Virginia College Savings Plan v. Zhouda
Claim Number: FA1608001689209
Complainant is Virginia College Savings Plan (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Zhouda (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <collegeamerica.xyz>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2016; the Forum received payment on August 15, 2016.
On August 16, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <collegeamerica.xyz> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2016 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@collegeamerica.xyz. Also on August 16, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Trademark/Service Mark Information:
Mark: COLLEGE AMERICA; U.S. Registration No. 2,822,036; Registration Date: March 16, 2004.
Mark: COLLEGEAMERICA; U.S. Registration No. 3,844,306; Registration Date: September 7, 2010
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds (ICANN Rule 3(b)(ix)):
A. The Domain Name is Virtually Identical and Confusingly Similar to Marks in which Complainant has Rights
1. Complainant Virginia College Savings Plan (“Virginia529”) is the largest 529 college savings program in the United States. Operating as an independent state agency in the Commonwealth of Virginia, Virginia529 helps families afford the increasing costs of higher education via a prepaid tuition program. The company employs over 95 associates in the Commonwealth, and it is well-known for its high-quality services that it offers, advertises, and promotes under, among others, its valuable COLLEGE AMERICA and COLLEGEAMERICA Marks.
2. For the past fourteen (14) years, Virginia529 has worked assiduously to build a substantial reservoir of consumer goodwill and respect for its 529 Plan and its COLLEGE AMERICA and COLLEGEAMERICA Marks. To protect its substantial investment in the COLLEGE AMERICA and COLLEGEAMERICA Marks, Virginia529 has applied for and obtained the registrations in the United States, reflected in a table in the Complaint (collectively, the “COLLEGEAMERICA Marks”).
3. The COLLEGEAMERICA Marks are, and have been, valid and subsisting on the Principal Register in the United States Patent and Trademark Office at all times since its registration date, and the registration encompassing COLLEGE AMERICA has achieved incontestable status under 15 U.S.C. § 1064. Virgina529’s incontestable registration is conclusive evidence of the validity of the COLLEGE AMERICA Mark, of Virginia529’s registration and ownership of the COLLEGE AMERICA Mark, and of Virginia529’s exclusive right to use the COLLEGE AMERICA Mark in the United States. Similarly, Virginia529’s registration for COLLEGEAMERICA is prima facie evidence of the validity of the COLLEGEAMERICA Mark, of Virginia529’s registration and ownership of the COLLEGEAMERICA Mark, and of Virginia529’s exclusive right to use the COLLEGEAMERICA Mark in the United States.
4. As a result of Virginia529’s extensive advertising and promotion of its services under the COLLEGEAMERICA Marks, and through favorable industry acceptance and recognition, the relevant consuming public and trade have come to recognize and identify Virginia529 as the source of the top quality financial services and investment opportunities offered in connection with the COLLEGEAMERICA Marks.
5. Accordingly, the COLLEGEAMERICA Marks are assets of incalculable value as an identifier of Virginia529 and, among other things, its high quality services and goodwill.
6. The disputed domain name Respondent registered and is using, <collegeamerica.xyz> (the “Domain”), is virtually identical to the COLLEGEAMERICA Marks. The risk of confusion and harm to Virginia529 stemming from Respondent’s use of the Domain is exacerbated here because Respondent previously used the Domain to host a ‘ransomware’ website and it is currently using URL redirection/URL masking to redirect unsuspecting internet users to a series of webpages that contain advertisements for third-party goods and services.
B. Respondent and Respondent’s Business
1. Respondent’s business is clear: it registers as a domain name the well-known marks of a well-respected independent state agency combined with the new gTLD <.xyz> and it uses that Domain interchangeably as part of its illegal scam (the ransomware site) and to redirect unsuspecting users to webpages that appear to host ‘pop-up’ style advertisements of third parties.
