national arbitration forum

 

DECISION

 

Maricopa Community College District v. College.com, LLC c/o Jason Levine

Claim Number:  FA0508000536190

 

PARTIES

Complainant is Maricopa Community College District (“Complainant”), represented by Christopher T. Pierson, of Lewis and Roca LLP, 40 North Central Avenue, Phoenix, AZ 85004.  Respondent is College.com, LLC c/o Jason Levine  (“Respondent”), 7223 NW 123 Ave., Parkland, Fl 33076.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <phoenixcollege.com>, registered with Namestream.com, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 10, 2005.

 

On August 17, 2005, Namestream.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <phoenixcollege.com> domain name is registered with Namestream.com, Inc. and that Respondent is the current registrant of the name.  Namestream.com, Inc. has verified that Respondent is bound by the Namestream.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On August 17, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 6, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@phoenixcollege.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 12, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin as Panelist.

 

Subsequently, Respondent submitted a Response that was late due to an unexplained “miscommunication.”  In the absence of any explanation and in the interest of offering parties to a Domain Name Dispute a reliable dispute resolution process, including firm deadlines and contained costs, this Panel declines to consider the untimely Response.  For the same reason, the Panel declines to consider an untimely Additional Submission by Complainant.

 

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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <phoenixcollege.com> domain name is identical to Complainant’s PHOENIX COLLEGE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <phoenixcollege.com> domain name.

 

3.      Respondent registered and used the <phoenixcollege.com> domain name in bad faith.

 

B.  Respondent failed to submit a timely Response in this proceeding.

 

FINDINGS

Complainant, Maricopa Community College District, is an educational institution located within Maricopa County, Arizona.  Complainant is the country’s largest community college district with an enrollment of over a quarter of a million students.  Complainant operates a number of colleges under statutory authority, including Phoenix College, which was founded in 1920 and has continuously provided educational services under the PHOENIX COLLEGE mark for over eighty-five years.

 

Respondent, Jason Levine, registered the <phoenixcollege.com> domain name on October 11, 2004.  Respondent is using the disputed domain name to redirect Internet users to Respondent’s commercial website that advertises services that compete with Complainant’s higher education services.

 

DISCUSSION

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 timely response, the Panel shall decide this administrative proceeding on the basis of Complainant's representations and submissions 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).

 

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.

 

Identical and/or Confusingly Similar

 

Under Policy ¶ 4(a)(i), a complainant need not hold a registered trademark to establish rights in a mark.  Complainant operates a number of colleges under statutory authority, including Phoenix College, which was founded in 1920 and has continuously provided educational services under the PHOENIX COLLEGE mark for over eighty-five years.  Thus, Complainant has established common law rights in the PHOENIX COLLEGE 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); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).

 

Respondent’s <phoenixcollege.com> domain name is identical to Complainant’s PHOENIX COLLEGE mark because the domain name features Complainant’s mark in its entirety, omits the space between the terms “phoenix” and “college,” and adds the generic top-level domain (gTLD) “.com” to the mark.  The Panel finds that such minor alterations to Complainant’s mark are insufficient to negate the identical aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <phoenixcollege.com> domain name.  Respondent is using the <phoenixcollege.com> domain name to redirect Internet users to Respondent’s commercial website featuring services that compete with Complainant’s higher education services.  Respondent’s use of a domain name that is identical to Complainant’s PHOENIX COLLEGE mark to redirect Internet users interested in Complainant’s services to a website that offers similar services in competition with Complainant’s services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).

 

Moreover, there is no proof in the record suggesting that Respondent is commonly known by the <phoenixcollege.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the <phoenixcollege.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name nor was the respondent using the domain name in connection with a legitimate or fair use).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent is using the <phoenixcollege.com> domain name, which is identical to Complainant’s PHOENIX COLLEGE mark, to redirect Internet users to Respondent’s commercial website that features services that compete with Complainant’s services.  The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website.  Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website.  Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <phoenixcollege.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Sandra Franklin, Panelist

Dated:  September 22, 2005

 

 

 

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