Scholarship America, Inc. v. Private Registrations Aktien Gesellschaft
Claim Number: FA1105001387326
Complainant is Scholarship America, Inc. (“Complainant”), represented by Patricia I. Reding of Faegre & Benson LLP, Minnesota, USA. Respondent is Private Registrations Aktien Gesellschaft (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wadollarsforscholars.org>, registered with Network Solutions LLC.
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 May 5, 2011; the National Arbitration Forum received payment on May 11, 2011.
On May 6, 2011, Network Solutions LLC confirmed by e-mail to the National Arbitration Forum that the <wadollarsforscholars.org> domain name is registered with Network Solutions LLC and that Respondent is the current registrant of the name. Network Solutions LLC has verified that Respondent is bound by the Network Solutions 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 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2011 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@wadollarsforscholars.org. Also on May 18, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2011, 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" 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wadollarsforscholars.org> domain name is confusingly similar to Complainant’s DOLLARS FOR SCHOLARS mark.
2. Respondent does not have any rights or legitimate interests in the <wadollarsforscholars.org> domain name.
3. Respondent registered and used the <wadollarsforscholars.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Scholarship America, Inc., develops and administers educational scholarship programs under its DOLLARS FOR SCHOLARS mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 924,012 issued November 16, 1971). Complainant’s predecessor in interest transferred its rights in the DOLLARS FOR SCHOLARS mark to Complainant through a trademark assignment on February 3, 2003.
Respondent registered the disputed domain name on January 6, 2003. The disputed domain name resolves to a website featuring a search portal for searches such as, “College Scholarship Search,” “Apply for Scholarships,” “Teaching Scholarships,” and “MBA Scholarships.” When an Internet user clicks on any of these search terms, they are directed to sponsored listings, from which Respondent likely receives financial compensation.
Respondent has been the respondent in multiple prior UDRP proceedings resulting in the transfer of the disputed domain names in those cases to the respective complainants. See, e.g., La Quinta Worldwide L.L.C. v. Private Registrations Aktien Gesellschaft, D2010-1442 (WIPO Oct. 26, 2010); see also Starwood Hotels & Resorts Worldwide Inc. Westing Hotel Management LP v. Private Registrations Aktien Gesellschaft, Domain Admin, D2010-0527 (WIPO June 9, 2010).
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’s claim of rights arises from the assignment of the trademark to Complainant from its predecessor in interest on February 3, 2003. In support of its claim, Complainant supplies evidence of the trademark registration and the assignment. The Panel finds that the registration of the DOLLARS FOR SCHOLARS mark with the USPTO, coupled with the assignment of the mark to Complainant, give Complainant enforceable rights in the mark under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment). Furthermore, the Panel finds that it is irrelevant whether Complainant has provided evidence of a trademark registration in the country where Respondent resides or operates, so long as Complainant has proven rights in at least one jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <wadollarsforscholars.org> domain name is confusingly similar to Complainant’s mark. Complainant contends that the letters “wa” are the common postal code abbreviation for the state of Washington and that the inclusion of a geographic term or abbreviation does not distinguish the disputed domain name from Complainant’s mark. The Panel agrees. See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Additionally, the disputed domain name removes the spaces from between the terms of the mark and appends the generic top-level domain (“gTLD”) “.org.” The Panel finds that these alterations do not affect a confusingly similar analysis under Policy ¶ 4(a)(i). See 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). Therefore, the Panel finds that Respondent’s <wadollarsforscholars.org> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
According to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case in support of its contention that Respondent lacks rights and legitimate interests in the disputed domain name before the burden will shift to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See 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 Panel finds that Complainant has upheld its burden. Respondent, however, has failed to come forth with any evidence that would establish rights or legitimate interests in the <wadollarsforscholars.org> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will consider the evidence in the record in light of the Policy ¶ 4(c) factors to make a complete determination on this issue.
Complainant asserts that it has nearly 1,100 local chapters of its organization, each of which goes by a different name, which often include a geographic descriptor with Complainant’s DOLLARS FOR SCHOLARS mark. Complainant states that Respondent is not, and has never been, a licensee of Complainant or Complainant’s predecessors in interest and is not an authorized chapter of Complainant’s scholarship program. The WHOIS information does not provide any evidence of a connection between Respondent and the disputed domain name. Without the benefit of a Response, the Panel can find no evidence that would support a finding that Respondent is commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also 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).
Complainant asserts that Respondent’s disputed domain name resolves to a website with links to scholarships and education sites that compete with Complainant. Additionally, Complainant contends that Respondent profits by way of click-through fees obtained each time an Internet user selects one of the sponsored links. The Panel finds that Complainant’s contentions are justifiable and thus finds that Respondent is not using the disputed domain name in connection with 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent has been the respondent in multiple prior UDRP proceedings resulting in the transfer of the disputed domain names in those cases to the respective complainants. See, e.g., La Quinta Worldwide L.L.C. v. Private Registrations Aktien Gesellschaft, D2010-1442 (WIPO Oct. 26, 2010); see also Starwood Hotels & Resorts Worldwide Inc. Westing Hotel Management LP v. Private Registrations Aktien Gesellschaft, Domain Admin, D2010-0527 (WIPO June 9, 2010). The Panel finds that multiple prior adverse UDPR proceedings show a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Respondent’s registration and use of the disputed domain name to provide sponsored links to Complainant’s competitors constitutes a disruption of Complainant’s business. As such, the Panel finds that Respondent has also demonstrated bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Finally, Respondent’s <wadollarsforscholars.org> domain name directs Internet users to links to Complainant’s competitors from which Respondent like profits. Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s DOLLARS FOR SCHOLARS mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The Panel finds this to be evidence of Respondent’s bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
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 <wadollarsforscholars.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin Panelist
Dated: June 16, 2011
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