The Board of Trustees of the Leland Stanford Junior University v. Dharshinee Naidu
Claim Number: FA1902001831809
Complainant is The Board of Trustees of the Leland Stanford Junior University (“Complainant”), represented by Sam E. Iverson of Pillsbury Winthrop Shaw Pittman LLP, California, USA. Respondent is Dharshinee Naidu (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stanfordradio.com>, <radiostanford.com>, <stanfordcampus.com>, <campusstanford.com>, <stanfordmarket.com>, <stanfordnet.com>, <stanfordwholesale.com>, <stanfordinformation.com>, <stanfordnewspaper.com>, <stanfordcentre.com>, <stanfordbuilding.com>, <stanfordmatch.com>, <stanfordwholesalemart.com>, <stanfordcamp.com>, <stanfordentrepreneur.net>, <stanfordapplication.com>, <stanfordtours.com>, <stanfordwatch.com>, <stanfordpersonal.com>, <stanfordreport.com>, <stanfordcarrental.com>, and <cgistanford.com>, registered with eNom, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2019; the Forum received payment on February 27, 2019.
On February 28, 2019, eNom, LLC confirmed by e-mail to the Forum that the <stanfordradio.com>, <radiostanford.com>, <stanfordcampus.com>, <campusstanford.com>, <stanfordmarket.com>, <stanfordnet.com>, <stanfordwholesale.com>, <stanfordinformation.com>, <stanfordnewspaper.com>, <stanfordcentre.com>, <stanfordbuilding.com>, <stanfordmatch.com>, <stanfordwholesalemart.com>, <stanfordcamp.com>, <stanfordentrepreneur.net>, <stanfordapplication.com>, <stanfordtours.com>, <stanfordwatch.com>, <stanfordpersonal.com>, <stanfordreport.com>, <stanfordcarrental.com>, and <cgistanford.com> domain names are registered with eNom, LLC and that Respondent is the current registrant of the names. eNom, LLC has verified that Respondent is bound by the eNom, 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 March 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2019 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@stanfordradio.com, postmaster@radiostanford.com, postmaster@stanfordcampus.com, postmaster@campusstanford.com, postmaster@stanfordmarket.com, postmaster@stanfordnet.com, postmaster@stanfordwholesale.com, postmaster@stanfordinformation.com, postmaster@stanfordnewspaper.com, postmaster@stanfordcentre.com, postmaster@stanfordbuilding.com, postmaster@stanfordmatch.com, postmaster@stanfordwholesalemart.com, postmaster@stanfordcamp.com, postmaster@stanfordentrepreneur.net, postmaster@stanfordapplication.com, postmaster@stanfordtours.com, postmaster@stanfordwatch.com, postmaster@stanfordpersonal.com, postmaster@stanfordreport.com, postmaster@stanfordcarrental.com, and postmaster@cgistanford.com. Also on March 4, 2019, 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 March 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is an internationally well-known, premier educational and research university, which has operated under the STANFORD mark since 1891. Complainant has rights in the STANFORD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,221,613, registered Dec. 28, 1982). Respondent’s <stanfordradio.com>, <radiostanford.com>, <stanfordcampus.com>, <campusstanford.com>, <stanfordmarket.com>, <stanfordnet.com>, <stanfordwholesale.com>, <stanfordinformation.com>, <stanfordnewspaper.com>, <stanfordcentre.com>, <stanfordbuilding.com>, <stanfordmatch.com>, <stanfordwholesalemart.com>, <stanfordcamp.com>, <stanfordentrepreneur.net>, <stanfordapplication.com>, <stanfordtours.com>, <stanfordwatch.com>, <stanfordpersonal.com>, <stanfordreport.com>, <stanfordcarrental.com>, and <cgistanford.com>[i]
2. The domain names are confusingly similar to Complainant’s mark as they each add a generic/descriptive term (“radio,” “campus,” “market,” “net,” “wholesale,” “information,” “newspaper,” “centre,” “building,” “match,” “wholesale mart,” “camp,” “entrepreneur,” “application,” “tours,” “watch,” “personal,” “report,” cgi,” or “car rental”) along with either the “.com” or “.net” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the STANFORD mark.
4. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent’s use of the domain names is an obvious attempt to commercially benefit from users’ misdirection from Complainant’s real website to Respondent’s news websites where Respondent aggregates videos, news, and other content from Complainant’s own website.
5. Respondent registered and uses the domain names in bad faith. Respondent is a known cybersquatter who has multiple adverse UDRP decisions and also registered twenty-two domain names comprising of Complainant’s STANFORD mark.
6. Further, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with and benefiting from the goodwill and fame of the STANFORD mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s news website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STANFORD mark. Respondent’s domain names are confusingly similar to Complainant’s STANFORD mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <stanfordradio.com>, <radiostanford.com>, <stanfordcampus.com>, <campusstanford.com>, <stanfordmarket.com>, <stanfordnet.com>, <stanfordwholesale.com>, <stanfordinformation.com>, <stanfordnewspaper.com>, <stanfordcentre.com>, <stanfordbuilding.com>, <stanfordmatch.com>, <stanfordwholesalemart.com>, <stanfordcamp.com>, <stanfordentrepreneur.net>, <stanfordapplication.com>, <stanfordtours.com>, <stanfordwatch.com>, <stanfordpersonal.com>, <stanfordreport.com>, <stanfordcarrental.com>, and <cgistanford.com> domain names and that Respondent registered and uses the domain names 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 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(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 has rights in the STANFORD mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,221,613, registered Dec. 28, 1982). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). Accordingly, Complainant has established rights in the STANFORD mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s domain names are confusingly similar to Complainant’s mark as they each add a generic/descriptive term (“radio,” “campus,” “market,” “net,” “wholesale,” “information,” “newspaper,” “centre,” “building,” “match,” “wholesale mart,” “camp,” “entrepreneur,” “application,” “tours,” “watch,” “personal,” “report,” cgi,” or “car rental”) along with either the “.com” or “.net” gTLD. The addition of generic or descriptive terms and gTLDs generally do not sufficiently distinguish a domain name from a mark for the purposes of a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel holds that the <stanfordradio.com>, <radiostanford.com>, <stanfordcampus.com>, <campusstanford.com>, <stanfordmarket.com>, <stanfordnet.com>, <stanfordwholesale.com>, <stanfordinformation.com>, <stanfordnewspaper.com>, <stanfordcentre.com>, <stanfordbuilding.com>, <stanfordmatch.com>, <stanfordwholesalemart.com>, <stanfordcamp.com>, <stanfordentrepreneur.net>, <stanfordapplication.com>, <stanfordtours.com>, <stanfordwatch.com>, <stanfordpersonal.com>, <stanfordreport.com>, <stanfordcarrental.com>, and <cgistanford.com> domain names are confusingly similar to the STANFORD mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <stanfordradio.com>, <radiostanford.com>, <stanfordcampus.com>, <campusstanford.com>, <stanfordmarket.com>, <stanfordnet.com>, <stanfordwholesale.com>, <stanfordinformation.com>, <stanfordnewspaper.com>, <stanfordcentre.com>, <stanfordbuilding.com>, <stanfordmatch.com>, <stanfordwholesalemart.com>, <stanfordcamp.com>, <stanfordentrepreneur.net>, <stanfordapplication.com>, <stanfordtours.com>, <stanfordwatch.com>, <stanfordpersonal.com>, <stanfordreport.com>, <stanfordcarrental.com>, and <cgistanford.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the infringing domain names, as Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the STANFORD mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Dharshinee Naidu” as the registrant for the domain names, and nothing in the record indicates that Complainant authorized Respondent to use the STANFORD mark for any purpose. Accordingly, that Respondent is not commonly known by the foregoing domain names under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent’s use of the domain names is an obvious attempt to commercially benefit from users’ misdirection from Complainant’s real website to Respondent news websites where it aggregates videos, news, and other content from Complainant’s