2. Respondent is not sponsored by, or otherwise associated with, Virginia529.
3. Respondent clearly did not, and does not have, a legitimate interest or reason to register and use any domain name incorporating the COLLEGEAMERICA Marks. To start, Respondent’s initial use of the Domain was to host what is commonly referred to as a ransomware site. Ransomware sites are versions of malware and, as was the case here, cause an alert box that cannot be closed to pop-up upon accessing the Domain that generally instructs the user to call a specified number in order to fix an unidentified problem with the user’s computer. Once the number is contacted, the scammer typically convinces the user to provide it access to the user’s computer (allowing misappropriation of private information) or to pay money to fix a non-existent problem. It goes without saying that ransomware sites are illegal.
4. Moreover, although Respondent’s illegal ‘ransomware’ scam appears to have subsided, Respondent’s current use of the Domain further demonstrates it did, and still does, not have a legitimate interest or reason to register and use the Domain. Specifically, despite adopting the COLLEGEAMERICA Marks wholesale, Respondent is not hosting a webpage at the Domain but instead is using URL redirect/URL masking to redirect unsuspecting users to several third party webpages that do not use the words COLLEGE or AMERICA (alone or in combination), let alone offer any types of goods or services related to college anywhere, let alone in America. As demonstrated below, this is not a bona fide use of the Domain, and it is evidence of bad faith registration.
5. As a result, it is clear that Respondent is engaging in a textbook case of cybersquatting in an attempt to profit from the goodwill Virginia529 created in the COLLEGEAMERICA Marks, and Respondent has even gone so far as to engage in illegal conduct.
[a.] Respondent’s Domain Name Is Confusingly Similar to Virginia529’s COLLEGEAMERICA Marks. [ICANN Policy ¶4(a)(i); ICANN Rule 3(b)(ix)(1).]
1. The Domain is virtually identical to the COLLEGEAMERICA Marks.
2. The Domain completely subsumes the COLLEGEAMERICA Marks. This alone makes them confusingly similar. See Navistar Int’l Corp. v. Eiji Takahashi, FA1672359 (Forum May 27, 2016) (finding <navistar.xyz> confusingly similar to the NAVISTAR mark); see also Amazon Technologies, Inc. v. Arbiyani, FA1665621 (Forum Apr. 16, 2016) (finding <amazonindiafashion.com> confusingly similar to the AMAZON mark); Homer TLC, Inc. v. Zilfiqar Ahmed/Super Ads Junction, FA1605517 (Forum Mar. 17, 2015) (finding <onlyhamptonbay.com> confusing similar to the HAMPTON BAY mark); Hewlett-Packard Co. v. Posch Software, FA0095322 (Forum Sept. 12, 2000) (finding <hp-software.com> confusingly similar to the HP Mark).
3. Inclusion of the .xyz element, which is not present in the COLLEGEAMERICA Marks, does not mitigate the risk of confusion. It is well-settled that adding a gTLD is not sufficient to distinguish a domain name from a mark. See Navistar Int’l Corp. v. Eiji Takahashi, FA1672359 (Forum May 27, 2016) (stating that the addition of a general top-level domain does not prevent a finding that the domain is confusingly similar to a mark); 24 Hour Fitness USA, Inc. v. Domain Admin/Private Registrations Aktien Gesellschaft, FA1599649 (Forum Feb. 16, 2015) (same); Microsoft Corp. v. Torres, FA1432610 (Forum April 11, 2012) (same); Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (same).
4. Similarly, it is well-settled that removal of the space between COLLEGE and AMERICA in the COLLEGE AMERICA Mark does not reduce the risk of confusion. See, e.g., Phillips 66 Co. v. Tim Taylor, FA1659658 (Forum Mar. 3, 2016); U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007).
5. The Domain is therefore virtually identical and confusingly similar to the COLLEGEAMERICA Marks. See Twentieth Century Fox Corp. v. Domain Admin, FA1652313 (Forum Dec. 15, 2015) (stating that the <familyguy24.biz> and <fg24.biz> domain names are confusingly similar to the FAMILY GUY mark).
