SCHOLAR and MERIT SCHOLARSHIP trademarks less their spaces, adds an “s,” then follows all with the generic top-level domain “.com.” Under the Policy, the resulting differences between Complainant’s trademarks and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s marks. Therefore, the Panel concludes that Respondent’s <nationalmeritscholarships.com> domain name is confusingly similar to Complainant’s NATIONAL MERIT, MERIT SCHOLAR and MERIT SCHOLARSHIP trademarks pursuant to Policy ¶ 4(a)(i). See KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”); see also Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).”); see additionally LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Fahad Muhammad” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <nationalmeritscholarships.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <nationalmeritscholarships.com> domain name for the purposes of Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Additionally, Respondent uses <nationalmeritscholarships.com> in furtherance of addressing a website that competes with Complainant. Notably, the <nationalmeritscholarships.com> website display links that reference scholarship opportunities similar to those offered by Complainant. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent uses the at-issue confusingly similar domain name to capitalize on Complainant’s goodwill by exploiting the consumer confusion Respondent created between its <nationalmeritscholarships.com> domain name and associated website, and Complainant’s trademarks. Respondent’s use of the confusingly similar domain name to compete with Complainant, either directly or indirectly, is evidence of bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii) and bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1612750 (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).”).
Next, Respondent displayed pay-per-click advertisements on the <nationalmeritscholarships.com> website thereby further indicating its bad faith. Respondent’s use of the confusingly similar domain name to profit from monetized advertising links demonstrates bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the NATIONAL MERIT, MERIT SCHOLAR and MERIT SCHOLARSHIP marks when it registered <nationalmeritscholarships.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademarks; from Respondent’s combining of such marks in the at-issue domain name, and from Respondent’s use of the domain name and associated website to compete with Complainant as discussed elsewhere herein. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Abbott Laboratories v. Domain May Be For Sale, Check afternic.com Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, D2017-2124 (WIPO Dec. 22, 2017) (noting that Respondent’s registration and use of <enssure.com> domain for similar goods offered by Complainant for decades under the ENSURE mark “strongly suggest[ed] that Respondent knew of, and had Complainant and its ENSURE nutrition product in mind at the time of registering the disputed domain name” and indicated “that this registration was in bad faith.”); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationalmeritscholarships.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 17, 2021
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