Maricopa Community College District v.
College.com, LLC c/o Jason Levine
Claim
Number: FA0508000536190
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.
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.
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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.
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.
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.
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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