own website. Using a domain name incorporating the mark of another to offer content from a complainant’s website, or for an otherwise unrelated purpose, shows a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (finding no rights or legitimate interests where Respondent offered Complainant’s own financial news services in the Russian language); see also Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). Complainant provides various screenshots of the webpages associated with the domain names, all of which appear to resolve to similar news websites containing video and news articles relating to Complainant’s STANFORD mark. Thus, the Respondent’s use of the domain names provides evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is a known cybersquatter who has multiple adverse UDRP decisions against it, and also registered twenty-two domain names comprising of Complainant’s STANFORD mark. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to evidence bad faith under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Further, a respondent who registers multiple domain names incorporating a complainant’s mark can be found to have acted in bad faith under the same provision of the Policy. See Deutsche Telekom AG v. Dana Dudones, FA 1798440 (Forum Sep. 7, 2018) (“Here the same registrant registered the seven disputed domain names over a two-day period [. . .] Thus the Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).”). Complainant provides multiple UDRP cases listing the respondent as “Dharshinee Naidu,” the Respondent in the current proceeding. Accordingly, the Panel finds that Respondent’s prior adverse UDRP decisions along with the registration of multiple confusingly similar domain names in this proceeding is evidence of bad faith under Policy ¶ 4(b)(ii).
Further, Complainant claims that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with and benefiting from the goodwill and fame of the STANFORD mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s news website. Using a confusingly similar domain name incorporating the mark of another to trade upon the goodwill of a complainant’s mark for commercial gain shows bad faith under Policy ¶ 4(b)(iv). See Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Dell Inc. v. Prashant Chhibber, FA 1785651 (Forum June 1, 2018) (“The Panel finds that Respondent used the domain names to create confusion with Complainant’s DELL mark for commercial gain and that Respondent registered the domain names in bad faith under Policy ¶ 4(b)(iv).”). Complainant has provided screenshots of the webpages associated with the domain names, all of which appear to resolve to similar news websites containing video and news articles relating to Complainant’s STANFORD mark. Accordingly, Respondent has attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
The Panel finds 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 <stanfordradio.com>, <radiostanford.com>, <stanfordcampus.com>, <campusstanford.com>, <stanfordmarket.com>, <stanfordnet.com>, <stanfordwholesale.com>, <stanfordinformation.com>, <stanfordnewspaper.com>, <stanfordcentre.com>, <stanfordbuilding.com>, <stanfordmatch.com>, <stanfordwholesalemart.com>, <stanfordcamp.com>, <stanfordentrepreneur.net>, <stanfordapplication.com>, <stanfordtours.com>, <stanfordwatch.com>, <stanfordpersonal.com>, <stanfordreport.com>, <stanfordcarrental.com>, and <cgistanford.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 5, 2019
[i]Respondent registered the domain names on the following dates: <stanfordradio.com> (May 9, 2016), <radiostanford.com> (May 9, 2016), <stanfordcampus.com> (May 9, 2016), <campusstanford.com> (May 9, 2016), <stanfordmarket.com> (May 9, 2016), <stanfordnet.com> (May 9, 2016), <stanfordwholesale.com> (May 9, 2016), <stanfordinformation.com> (May 9, 2016), <stanfordnewspaper.com> (May 9, 2016), <stanfordcentre.com> (May 9, 2016), <stanfordbuilding.com> (May 9, 2016), <stanfordmatch.com> (May 9, 2016), <stanfordwholesalemart.com> (June 1, 2016), <stanfordcamp.com> (May 9, 2016), <stanfordentrepreneur.net> (June 14, 2016), <stanfordapplication.com> (May 9, 2016), <stanfordtours.com> (May 9, 2016), <stanfordwatch.com> (May 9, 2016), <stanfordpersonal.com> (May 9, 2016), <stanfordreport.com> (May 9, 2016), <stanfordcarrental.com> (May 9, 2016), and <cgistanford.com> (May 9, 2016).
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