[b.] Respondent Has No Rights or Legitimate Interests in the Domain. [ICANN Policy ¶4(a)(ii); ICANN Rule 3(b)(ix)(2).]
1. Respondent has no rights or legitimate interests in the Domain.
2. Virginia529 has consistently used the COLLEGEAMERICA Marks since at least as early as 2002. As noted above, to protect its substantial investment and the goodwill associated with the COLLEGEAMERICA Marks, Virginia529 obtained, and continues to own, registrations in the United States for the COLLEGE AMERICA and COLLEGEAMERICA Marks in connection with its financial services and investment opportunities. Id. Today, the COLLEGEAMERICA Marks are well-known by relevant consumers, and they are distinctive. See, e.g., Hodgdon Powder Co. v. Alliant Techsystems, Inc., 497 F. Supp. 2d 1221, 1235 (D. Kan. 2007) (explaining that incontestable marks are irrefutably distinctive); Equibrand Corp. v. Reinsman Equestrian Prods., Inc., No. 3:07-cv-0526-P, 2007 WL 1461393, at *4 (N.D. Tex. May 17, 2007) (“[I]f a plaintiff can show that a mark is validly registered, it is presumed distinctive and therefore protectable.”).
3. Respondent has no rights in the COLLEGEAMERICA Marks. Virginia529 has never granted Respondent any license or other rights to use those marks in commerce for any purpose.
4. Upon information and belief, Respondent is not commonly known by any name related to COLLEGE AMERICA or COLLEGEAMERICA. WHOIS information for the Domain confirms this fact. See also 24 Hour Fitness USA, Inc. v. Domain Admin/Private Registrations Aktien Gesellschaft, FA1599649 (Forum Feb. 16, 2015) (finding that WHOIS registry information is a factor in determining that a registrant is not commonly known by a domain name); Am. Express Co. v. (This Domain is for Sale) Joshuathan Invs., Inc., FA0154647 (Forum June 3, 2003) (same).
5. Moreover, Respondent is not engaging, and has not engaged, in a bona fide offering of goods or services under, or a fair use of, the Domain. As noted above, the Domain initially resolved to a ‘ransomware’ webpage and therefore was being used to further an illegal scam. This is not a bona fide offering of goods or services. See, e.g., Capital One Financial Corp. v. Roben Houspian Singerdi, FA1668125 (Forum Apr. 26, 2016) (finding no rights or bona fide use where Domain resolves to ransomware site); see also Ceridian Corp. v. Versata Software, Inc., FA1259927 (Forum June 23, 2009); Juno Online Services, Inc. v. Carl Nelson, FA0241972 (Forum Mar. 29, 2004).
6. Currently, the Domain is being redirected through URL redirection/URL masking to a series of other webpages that contain advertisements of third parties that change each time the internet user attempts to access the Domain. This supports a finding of bad faith on its own. See, e.g., NJ Transit Corp. v. Moniker Privacy Servs., FA1650117 (Forum Jan. 12, 2016); Philip Morris USA Inc. v. Muhammad Faisal, FA1649579 (Forum Dec. 23, 2015). That conclusion is bolstered by the fact that the webpages hosted at the Domain do not use the words COLLEGE or AMERICA (alone or in combination), and they do not offer any goods or services tied to attending college in America. See Ex. C-D. It therefore follows that Respondent deliberately registered the Domain using the COLLEGEAMERICA Marks so that consumers will believe there is a sponsorship, affiliation or connection between Virginia529 and the Domain. Attempting to “detract from or imply any trading off the Complainant’s trademark” is not a legitimate commercial or not-for-profit use under the Policy. See Citigroup Inc. v. Morrish, FA1600832 (Forum Mar. 3, 2015); see also Hewlett- Packard Co. v. Collazo, FA 144628 (Forum Mar. 5, 2003) (finding no legitimate interest or bona fide use where domain links to third-party site with pop-up advertisements).
