Southern
Claim Number: FA0904001258605
Complainant is Southern
California University for Professional Studies, Inc. d/b/a California Southern University (“Complainant”),
California, USA, represented by Michelle
A. Hon, of Duane Morris, LLP, California,
USA. Respondent is Kooi Lan Wan (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <scups-edu.info>,
registered with NAMESDIRECT.
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 April 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 21, 2009.
On April 21, 2009, NAMESDIRECT confirmed by e-mail to the National Arbitration Forum that the <scups-edu.info> domain name is registered with NAMESDIRECT and that Respondent is the current registrant of the name. NAMESDIRECT has verified that Respondent is bound by the NAMESDIRECT 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 April 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 20, 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@scups-edu.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 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 <scups-edu.info> domain name is confusingly similar to Complainant’s SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark.
2. Respondent does not have any rights or legitimate interests in the <scups-edu.info> domain name.
3. Respondent registered and used the <scups-edu.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Southern California University for Professional Studies, Inc., founded Southern California University for Professional Studies, a/k/a “SCUPS,” in 1978. Complainant has established common law rights in the SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark in connection with offering educational services. Complainant has changed its name to California Southern University, but continues to do business under the SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark.
Respondent registered the <scups-edu.info> domain name on March 5, 2008. Respondent has been using the disputed domain name to operate a website purporting to be Complainant’s website, offering educational services and degrees. Respondent has no authorization to use Complainant’s SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark.
Respondent was involved in a prior UDRP proceeding involving the same parties in the instant proceeding. In that proceeding, the Panel transferred the disputed domain name from Respondent to Complainant. See S. California Univ. for Prof’l Sutdies, Inc. v. Wan, FA 183169 (Nat. Arb. Forum Jun. 18, 2008).
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.
A governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i) if Complainant can establish common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
The first use of the SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark in commerce occurred in 1978. Complainant has demonstrated continuous use of the mark in commerce for approximately thirty years. Significantly, there are thirty years of Complainant’s alumni using the Southern California University for Professional Studies mark in connection with their degree conferral and subsequent employment, and Complainant maintains a continuous presence in the higher education field. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Therefore, the Panel finds that through extensive and long-standing use of the mark in commerce, Complainant has established secondary meaning in the mark sufficient to confer common law rights pursuant to Policy ¶ 4(a)(i).
The disputed domain name is confusingly similar to Complainant’s SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark, in that it incorporates a well-known acronym of its mark, SCUPS. It is a common practice for universities to abbreviate or truncate the school name when registering domain names, and the <scups-edu.info> domain name is confusingly similar to the acronym for its SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark under Policy ¶ 4(a)(i). See Algemeen Nederlands Persbureau ANP B.V. v. European Travel Network, D2004-0520 (WIPO Sept. 8, 2004) (finding confusing similarity where “[d]istinctive elements of the Complainant’s marks, notably the acronym ANP, are reproduced entirely in the domain name.”); see also Soc’y of St. Vincent de Paul, Council of U.S. v. Yip, D2004-0121 (WIPO May 25, 2004) (finding that the complainant acquired distinctive common law rights in the SVDP acronym because it had been used for many years to identify the complainant and the charitable services it provided). The addition of the hyphen does not distinguish the disputed domain name from Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). Similarly, the addition of the descriptive abbreviation “edu” does not sufficiently distinguish the <scups-edu.info> domain name from Complainant’s mark The descriptive term “edu” describes Complainant’s educational businesses, which heightens the level of confusing similarity. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). The addition of the generic top-level domain name “.info” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel concludes that Respondent’s <scups-edu.info> domain name is confusingly similar to Complainant’s SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or legitimate interests in the <scups-edu.info> domain name. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must meet its burden of production for its prima facie case, and then the burden is shifted to Respondent. Respondent must bring himself within the purview of Policy ¶ 4(c), or put forward some other reason why he can fairly be said to have relevant rights or legitimate interests in relation to the domain name in question. In this case, Complainant has presented a prima facie case and Respondent failed to respond. The Panel may therefore accept as true, all reasonable inferences contained in the Complaint. The Panel nonetheless chooses to consider the evidence presented to determine if any rights or legitimate interests for Respondent under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
The WHOS information lists Respondent as “Kooi Lan Wan.” Complainant has not authorized Respondent to use the SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark. Therefore, the Panel finds that Respondent is not commonly known by the <scups-edu.info> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is using the disputed
domain name to fraudulently host a website purporting to be Complainant’s own
website and offering educational services.
The Panel concludes that such use, where Respondent has attempted to
pass itself off as Complainant, does not constitute a bona fide offering of goods or services or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See
Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003)
(finding that the respondent attempts to pass itself off as the complainant
online, which is blatant unauthorized use of the complainant’s mark and is
evidence that the respondent has no rights or legitimate interests in the
disputed domain name); see also Mortgage
Research Center LLC v. Miranda, FA
993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case
is also attempting to pass itself off as [the] complainant, presumably for
financial gain, the Panel finds the respondent is not using the
<mortgageresearchcenter.org> domain name for 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 has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent has previously been involved in a UDRP proceeding involving the same parties as in this proceeding, which resulted in a transfer of the disputed domain name to Complainant. See S. California Univ. for Prof’l Studies, Inc. v. Wan, FA 1183169 (Nat. Arb. Forum Jun.18, 2008). Complainant asserts that Respondent has a history of registering domain names infringing on Complainant’s SOUTHERN CALIFORNIA UNIVERSITY FOR PROFESSIONAL STUDIES mark. The Panel agrees and finds Respondent’s registration of the <scups-edu.info> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(ii). See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (“Registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names . . . [and t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”).
Complainant further alleges that Respondent’s use of the <scups-edu.info> domain name to pass off as Complainant is capable of creating confusion as to Complainant’s sponsorship of the website that resolves from the disputed domain name. Respondent is presumably profiting through the intentional attempt to attract Internet users to Respondent’s website through the use of a domain name that is confusingly similar to Complainant’s mark. The Panel concludes that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scups-edu.info> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 9, 2009
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