DECISION

American University v. Americus University and Ronald Bassett

Claim Number:  FA0309000193904

PARTIES

Complainant is American University, Washington, DC (“Complainant”) represented by Sherri N. Blount, of Fitch, Even, Tabin & Flannery.  Respondent is Americus University and Ronald Bassett, Roadtown, Tortola, British Virgin Islands (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americusuniversity.com>, registered with Register.Com.

PANEL

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 11, 2003; the Forum received a hard copy of the Complaint on September 15, 2003.

On September 11, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <americusuniversity.com> is registered with Register.Com and that Respondent is the current registrant of the name. Register.Com has verified that Respondent is bound by the Register.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@americusuniversity.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 20. 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <americusuniversity.com> domain name is confusingly similar to Complainant’s AMERICAN UNIVERSITY mark.

2. Respondent does not have any rights or legitimate interests in the <americusuniversity.com> domain name.

3. Respondent registered and used the <americusuniversity.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, American University, is a university located in the District of Columbia, United States, and was chartered by an Act of the U.S. Congress in 1893. Since that date, Complainant has used the AMERICAN UNIVERSITY mark in commerce in connection with various educational services, novelty items, apparel, newsletters and other merchandise. In addition to its common-law rights in the AMERICAN UNIVERSITY mark, Complainant has obtained registrations of the mark worldwide, including in the European Community (e.g. Reg. Nos. 170,951 and 2,260,099), New Zealand (Reg. No. 212,751) and in the United Kingdom (Reg. Nos. 1,451,537 and 2,272,273). Complainant also holds pending trademark applications for the AU design and word mark in the United States (Ser. Nos. 76/458652 and 76/458653), a mark first used in connection with Complainant’s educational services in 1995.

Respondent, Americus University and Ronald Bassett, registered the <americusuniversity.com> domain name on June 8, 2001. Respondent uses the disputed domain name to host the online, distance learning “Americus University,” which purports to sell college degree packages for Associates, Bachelors, Masters and Doctorial degrees. However, Respondent’s “university” is not recognized as a college or university by any of the accepted U.S. or international educational accrediting institutions. The diplomas sold by Respondent are similar in design to those presented by Complainant, and Respondent has adopted Complainant’s AU design mark at the website at the disputed domain name. Respondent also offers housewares, apparel and other novelty items bearing the AU mark at the disputed domain name.

DISCUSSION

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the AMERICAN UNIVERSITY mark through registration of the mark with the appropriate governmental agencies worldwide, as well as through widespread and continuous use of the mark in commerce. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO April 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether Complainant’s mark is registered in a country other than that of Respondent’s place of business).

Respondent’s <americusuniversity.com> domain name is confusingly similar to Complainant’s AMERICAN UNIVERSITY mark. Respondent’s replacement of the letters “an” at the end of the word AMERICAN with the letters “us” create a domain name that remains confusingly similar in appearance to Complainant’s registered mark. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name <mannbrothers.com> confusingly similar to Complainant’s MANN BROTHERS mark “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”); see also Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element ….”).

Accordingly, the Panel finds that the <americusuniversity.com> domain name is confusingly similar to Complainant’s AMERICAN UNIVERSITY mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is using the disputed domain name to host an online, distance learning university. However, Respondent does not appear to be accredited by any educational organization. Furthermore, given Respondent’s use of Complainant’s AU mark (without authorization) and the similarity between the diplomas offered by Respondent and Complainant, the Panel infers that Respondent’s motivation in registering the disputed domain name was to capitalize on confusion in the minds of Internet users between Complainant’s AMERICAN UNIVERSITY and Respondent’s “Americus University.” Respondent has not come forward with an plausible explanation as to why it has chosen to use a domain name that is confusingly similar to Complainant’s mark, or why it has chosen to appropriate Complainant’s AU mark at its domain name. Thus, the Panel holds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. Therefore, Policy ¶¶ 4(c)(i) and (iii) do not apply to Respondent in this dispute. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).

As Respondent is not licensed to use Complainant’s marks for any purpose, and as there is no reliable evidence before the Panel indicating that Respondent is actually “commonly known by” the disputed domain name as contemplated by Policy ¶ 4(c)(ii), the Panel finds that this provision of the Policy does not apply to Respondent. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that 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 Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <americusuniversity.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain name to host an online university that seeks to commercially capitalize on the goodwill that Complainant has built up around the AMERICAN UNIVERSITY mark. Respondent’s use of the AU design mark at the disputed domain name, its sale of diplomas that are confusingly similar to those supplied by graduates of Complainant’s university, and Respondent’s sale of merchandise that carries the AU design mark all combine to create a likelihood of confusion in the minds of Internet users as to whether Complainant is affiliated with Respondent’s “Americus University.” Respondent’s commercial benefit from this liklihood of confusion evidences Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

The Panel thus finds that Respondent registered and used the <americusuniversity.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <americusuniversity.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  October 30, 2003

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