Corinthian Colleges, Inc. v. ahmet ertas
Claim Number: FA1208001459690
Complainant is Corinthian Colleges, Inc. (“Complainant”), represented by Francie R. Gorowitz of Rosenfeld Meyer & Susman, LLP, California, USA. Respondent is ahmet ertas (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <newonlinecci.com>, <onlineccicom.com>, and <theonlinecci.com>, registered with Godaddy.com, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2012; the National Arbitration Forum received payment on August 24, 2012.
On August 28, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <newonlinecci.com>, <onlineccicom.com>, and <theonlinecci.com> domain names are registered with Godaddy.com, LLC and that Respondent is the current registrant of the names. Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, 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 August 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2012 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@newonlinecci.com, postmaster@onlineccicom.com, and postmaster@theonlinecci.com. Also on August 29, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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 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. The Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and rules and principles of law deemed applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in CCI and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has used the trademark CCI in connection with educational services.
2. Complainant owns, inter alia, United States Trademark Reg. No. 2,611,170 registered August 27, 2002 for the trademark CCI.
3. The disputed domain names were registered in August 2011.
4. The domain names resolve to websites imitating Complainant’s official website but then auto-redirect to pay-per-link advertising sites at <adf.ly> and <iamistanbul.com>.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
6. Respondent did not reply to pre-Complaint correspondence from Complainant.
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(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 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)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panel is also satisfied that the disputed domain names are confusingly similar to Complainant’s trademark. For the purposes of comparison, the non-distinctive gTLDs, “.com”, can be disregarded (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The disputed domain names then take the whole of the trademark and merely add the descriptive/generic terms “online,” “new,” “com,” and/or “the.” which do nothing to distinguish the disputed domain names from Complainant’s trademark (see Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of all three domain names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
The publicly available WHOIS identifies Respondent as “ahmet ertas” and so there is no prima facie case that Respondent might be commonly known by either of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that all of the disputed domain names first resolve to websites imitating Complainant’s official website. After resolving to these imitation websites, the <newonlinecci.com> and <onlineccicom.com> domain names resolve to a pay-per-link advertising site at the <adf.ly> domain name, and the <theonlinecci.com> domain name resolves to the pay-per-link website located at the <iamistanbul.com> domain name (see Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).
The onus shifts to Respondent to establish a legitimate interest in the domain names and in the absence of a Response, that onus is not rebutted. Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy in respect of all three domain names.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark. Panel accepts as more likely than not to be true Complainant’s allegation that Respondent receives revenue from the resolving websites. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark (see, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting; see also, DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
Having established all three elements required under the ICANN Policy in relation to each disputed domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newonlinecci.com>, <onlineccicom.com>, and <theonlinecci.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: October 5, 2012
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