Nelnet, Inc. v. Charles Abrams
Claim Number: FA1607001682267
Complainant is Nelnet, Inc. (“Complainant”), represented by Benjamin A. Costa of RIDDER, COSTA & JOHNSTONE LLP, California, United States. Respondent is Charles Abrams (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nelnet.us> and <nelnetloan.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2016; the Forum received payment on July 1, 2016.
On July 5, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nelnet.us> and <nelnetloan.us> 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 U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2016 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@nelnet.us, postmaster@nelnetloan.us. Also on July 7, 2016, 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 August 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 to the usTLD Dispute Resolution Policy (“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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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. Respondent’s <nelnet.us> and <nelnetloan.us> domain names are confusingly similar to Complainant’s NELNET mark.
2. Respondent does not have any rights or legitimate interests in the <nelnet.us> and <nelnetloan.us> domain names.
3. Respondent registered and uses the <nelnet.us> and <nelnetloan.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered the NELNET mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,510,521, registered Nov. 20, 2001), used in connection with offering student loan services.
Respondent registered the <nelnet.us> domain name on November 21, 2015, and the <nelnetloan.us> domain name on February 27, 2016. The <nelnet.us> domain name is currently parked, and the <nelnetloan.us> domain name is used to offer student loan services similar to those offered by 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.
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.
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.”).
The Panel finds that Complainant has demonstrated its rights in its NELNET mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <nelnet.us> domain name is identical to Complainant’s NELNET mark, save for the affixation of the gTLD “.us.” See Mattel, Inc. v. Unknown, FA 490083 (Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”). Respondent’s <nelnetloan.us> domain name wholly incorporates Complainant’s mark and merely adds the generic term “loan” and the gTLD “.us.” The addition of a generic term also does not distinguish a respondent’s domain name from a complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel therefore finds that Respondent’s <nelnet.us> domain is identical to Complainant’s NELNET mark, and that Respondent’s <nelnetloan.us> domain is confusingly similar to the NELNET mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent has no rights or legitimate interests in the domains, and states that Respondent is not the owner or beneficiary of a trademark that is identical to the disputed domain names. Respondent has not provided any evidence for the Panel’s consideration. Panels have held that a respondent lacks rights and legitimate interests in a domain name where there is no evidence to support a finding that the respondent is the owner or beneficiary of a mark that is identical to a disputed domain name. See Meow Media Inc. v. Basil, FA 113280 (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). Thus, the Panel finds that Respondent does not have rights in a mark that is substantially similar to the disputed domain names per Policy ¶ 4(c)(i).
Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information for the domain names lists “Charles Abrams” as the registrant. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, the Panel notes that Respondent’s <nelnet.us> domain name is currently parked, and that the <nelnetloan.us> domain name is being used to offer student loan services similar to those offered by Complainant. Panels have held that a respondent lacks rights and legitimate interests in a domain name where it either fails to make an active use of the domain name, or it uses the domain name to promote services that are directly competitive with a complainant’s business. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s registration of multiple domains constitutes a clear pattern of bad faith registration and use, in violation of Policy ¶ 4(b)(ii). Panels have decided that a respondent’s registration of two or more domains in a single proceeding constitutes bad faith registration and use per Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). In the absence of any argument to the contrary, the Panel agrees with Complainant and finds that Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant contends that Respondent uses the <nelnetloan.us> domain name to offer student loan services similar to those offered by Complainant. Panels have concluded that a respondent’s use of a domain to promote services that compete directly with a complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Accordingly, the Panel finds that Respondent registered and is using the <nelnetloan.us> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant claims that Respondent’s <nelnet.us> domain name is currently parked. Panels have consistently held that a respondent’s failure to make an active use of a disputed domain name constitutes bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Thus, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(a)(iii) through its registration and use of the disputed domain names.
Finally, Complainant argues that in light of Complainant’s longstanding use of its NELNET mark, it is clear that Respondent registered the disputed domain names with full knowledge of Complainant’s mark and business. The Panel agrees, noting that Respondent uses one of the disputed domain names to directly compete with Complainant. The Panel finds that Respondent had actual knowledge of the mark and Complainant’s rights and registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nelnet.us> and <nelnetloan.us> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 8, 2016
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