St. Thomas University, Inc. v. Silvana Carpintero / Sky Gaming LLC
Claim Number: FA1609001692967
Complainant is St. Thomas University, Inc. (“Complainant”), represented by Jorge Espinosa of Espinosa Trueba Martinez, PL, Florida, USA. Respondent is Silvana Carpintero / Sky Gaming LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stthomasuniversity.us>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 8, 2016; the Forum received payment on September 8, 2016.
On September 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <stthomasuniversity.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@stthomasuniversity.us. Also on September 19, 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 October 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 (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. 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 name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(c)(viii).
The complaint is based on the service mark ST. THOMAS UNIVERSITY which complainant uses for “educational services; online educational services; athletic services; operation of a university and the advertising and promotion of educational services.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: Rule 3(c)(ix).
[a.] Respondent incorporates the Complainant’s Trademark identically into its domain name where it operates a counterfeit site. Rule 3(c)(ix)(1); Policy ¶4(a)(i).
· Complainant, St. Thomas University, is a highly respected and nationally known university based in South Florida, FL, US.
· Complainant is the owner of the common law trademark ST THOMAS UNIVERSITY which it has been using since 1985 to identify and provide its educational services.
· Complainant is also owner of the septagram logo design which it has used since October 2007 to identify and provide its educational services.
· Complainant is also owner of the STU trademark which it has been using since 1996 to identify and provide its educational services.
· Complainant is also owner of the copyrights to the content of its website shown at <stu.edu>.
· Complainant’s common law use of its trademark ST THOMAS UNIVERSITY has become widely known and recognized in relation to the quality of its services and of its alumni.
· Complainant’s educational services are highly ranked in the United States thereby increasing the goodwill in its common law trademark ST THOMAS UNIVERSITY.
· On July 8, 2016, Respondent registered with GoDaddy.com and began using the domain <stthomasuniversity.us> and <stthomasuniversity.info> both of which, without authority or right, identically incorporates Complainant’s ST THOMAS UNIVERSITY trademark, septagram design mark and copyrighted materials.
· Students and potential students seeking to learn about complainant, St. Thomas University, and its services are likely to be misled into going to <stthomasuniversity.us>.
· Respondent is not merely using the domains to offer a competing service, it is using the accused domain to operate a counterfeit website that misrepresents its self as a near identical copy of the Complainant’s website. A review of Complainant’s site and Respondent’s site as shown by both domains shows that the latter is a copy.
· This website in addition to counterfeiting the Complainant’s web site does thereby infringe in its content Complainant’s other trademarks and copyright. The purpose of the site appears to be to lure consumers who think that they are at the St. Thomas University site in order to capture their private information.
[b.] The Respondent has no rights or legitimate interests in respect of the domain name. Rule 3(c)(ix)(2); Policy ¶4(a)(ii).
· Respondent has made no bona fide offering of goods or services on the site identified with <stthomasuniversity.us> but is merely counterfeiting Complainant’s site.
· Respondent does not identify itself on the web pages located at <stthomasuniversity.us> but instead represents itself as Complainant. Respondent has no rights to any of Complainant’s marks.
· Respondent’s counterfeit web site which is identified with the domains can serve no legitimate non-commercial or fair use purpose. The site’s sole purpose in counterfeiting the Complainant’s website is to obtain commercial gain by misleading to divert consumers thereby tarnishing the trademark at issue.
[c.] The domain name has been used in bad faith. Rule 3(c)(ix)(3); Policy ¶4(a)(iii).
· Since Respondent registered the domains <stthomasuniversity.us> and <stthomasuniversity.info> it has used them to point at a counterfeit version of the Complainant’s website which, to the common user, appears to be operated by Complainant.
· Complainant can only speculate that the domains and the counterfeit website were created solely for the purpose of stealing consumer information from unsuspecting consumers who thought they were dealing with Complainant.
· Respondent therefore registered the domains primarily to disrupt Complainant’s business and mislead consumers.
· Respondent is also using the domains name to infringe Complainant’s various trademarks and copyrights in its legitimate website including but not limited to ST
THOMAS UNIVERSITY and .
· Respondent is also using the counterfeit website operated at the domains to infringe Complainants copyrighted content.
· By using the accused domain names to point at a counterfeit site, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant claims it has common law rights in the ST THOMAS UNIVERSITY mark. A registered trademark is not necessary to establish rights under Policy ¶4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Therefore, the Panel will consider if Complainant has established common law rights in the ST THOMAS UNIVERSITY mark.
