West Coast University, Inc. v. West Coast University Inc / West Coast University
Claim Number: FA1111001416332
Complainant is West Coast University, Inc. (“Complainant”), represented by Michelle Hon Donovan of Duane Morris, LLP, California, USA. Respondent is West Coast University Inc / West Coast University (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <westcoastuniversityonline.us>, registered with Tucows, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2011; the Forum received a hard copy of the Complaint on November 21, 2010.
On November 21, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <westcoastuniversityonline.us> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 22, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 12, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 makes the following assertions:
1. Respondent’s <westcoastuniversityonline.us> domain name is confusingly similar to Complainant’s WEST COAST UNIVERSITY mark.
2. Respondent does not have any rights or legitimate interests in the <westcoastuniversityonline.us> domain name.
3. Respondent registered and used the <westcoastuniversityonline.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, West Coast University, Inc., offers educational services, such as providing courses and training at the undergraduate and professional level. Complainant owns trademark registrations for the WEST COAST UNIVERSITY mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 3,232,786 registered April 24, 2007;
Reg. No. 3,239,193 registered May 8, 2007;
Reg. No. 3,744,516 registered Feb. 2, 2010; &
Reg. No. 3,744,530 registered Feb. 2, 2010.
Respondent, West Coast University Inc / West Coast University, registered the <westcoastuniversityonline.us> domain name on May 18, 2008. The disputed domain name resolves to a website passing itself off as Complainant and attempting to sell fake degrees from a non-existent school and to phish for confidential information from Internet users.
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 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 (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.”).
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant owns trademark registrations for the WEST COAST UNIVERSITY mark with the USPTO:
Reg. No. 3,232,786 registered April 24, 2007;
Reg. No. 3,239,193 registered May 8, 2007;
Reg. No. 3,744,516 registered Feb. 2, 2010; &
Reg. No. 3,744,530 registered Feb. 2, 2010.
The Panel finds Complainant has established rights under Policy ¶ 4(a)(i) in the WEST COAST UNIVERSITY mark through its registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that Respondent’s <westcoastuniversityonline.us> domain name is confusingly similar to Complainant’s WEST COAST UNIVERSITY mark because the disputed domain name consists of the mark, without the separating spaces, added to the generic term “online” and the country code top-level domain (“ccTLD”) “.us.” The Panel finds that adding a generic term to Complainant’s mark does not distinguish the disputed domain name under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). The Panel also concludes that omitting the spaces between the terms of the mark and adding the ccTLD “.us” does not negate a finding of confusing similarity. See Public Broadcasting Serv. v. eLogix Uruguay, FA 1377341 (Nat. Arb. Forum Apr. 19, 2011) (holding that the <pbskidsgames.us> domain name was confusingly similar to the PBS KIDS mark despite the deletion of the spaces between terms and the addition of the ccTLD “.us.”). The Panel thus determines that Respondent’s <westcoastuniversityonline.us> domain name is confusingly similar to Complainant’s WEST COAST UNIVERSITY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <westcoastuniversityonline.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <westcoastuniversityonline.us> domain name. Therefore, the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsi, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it has no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant asserts that Respondent is not licensed or otherwise authorized to use Complainant’s mark in any way. The Panel finds that the WHOIS information for the <westcoastuniversityonline.us> domain name indicates that the registrant is “West Coast University.” The Panel also finds, however, that Respondent has offered no evidence showing any connection between Respondent and the disputed domain name other than the WHOIS information. Based on the lack of supporting evidence showing that Respondent was known by the disputed domain name prior to the disputed domain name’s registration, the Panel concludes that Respondent is not commonly known by the <westcoastuniversityonline.us> domain name according to Policy ¶ 4(c)(iii) despite the WHOIS information. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Complainant argues that Respondent uses the <westcoastuniversityonline.us> domain name to host a website that attempts to sell fraudulent degrees and educational services by presenting itself as a university. Complainant contends that Respondent also uses the resolving website to phish for confidential personal and financial information from Internet users. Complainant asserts that the information provided on the resolving website is false as there is no university operated by Respondent located in California and there are no taxation records for the entity on file with the City of Los Angeles, Office of Finance—Tax and Permits. The Panel holds that selling fraudulent products (related to Complainant’s products) and phishing for personal information under Complainant’s mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant also asserts that Respondent attempts to pass itself off as Complainant. The screenshots provided by Complainant reveal that Respondent’s resolving website is virtually indistinguishable from Complainant’s. The Panel determines that using Complainant’s mark in the <westcoastuniversityonline.us> domain name to host a website attempting to pass itself off as Complainant also reveals a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (holding that the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant does not make any specific allegations under Policy ¶ 4(b)(iii) but does allege that Respondent uses the <westcoastuniversityonline.us> domain name to redirect Internet users to a website that appears to be Complainant’s website and that purportedly offers educational services and degrees. The Panel finds that, even if the products offered on the resolving website are fraudulent and fake, Respondent’s actions disrupt Complainant’s business because it portrays itself as a competitor of Complainant and diverts business away from Complainant. The Panel also determines that using Complainant’s mark in this fraudulent way disrupts Complainant’s business by tarnishing the name and reputation of Complainant’s mark. The Panel therefore finds bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to UDRP ¶ 4(b)(iii)).
Complainant contends that Respondent’s use of the WEST COAST UNIVERSITY mark is an attempt to capitalize on errors made by Internet users in searching for Complainant. Complainant argues that Respondent registered and uses the disputed domain name to set up a fraudulent website advertising a fake school for the purpose of either phishing for personal information or profiting from the sale of fake degrees. With either scenario, Complainant argues that Respondent profits from the confusion it creates among consumers with regard to the Complainant’s sponsorship of, or affiliation with, Respondent’s website. The Panel finds that Respondent’s activities in connection with the disputed domain name thus reveal Respondent’s desire to attract and mislead consumers and create confusion for its own commercial gain, which is evidence of bad faith under Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Complainant contends that Respondent’s resolving website is virtually identical to Complainant’s website as Respondent is attempting to pass itself off as Complainant. The Panel finds that Respondent’s efforts to take advantage of Complainant’s mark and reputation for its own purposes and gain illustrates bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts, . . . that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers . . . . The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to [UDRP] ¶ 4(a)(iii).”).
Complainant also asserts that Respondent uses the disputed domain name and resolving website to phish for Internet users’ confidential personal and financial information. The Panel finds that operating a phishing scheme under Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
The Panel finds 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 <westcoastuniversityonline.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 21, 2011
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