Regents of the University of Michigan v. VistaPrint Technologies Ltd
Claim Number: FA1208001460764
Complainant is Regents of the University of Michigan (“Complainant”), represented by Paul R. Fransway of Butzel Long, P.C., Michigan, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <umichregents.com>, registered with Tucows, 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 August 30, 2012; the National Arbitration Forum received payment on August 30, 2012.
On August 31, 2012, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <umichregents.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 August 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2012 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@umichregents.com. Also on August 31, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 28, 2012, 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 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 <umichregents.com> domain name is confusingly similar to Complainant’s UMICH mark.
2. Respondent does not have any rights or legitimate interests in the <umichregents.com> domain name.
3. Respondent registered and used the <umichregents.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, the Regents of the University of Michigan, has rights in the UMICH mark, which it uses in connection with the internationally known University of Michigan, founded in 1817.
Respondent registered the <umichregents.com> domain name on July 17, 2012. The disputed domain name resolves to a parked website, and Respondent uses the e-mail address associated with the domain name to send phishing e-mails, soliciting pricing of goods by using the name of an actual employee in Complainant’s purchasing department.
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(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.”).
Complainant argues that it has rights in the UMICH mark. While the Policy establishes trademark registration as a way to demonstrate rights in a mark, the Panel may find that registration of a mark is not necessary for Complainant to have rights in the UMICH mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist). Therefore, the Panel may consider the totality of the circumstances to determine whether Complainant has common law rights in the UMICH mark.
Complainant contends that it has common law rights in the UMICH mark. Complainant asserts that Complainant has been using the UMICH mark continuously since 1985. Complainant asserts that it registered the UMICH mark in the <umich.edu> domain name on October 7, 1985 and registered the UMICH mark with the State of Michigan Department of Consumer and Industry Services Bureau of Commercial Services on May 31, 2002. Complainant alleges that it uses its mark in connection with an internationally known leading research institution conducting educational training at a college and postgraduate level, the University of Michigan. Complainant notes that the UMICH mark has achieved high visibility through its use in connection with programs, research, and education, thus making it famous. Complainant attaches evidence of the mark’s fame via a Google search returning results almost exclusively relating to Complainant. In Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), the panel found that a complainant had established secondary meaning in its mark by virtue of its continuous and ongoing use of the mark. Therefore, the Panel finds that the UMICH mark has achieved secondary meaning and that Complainant has rights in the UMICH mark under Policy ¶ 4(a)(i).
Respondent’s <umichregents.com> domain name is confusingly similar to Complainant’s UMICH mark. The Panel finds that Respondent’s addition of the descriptive term “regents,” the governing body and part of the official title of the institution the UMICH mark is associated with, fails to differentiate the <umichregents.com> domain name from the UMICH mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant for purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <umichregents.com> domain name is confusingly similar to the UMICH mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the UMICH mark. Complainant states that Respondent is not affiliated with Complainant or authorized or licensed to use the UMICH mark. The WHOIS record for the <umichregents.com> domain name lists “VistaPrint Technologies Ltd” as the domain name registrant. Panels have previously held that the WHOIS listing is illustrative of whether a respondent is commonly known by a disputed domain name. 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). Thus, the Panel finds that Respondent is not commonly known by the <umichregents.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s use of the disputed domain name does not provide Respondent with rights or legitimate interests. The <umichregents.com> domain name resolves to a parked website and Respondent uses the e-mail address associated with the domain name to send e-mails soliciting the pricing of goods, while purporting to be an actual employee in Complainant’s purchasing department. Complainant refers to this as phishing; however, Respondent’s use does not exactly fit the definition of phishing. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”). Nonetheless, the Panel finds that Respondent’s use of the domain name to request price quotes on research materials from Complainant’s vendors is fraudulent and an attempt to pass itself off as Complainant. Therefore, the Panel finds that Respondent’s use of the <umichregents.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel notes that the bad faith factors identified in Policy ¶ 4(b) have been interpreted by UDRP panels as being merely illustrative and not an exclusive list of bad faith instances under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Therefore, the Panel may look to the totality of the circumstances in making its determinations under Policy ¶ 4(a)(iii).
Under Policy ¶ 4(a)(iii), Complainant contends that Respondent is commercially benefitting from its registration and use of the <umichregents.com> domain name, though Complainant does not explain how. However, Complainant has supplied the Panel with e-mail evidence to show that Respondent has attempted to pass itself off as one of Complainant’s purchasing agents to request price quotes on research materials from Complainant’s vendors. The Panel finds that Respondent’s fraudulent attempts to pass itself off as Complainant constitute evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the UMICH mark prior to registration of the domain names because of Complainant's use of the mark since 1985. The Panel agrees and finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that 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 <umichregents.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 5, 2012
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