The Pennsylvania State University v. Paul Parshall
Claim Number: FA2008001908455
Complainant is The Pennsylvania State University (“Complainant”), represented by Claire Hagan Eller of McGuireWoods LLP, Virginia, United States. Respondent is Paul Parshall (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <pennstatenittany.beer> and <pennstatehappyvalleybeer.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2020; the Forum received payment on August 14, 2020.
On August 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pennstatenittany.beer> and <pennstatehappyvalleybeer.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 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2020 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@pennstatenittany.beer, postmaster@pennstatehappyvalleybeer.com. Also on August 25, 2020, 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.
A purported Response was received by the Forum on September 3, 2020 and determined to be deficient for the reasons given below.
On September 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Deficient Response
Respondent submitted a document to the FORUM via postal mail and dated August 30, 2020.
The document provides as follows :
“I own the name under common use law and the Federal Lanham Act. I am pending a state filing for the name. Paul Parshall.5947960. #FA2008001908455.” The text was accompanied by advertisements for Sports Team Cigars and Sports Beer Brewing Company.
The Panel does not consider this document to be a Response as it is not in compliance with ICANN Rule 5 (c) , which requires the following with respect to a Response:
“(c) The response, including any annexes, shall be submitted in electronic form and shall:
(i) Respond specifically to the statements and allegations contained in the complaint
and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name…”.
The document was not submitted in electronic form and did not respond to the statements and allegations in the Complainant.
The document is also not in compliance with FORUM Supplemental Rule 5 (c), which provides:
“5. The Response
(c) The Response must be sent to the Forum by e-mail (domaindispute@adrforum.com) or filed online through the Forum’s online filing platform at https://secure.adrforum.com/ddfiling.”
The document was not sent to the Forum by email or filed online through the aforesaid online filing platform.
The Panel has a discretion whether or not to accept and consider the document as a Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
The Panel has an obligation to enforce the provisions of the Policy, the Rules and the provider’s Supplementary Rules and for that reason has decided that the aforesaid document is not a Response as it clearly does not comply with either set of rules. However, the Panel is also of the view that the document purports to state Respondent’s position in this proceeding and, in the interests of due process and doing fairness to both parties, which are required by ICANN Rule 10 (b) and by general principle, the Panel will give consideration to the contents of the document in the course of reaching its decision.
A. Complainant
Complainant made the following contentions
Complainant, The Pennsylvania State University, is the flagship public university of the Commonwealth of Pennsylvania. Complainant asserts rights in the PENN STATE mark and the NITTANY mark through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,308,610, registered on December 11, 1984; Reg. No. 1325426, registered on March 19, 1985). See Amend. Compl. Annex F and G. Respondent’s <pennstatenittany.beer> and <pennstatehappyvalleybeer.com> domain names are confusingly similar to Complainant’s marks, as the domain names incorporates the PENN STATE and/or NITTANY marks in their entirety, merely adding the term “happy valley beer” and the “.com” or “.beer” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <pennstatenittany.beer> and <pennstatehappyvalleybeer.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent’s use of the PENN STATE or NITTANY marks. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to redirect to a website for sale, or to a website where Respondent claims to be affiliated with Complainant in an attempt to sell items using Complainant’s marks.
Respondent registered and uses the <pennstatenittany.beer> and <pennstatehappyvalleybeer.com> domain names in bad faith. Respondent targeted Complainant’s marks for their own financial gain. Additionally, Respondent registered the domain names with knowledge of Complainant’s rights in the PENN STATE and NITTANY marks.
B. Respondent
Respondent submitted the document referred to above and which the Panel has found is not a response in this proceeding. The Panel will give consideration to the points made by Respondent in the document at a later point in this decision.
1. Complainant, The Pennsylvania State University, is the flagship public university of the Commonwealth of Pennsylvania.
2. Complainant has established its rights in the PENN STATE mark and the NITTANY mark through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,308,610, registered on December 11, 1984; Reg. No. 1325426, registered on March 19, 1985).
3. Respondent registered the disputed domain names on June 20, 2020 and June 22, 2020 respectively.
4. Respondent uses the domain names to redirect to a website for sale, or to a website where Respondent claims to be affiliated with Complainant in an attempt to sell items using Complainant’s marks.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the PENN STATE and NITTANY marks through its registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 1,308,610, registered on December 11, 1984; Reg. No. 1325426, registered on March 19, 1985). See Amend. Compl. Annex F and G. Therefore, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s PENN STATE and NITTANY marks. Complainant argues that Respondent’s <pennstatenittany.beer> and <pennstatehappyvalleybeer.com> domain names are confusingly similar to Complainant’s marks because the disputed domain names incorporates the PENN STATE and/or NITTANY marks in their entirety and merely add, in the first of the domain names the “.beer” gTLD and in the second of the domain names the generic phrase “happy valley beer” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD are not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s PENN STATE and NITTANY trademarks and to use them in its domain names, adding , in the first of the domain names the “.beer” gTLD and in the second of the domain names the generic phrase “happy valley beer” and the “.com” gTLD. which do not negate the confusing similarity between the domain names and the trademarks;
(b) Respondent registered the disputed domain names on June 20, 2020 and June 22, 2020 respectively;
(c) Respondent uses the domain names to redirect to a website for sale, or to a website where Respondent claims to be affiliated with Complainant in an attempt to sell items using Complainant’s marks;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interest in the <pennstatenittany.beer> and <pennstatehappyvalleybeer.com> domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the PENN STATE or NITTANY marks. Relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name shows that the registrant’s name is “PAUL PARSHALL” and nothing in the record indicates that Respondent is licensed to use Complainant’s marks or is known by the disputed domain names. See Amend. Compl. Annex A. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent fails to use the <pennstatenittany.beer> and <pennstatehappyvalleybeer.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain names to redirect Internet users to either a domain for sale or Respondent’s own business website. General intent to divert Internet users is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provides printouts of both resolving websites, which are used to divert and confuse Internet users into believe a relationship between Respondent and Complainant exists. See Amend. Compl. Annex I and J. The Panel agrees with Complainant that this does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The obligation is then on Respondent to rebut the prima facie case against it. The Panel notes that the document submitted by Respondent and referred to above, states:
“I own the name under common use law and the Federal Lanham Act. I am pending a state filing for the name. Paul Parshall.5947960. #FA2008001908455.” The text was accompanied by advertisements for Sports Team Cigars and Sports Beer Brewing Company.
The Panel has considered the contents of that document but they do not rebut the prima face case and they do not show a right or legitimate interest in the domain names on the part of Respondent. That is because the document does not contain sufficient detail to give it probative value, it does not show facts sufficient to make out the common law trademark alleged; no evidence is given to establish any trademark and a pending state trademark has no value for present purposes.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <pennstatenittany.beer> and <pennstatehappyvalleybeer.com> domain names in bad faith because Respondent’s use of Complainant’s well known mark to create confusion among Internet users shows an intent to deceive, which is evidence of bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”) Complainant argues that Respondent intentionally targeted the PENN STATE and NITTANY marks to create a likelihood of confusion in order to attract Internet users familiar with Complainant for their own financial gain. As the Panel agrees, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant claims Respondent registered the disputed domain names with knowledge of Complainant’s rights in the marks. Knowledge may be established through the notoriety of the marks used and how a respondent uses the marks. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Here, Complainant argues that Respondent uses the domain names to confuse Internet users into thinking there is a connection between Respondent and Complainant in order to divert Internet users to websites for Respondent’s financial gain. As the Panel agrees, the Panel finds such use is evidence of bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pennstatenittany.beer> and <pennstatehappyvalleybeer.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 9, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page