Complainant claims ST THOMAS UNIVERSITY mark has acquired a secondary meaning because of Complainant’s continued use of the mark in the educational services business since 1985. Complainant provided evidence of its website and use of the ST THOMAS UNIVERSITY mark over a period of years. The media has recognized Complainant’s university and the ST THOMAS UNIVERSITY mark. U.S. News and World Report ranks St. Thomas University as #58 of Regional Universities in the South. These factors, inter alia, are considered in determining whether or not Complainant has established secondary meaning in its mark. See Goepfert v. Rogers, FA 861124 (Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”); see also Cybertania, Inc. v. Right Mobile, Inc. Domain Manager, FA 1015411 (Forum Aug. 6, 2007) (finding that a complainant had acquired secondary meaning sufficient to establish common law rights in a mark pursuant to Policy ¶4(a)(i) where the complainant had invested “enormous resources” in promoting the goods and services available under the complainant’s mark). Complainant has adequately demonstrated a secondary meaning of the ST THOMAS UNIVERSITY mark, which demonstrates Complainant’s common law rights in the mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <stthomasuniversity.us> is identical to its ST THOMAS UNIVERSITY mark. Respondent’s domain incorporates the entire ST THOMAS UNIVERSITY mark, and merely omits the spaces while adding the “.us” ccTLD. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the lack of a space is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits spaces. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (holding that the <rackspace.xyz> domain name is identical to the complainant’s RACKSPACE mark, because, “the addition of a generic top-level domain is seen as trivial and non-distinctive for the purposes of this comparison does not lessen in any way the confusing similarity between the disputed domain name and Complainant’s mark.”) and see Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”). Respondent’s domain name is identical (not merely confusingly similar) to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 Respondent has no rights or legitimate interests in the <stthomasuniversity.us> domain name. Respondent is not commonly known by the disputed domain under Policy ¶4(c)(iii). The WHOIS information for the disputed domain name lists the registrant as “Silvana Carpintero” as the registrant with “Sky Gaming LLC” organization (which seems an odd type of organization to claim a “university” moniker). There is no obvious relationship between Respondent’s name and the disputed domain names. Determining a respondent is not commonly known by a disputed domain name can easily be done from the WHOIS information and a lack of contradicting evidence in the record. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(iii) and the facts of this case.
Complainant claims Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶4(c)(ii), or for a legitimate noncommercial or fair use under Policy ¶4(c)(iv). Respondent has produced a counterfeit version of Complainant’s website at <stu.edu> to divert Internet users seeking Complainant, including Complainant’s septagram logo design. Diverting Internet users or selling counterfeit versions of a complainant’s goods and services confers no rights or legitimate interests in the domain name. See Dream Horse Classifieds v. Mosley, FA 381256 (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 Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). This Panel must conclude Respondent is not using the disputed domain name to make a bona fide offering of goods and services or legitimate noncommercial or fair use under Policy ¶¶4(c)(ii) and (iv).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is using the domain name in bad faith. Respondent’s primary purpose appears to be to disrupt Complainant’s business. Respondent has produced a counterfeit version of Complainant’s website at <stu.edu>, including Complainant’s septagram logo design, to mislead Complainant’s customers (and potential customers). Offering counterfeit versions of a complainant’s web site constitutes bad faith registration and use of a disputed domain name under Policy ¶4(b)(iii). See Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA1410001587466 (Forum Dec. 13, 2014) (“The Panel finds that Respondent’s use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant’s business which demonstrates bad faith registration and use under Policy ¶4(b)(iii).”). Respondent is using the disputed domain name primarily to disrupt Complainant’s business.
Complainant claims Respondent seeks commercial gain by creating confusion about the source, sponsorship, affiliation, or endorsement of its <stthomasuniversity.us> domain. Respondent’s domain contains Complainant’ mark in its entirely and Complainant’s septagram logo design. Respondent’s web site appears identical to Complainant’s web site (a fact Respondent does not dispute). Respondent appears to be passing itself off as Complainant, presumably for nefarious purposes. This constitutes bad faith registration and use under Policy ¶4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). This Panel so finds.
Complainant presumes Respondent uses the disputed domain name to illegally “phish” personal information from Internet users. Complainant believes Respondent has created the “counterfeit website” for the purpose of stealing information from Internet users who believe they are dealing with Complainant. Respondent does not dispute this claim. “Phishing” has been defined as “a practice that is intended to defraud consumers into revealing personal and proprietary information.” Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004). The practice of phishing has been found to be evidence bad faith under Policy ¶4(a)(iii). See id. (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). This Panel cannot imagine any bona fide purpose which is served by Respondent creating a counterfeit copy of Complainant’s web site. Respondent is using the <stthomasuniversity.us> as part of a phishing scheme, which constitutes bad faith registration and use under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <stthomasuniversity.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, October 24, 2016
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