[c.] Respondent Has Registered and Used the Domain in Bad Faith. [ICANN Policy ¶4(a)(iii); ICANN Rule 3(b)(ix)(3).]
1. Virginia529 has used the COLLEGEAMERICA Marks in the United States for almost a decade and a half, and Virginia529 owns valid, subsisting federal U.S. registrations for those marks.
2. The COLLEGEAMERICA Marks have no meaning other than as an identifier of Virginia529 and its goods and services. Accordingly, there can be little doubt that Respondent registered the Domain with Virginia529, and its marks, squarely in mind. See Black Hills Ammunition, Inc. v. Wall, FA1541570 (Forum Mar. 17, 2014) (finding actual knowledge because there was no legitimate reason for Respondent “to register a domain name containing ‘Black Hills Amo’ other than to trade on Complainant’s trademark rights and that ‘Black Hills Amo’ means nothing other than Complainant’s trademark”). This conclusion is further strengthened by the fact that the webpage hosted at the Domain does not use the words COLLEGE or AMERICA (alone or in combination), let alone offer goods or services related to attending college in America. Respondent’s registration and use of the Domain with full knowledge of the COLLEGEAMERICA Marks strongly evidences bad faith under the Policy. See Minicards Vennootschap Onder Flrma Amsterdam v. Moscow Studios, FA1031703 (Forum Sept. 5, 2007) (finding that Respondent registered the domain in bad faith under Policy ¶4(a)(iii) because it had “actual knowledge of Complainant’s mark when registering the disputed name”); see also Chevron Intellectual Prop. LLC v. Clevely, FA1585715 (Forum Dec. 3, 2014) (same).
3. Respondent’s bad faith is also demonstrated by its failure to provide complete and correct information for the WHOIS records of the Domain. See Ex. A (providing at least incomplete/incorrect address); CNU Online Holdings, LLC v. Domain Admin/Whois Privacy Corp., FA1614972 (Forum May 29, 2015) (noting that use of “falsified or incomplete WHOIS contact information” is evidence of bad faith); Home Dir., Inc. v. HomeDirector, D2000-0111 (WIPO Apr. 11, 2000) (same).
4. Respondent’s bad faith is further demonstrated by its registration and initial use of the Domain – which again completely subsumes Virginia529’s well-known COLLEGEAMERICA Marks – to host a ransomware site. Capital One Financial Corp. v. Roben Houspian Singerdi, FA1668125 (Forum April 26, 2016) (finding bad faith where Domain resolves to ransomware site); see also Thomson Reuters v. shasha zhu, FA1640944 (Forum November 9, 2015); Juno Online Services, Inc. v. Carl Nelson, FA0241972 (Forum Mar. 29, 2004).
5. Respondent’s bad faith is also further demonstrated by its registration and current use of the Domain – which again completely subsumes Virginia529’s well-known COLLEGEAMERICA Marks – to redirect (through URL redirection/URL masking) unsuspecting users to different webpages that contain third-party advertisements that have nothing to do with attending college in America. See, e.g., NJ Transit Corp. v. Moniker Privacy Servs., FA1650117 (Forum Jan. 12, 2016); Philip Morris USA Inc. v. Muhammad Faisal, FA1649579 (Forum Dec. 23, 2015); Hewlett- Packard Co. v. Collazo, FA 144628 (Forum Mar. 5, 2003).
6. Taken as a whole, there can be little doubt that Respondent has acted in complete bad faith throughout the registration and use of the Domain. Respondent’s actions fully justify transfer of the Domain to Virginia529.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 claims rights in the COLLEGEAMERICA mark based on its registration with the United States Patent and trademark Office (“USPTO”) (Reg. No. 3,844,306, registered Sept. 7, 2010). Registration of a trademark with a governmental authority (such as the USPTO) adequately demonstrates Complainant’s trademark rights under Policy ¶4(a)(i). Complainant is not required to prove rights (much less superior rights) in Respondent’s home country; merely that Complainant has some rights somewhere. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”) and Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005). Complainant has rights in the COLLEGEAMERICA mark under Policy ¶ 4(a)(i).
