Acton Educational Services, Inc. d/b/a West Coast University v. Adam Smith
Claim Number: FA0812001238865
Complainant is Acton Educational Services, Inc. d/b/a West Coast University (“Complainant”), represented by Michelle A. Hon, of Duane Morris, LLP, California, USA. Respondent is Adam Smith (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <westcoastuniversity.asia>, registered with GoDaddy.com, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 17, 2008.
On December 16, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <westcoastuniversity.asia> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@westcoastuniversity.asia by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <westcoastuniversity.asia> domain name is identical to Complainant’s WEST COAST UNIVERSITY mark.
2. Respondent does not have any rights or legitimate interests in the <westcoastuniversity.asia> domain name.
3. Respondent registered and used the <westcoastuniversity.asia> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Acton Educational Services, Inc. d/b/a West Coast University, provides educational services for individuals with a focus on courses and training for undergraduates and professionals. Complainant provides these services under its WEST COAST UNIVERSITY mark, which it first registered with the United States Patent and Trademark Office (“USPTO”) on April 4, 2007 (Reg. No. 3,232,786).
Respondent registered the disputed domain name on May 15, 2008. Respondent’s disputed domain name resolves to a website that purports to sell collegiate degrees and attempts to collect personal and financial information from Internet users.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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 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.
Complainant has provided evidence of the registration of its WEST COAST UNIVERSITY mark with the USPTO. Therefore, the Panel finds Complainant has sufficiently established rights in its mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority).
Respondent’s <westcoastuniversity.asia> domain name contains Complainant’s WEST COAST UNIVERSITY mark with the deletion of the spaces between the terms and the addition of the top-level domain “.asia.” The Panel finds these changes are irrelevant when comparing a disputed domain name to a mark under Policy ¶ 4(a)(i) because spaces are not permissible characters in a domain name and top-level domains are a requirement of every domain name. Thus, the Panel finds Respondent’s <westcoastuniversity.asia> domain name is identical to Complainant’s WEST COAST UNIVERSITY mark pursuant to Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must establish a prima facie case to support these assertions, and the Panel finds Complainant has done so in these proceedings. Once Complainant has produced a sufficient prima facie case, the burden shifts to Respondent to establish it does have rights or legitimate interests in the disputed domain name. Respondent failed to submit a response to these proceedings, thus the Panel may infer Respondent lacks rights and legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent’s disputed domain name resolves to a website that purports to offer educational degrees. Complainant asserts that Respondent is not a real educational institution and that its assertions of accreditation are false and misleading. The Panel infers that Respondent is seeking to commercially gain from this purported offering through the use of a disputed domain name identical to Complainant’s mark, and that Respondent has therefore failed to create a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Complainant alleges that Respondent is not licensed or
otherwise authorized to use Complainant’s mark.
The Panel notes that the WHOIS information for the disputed domain name
lists Respondent as “Adam Smith.”
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(ii).
See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Instron Corp. v.
Kaner, FA
768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was
not commonly known by the <shoredurometer.com> and
<shoredurometers.com> domain names because the WHOIS information listed
Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of
the disputed domain names and there was no other evidence in the record to
suggest that the respondent was commonly known by the domain names in dispute).
Complainant alleges that Respondent has engaged in “phishing,” which describes a situation where a respondent fraudulently uses a disputed domain name to obtain the personal and private information of unsuspecting Internet users. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”). In this case, Respondent is alleged to have created a false website that purports to offer educational degrees, and provides opportunities for Internet users to contact Complainant and pay for such degrees. Complainant contends that Respondent is not a real institution, and that its claims of accreditation are false and misleading, as Complainant argues that the alleged accreditor is not approved by the federal government. The Panel infers that Respondent has engaged in phishing, in that the disputed domain name is likely used for such fraudulent purposes. The Panel finds this conclusion to be bolstered by the fact that the disputed domain name is identical to Complainant’s mark. As such, the Panel finds this evidence to demonstrate a further lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website that
purports to offer educational degrees for sale.
Given the use of the mark in an identical disputed domain name, the
Panel finds that Respondent has attempted to attract Internet users seeking
Complainant for commercial gain through a likelihood of confusion as to the
source of the disputed domain name. This
constitutes evidence of Respondent’s bad faith registration and use under
Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc.
v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse
consumers is not required for a finding of trademark infringement, intent to
deceive is strong evidence of a likelihood of confusion."); see also Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain).
The Panel has already
found that Respondent has engaged in a phishing exercise. The Panel considers Respondent’s such use of
deception to target Internet users seeking Complainant’s educational services
to constitute additional evidence of Respondent’s bad faith registration and
use under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar.
29, 2004) (“The domain name <billing-juno.com> was registered and used in
bad faith by using the name for fraudulent purposes.”); see also Wells Fargo & Co.
v. Maniac State, FA
608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith where the respondent
registered the <wellsbankupdate.com> domain name in order to fraudulently
acquire the personal and financial information of the complainant’s customers).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <westcoastuniversity.asia> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 26, 2009
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