Miller-Motte Business College, Inc. v. Pham Dinh Nhut
Claim Number: FA1309001517897
Complainant is Miller-Motte Business College, Inc. (“Complainant”), represented by Michelle Hon Donovan of Duane Morris, LLP, California, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <millermotte.com> and <millermottetechnicalcollege.com>, registered with April Sea Information Technology Corporation.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2013; the National Arbitration Forum received payment on September 5, 2013. The Complaint was submitted in English and Vietnamese.
On September 6, 2013, April Sea Information Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <millermotte.com> and <millermottetechnicalcollege.com> domain names are registered with April Sea Information Technology Corporation and that Respondent is the current registrant of the names. April Sea Information Technology Corporation has verified that Respondent is bound by the April Sea Information Technology Corporation 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 September 9, 2013, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of September 30, 2013 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@millermotte.com, postmaster@millermottetechnicalcollege.com. Also on September 9, 2013, the Vietnamese language 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 October 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
Language of the Proceedings
The Registration Agreement is written in Vietnamese, thereby making the language of the proceedings in Vietnamese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Miller-Motte Business College, Inc., uses the MILLER-MOTTE mark in connection with education services. Complainant has rights in the MILLER-MOTTE mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,714,885 filed April 28, 2009; registered November 24, 2009). Complainant has common law rights in the MILLER-MOTTE mark for decades.
Respondent, Pham Dinh Nhut, registered the <millermotte.com> domain name on May 4, 2004, and the <millermottetechnicalcollege.com> domain name on July 29, 2004. Respondent uses the <millermotte.com> and <millermottetechnicalcollege.com> domain names to promote sponsored hyperlinks to third-party websites, some of which compete with Complainant.
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 uses the MILLER-MOTTE mark in connection with education services. Complainant has registered the MILLER-MOTTE mark with the USPTO (Reg. No. 3,714,885 filed April 28, 2009; registered November 24, 2009). Through its trademark registration, Complainant has rights in the MILLER-MOTE mark pursuant to Policy ¶ 4(a)(i), dating back to the April 28, 2009 filing date of the trademark registration. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). These rights are effective regards of where Respondent resides. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant also argues that it has common law rights in the MILLER-MOTTE mark dating back to 1918. Complainant notes that Judge Leon Motte founded the original institution in 1916, and over the years Complainant has been referred to by the MILLER-MOTTE mark. Complainant has used the MILLER-MOTTE mark in promoting its education courses through school catalogs. Complainant operates its for-profit school through the <millermote.edu> and <miller-motte.edu> domain names. Complainant utilized various gTLD domain names, including the now disputed <millermotte.com> domain name. Complainant has had its educational services under the MILLER-MOTTE mark accredited.
Complainant’s use of the MILLER-MOTTE mark is as such that consumers identify the mark specifically with Complainant’s educational services, and have done so for decades. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Thus, the Panel finds that Complainant has Policy ¶ 4(a)(i) common law rights in the MILLER-MOTTE mark which pre-date Respondent’s registration of the disputed domain names.
Complainant argues that Respondent’s <millermotte.com> and <millermottetechnicalcollege.com> domain names are confusingly similar to the MILLER-MOTTE mark. The <millermotte.com> domain name merely removes the mark’s hyphen and adds the gTLD “.com.” The <millermottetechnicalcollege.com> domain name removes the mark’s spacing, adds the gTLD, and also adds the descriptive phrase “technical college.” The removal of the mark’s hyphen and the addition of the gTLD “.com” are not relevant in either of the domain names. See Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (“[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i) identical analysis.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus the Panel finds that the <millermotte.com> domain name is identical to the MILLER-MOTTE mark under Policy ¶ 4(a)(i). As to the <millermottetechnicalcollege.com> domain name, the phrase “technical college” adds no distinctiveness, as the term implies the kind of educational services offered under the MILLER-MOTTE mark. See, e.g., Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions”). Thus the Panel finds that the <millermottetechnicalcollege.com> domain name is confusingly similar to the MILLER-MOTTE mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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).
Complainant argues that Respondent is not known by these domain names. Complainant has not licensed or authorized Complainant’s use of the MILLER-MOTTE mark. The WHOIS information for the <millermotte.com> and <millermottetechnicalcollege.com> domain names indicates that “Pham Dinh Nhut” is the registrant of record. The Panel finds that Respondent is not commonly known by either of the <millermotte.com> and <millermottetechnicalcollege.com> domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006)(there could be no connection between the registrant/respondent and the disputed domain name under Policy ¶ 4(c)(ii) when there was no affirmative evidence to suggest otherwise).
Respondent uses the <millermotte.com> and <millermottetechnicalcollege.com> domain names to promote sponsored hyperlinks to third-party websites, some of which compete with Complainant. Both of the domain names resolve to generic landing pages that promote hyperlink advertisements and other sponsored content. Respondent’s use of the <millermotte.com> and <millermottetechnicalcollege.com> domain names promotes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007)(use of confusingly similar domain names for the hosting of generic and unrelated hyperlink advertisements was neither bona fide nor legitimately noncommercial).
Complainant argues that Respondent has engaged in a pattern of bad faith use and registration. Prior UDRP decisions have been decided against Complainant. See, e.g., Thrivent Financial for Lutherans v. Pham Dinh Nhut, FA 1460791 (Nat. Arb. Forum Oct. 10, 2012); see also Charlotte-Mecklenburg Hosp. Auth. V. Pham Dinh Nhut, FA 1434556 (Nat. Arb. Forum May 28, 2012); see also FCOA, L.L.C. v. Pham Dinh Nhut, FA 1413706 (Nat. Arb. Forum Dec. 20, 2011). The Panel finds that Respondent’s bad faith may be predicated upon a pattern of bad faith registration under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant next argues that Respondent is using the <millermotte.com> and <millermottetechnicalcollege.com> domain names to create a likelihood that Internet users will confuse Complainant as the source, origin, or endorser of the hyperlink advertisements promoted on the domain name’s website. Both domain names resolve to generic hyperlink landing pages. The panel in Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), found that the use of confusingly similar domain names to promote unrelated hyperlink advertisements provided evidence of a bad faith attempt to profit off the likelihood that Internet users mistook the complainant as the source or origin of the domain name and its resolving content. The Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <millermotte.com> and <millermottetechnicalcollege.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 16, 2013
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