Complainant claims Respondent’s domain is “virtually identical” to its COLLEGEAMERICA mark. Respondent’s domain name wholly incorporates Complainant’s mark (and only Complainant’s mark). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the lack of a space is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits spaces. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (holding that the <rackspace.xyz> domain name is identical to the complainant’s RACKSPACE mark, because, “the addition of a generic top-level domain is seen as trivial and non-distinctive for the purposes of this comparison does not lessen in any way the confusing similarity between the disputed domain name and Complainant’s mark.”). In this case, the domain name is identical to Complainant’s COLLEGEAMERICA mark under Policy ¶ 4(a)(i), not just confusingly similar.
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 claims Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed nor granted any other rights in the COLLEGEAMERICA mark to Respondent. Respondent is not commonly known by the <collegeamerica.xyz> domain name. The WHOIS information lists “Zhouda” as both the registrant’s name and organization. There is no obvious relationship between Respondent’s name and the domain name. In the absence of any evidence to the contrary, panels have used WHOIS information and common sense to conclude a respondent is not commonly known by a domain, see Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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). This panel will do the same. Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent is not making a bona fide offering of goods and services or making a legitimate noncommercial or fair use of <collegeamerica.xyz> domain name. Respondent uses the domain name to redirect Internet users to third-party ransomware (although this usage has dropped off over time). Clearly such a use does not confer any rights under Policy ¶ 4(c). Now the domain name forwards to a web site that serves up a variety of unrelated pop-up ads. Once again, such activities do not confer any rights under Policy ¶ 4(c). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶4(c)(iii).”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)”). Respondent is not making a bona fide offering of goods and services or making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent is using the domain name to redirect Internet users to different websites with unrelated third-party advertisements. A respondent acts in bad faith under Policy ¶ 4(b)(iv) where it uses a domain name to attract internet users to an unrelated web site by creating confusion about who sponsors the web site. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶4(b)(iv)). Respondent seems to be doing just that. Respondent is commercially gaining from intentionally creating a likelihood of confusion surrounding the source, sponsorship, affiliation, or endorsement of its <collegeamerica.xyz> domain name, all of which constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant claims Respondent’s use of the disputed domain previously amounted to an attempt to trick Internet users into downloading malicious ransomware computer software. There is no doubt such activity constitutes bad faith under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii).”). Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant claims Respondent registered the <collegeamerica.xyz> domain name while fully aware of Complainant’s rights in its COLLEGEAMERICA mark. Respondent has not disputed this claim. It appears true to this Panel. Complainant claims Respondent’s registration of the domain name evidences actual knowledge because COLLEGEAMERICA doesn’t have a meaning outside of Complainant’s products and services. Panels have found the method of acquiring a domain name can show bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). While this evidence is a little “slight” and circumstantial, it is sufficient because it is uncontested.
Complainant claims Respondent failed to provide complete and correct WHOIS information for the domain. Respondent claims its name is Zhouda (sort of like a famous singer that only has a first name and no last name). Respondent also claims Zhouda is the organization which owns the domain name. In addition, Respondent claims to be located in Zhouda, Beijing. This strains the Panel’s credulity. It appears Respondent was simply typing the same thing over and over while registering the domain name. This violates Respondent’s obligations to provide accurate information when it registers a domain name. Other panels have decided a respondent’s use of false and/or misleading WHOIS information constitutes bad faith. See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith). For this reason, the Panel concludes Respondent registered and is using the domain name in bad faith.
While Complainant did not mention the fact, the record shows Respondent was offering the domain name for sale to the general public. Presumably, Respondent was interested in selling the domain name to Complainant or a competitor. Once again, it is logical to assume Respondent wanted to sell the domain name for an amount that exceeded its costs (otherwise Respondent could not keep itself in business). This is evidence of bad faith registration and use under Policy ¶ 4(b)(i).
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <collegeamerica.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, September 19, 2016
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