DECISION

American University v. Richard Cook

Claim Number:  FA0305000159549

PARTIES

Complainant is American University, Washington, DC (“Complainant”) represented by Sherri N. Blount, of Fitch, Even, Tabin & Flannery.  Respondent is Richard Cook, Kingsland, Georgia (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <allamericanuniversity.com>, <allamericanuniversity.net>, <allamericanuniversity.org>, <allamericanuniversity.biz>, and <allamericanuniversity.info>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.

The Honorable Irving H. Perluss, the Honorable Tyrus R. Atkinson, and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 28, 2003; the Forum received a hard copy of the Complaint on June 2, 2003.

On May 29, 2003, Go Daddy Software, Inc., confirmed by e-mail to the Forum that the domain names <allamericanuniversity.com>, <allamericanuniversity.net>, <allamericanuniversity.org>, <allamericanuniversity.biz>, and <allamericanuniversity.info> are registered with Go Daddy Software, Inc., and that Respondent is the current registrant of the names. Go Daddy Software, Inc., has verified that Respondent is bound by the Go Daddy Software, Inc., 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 July 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 30, 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@allamericanuniversity.com, postmaster@allamericanuniversity.net, postmaster@allamericanuniversity.org, postmaster@allamericanuniversity.biz and postmaster@allamericanuniversity.info 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 August 8, 2003, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed the Honorable Irving H. Perluss, the Honorable Tyrus R. Atkinson, and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.

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.  Even though this is a default matter, the issues presented have been considered on the merits.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <allamericanuniversity.com>, <allamericanuniversity.net>, <allamericanuniversity.org>, <allamericanuniversity.biz>, and <allamericanuniversity.info> domain names are confusingly similar to Complainant’s AMERICAN UNIVERSITY mark.

2. Respondent does not have any rights or legitimate interests in the <allamericanuniversity.com>, <allamericanuniversity.net>, <allamericanuniversity.org>, <allamericanuniversity.biz>, and <allamericanuniversity.info> domain names.

3. Respondent registered and used the <allamericanuniversity.com>, <allamericanuniversity.net>, <allamericanuniversity.org>, <allamericanuniversity.biz>, and <allamericanuniversity.info> domain names in bad faith.

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

FINDINGS

Complainant is an internationally recognized university that was chartered by an Act of the U.S. Congress in 1893.  Since that time, Complainant has used the AMERICAN UNIVERSITY mark to market the educational services Complainant provides to undergraduate and graduate students.  Complainant filed a trademark application for the AMERICAN UNIVERSITY mark with the U.S. Patent and Trademark Office on January 21, 2000 (App. No. 75,901,070).  Complainant also holds several registrations worldwide that incorporate the AMERICAN UNIVERSITY mark, including, a European Community Trademark for the AU AMERICAN UNIVERSITY mark registered with the Office for Harmonization in the Internal Market (Reg. No. 002260099 – registered July 18, 2002).

Respondent registered the five disputed domain names between January 16, 2003 and February 19, 2003.  Respondent is using four of the disputed domain names to sell allegedly fraudulent undergraduate and graduate level diplomas.  The fifth domain name, <allamericanuniversity.info>, is being passively held.

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 common law rights in the AMERICAN UNIVERSITY mark through its use of the mark in commerce since 1893.  Complainant has also established statutory rights in marks that incorporate the AMERICAN UNIVERSITY mark through registration of the marks with recognized trademark offices such as the Office for Harmonization in the Internal Market.

Respondent’s <allamericanuniversity.com>, <allamericanuniversity.net>, <allamericanuniversity.org>, <allamericanuniversity.biz>, and <allamericanuniversity.info> domain names are confusingly similar to Complainant’s AMERICAN UNIVERSITY mark because each disputed domain name incorporates Complainant’s mark.  For each of the disputed domain names, Respondent has simply added the word “all” to Complainant’s mark and varied the generic top-level domain (“gTLD” – e.g. “.com,” “.net,” etc.).  Neither the addition of the generic word “all” nor the attachment of various gTLDs to Complainant’s mark is sufficient to distinguish Respondent’s domain names.  Both parties provide undergraduate and graduate level diplomas; therefore, Respondent causes confusion for Internet users because they might mistakenly assume that Respondent’s websites are associated with Complainant.  Respondent’s attempts to distinguish the disputed domain names from Complainant’s mark are not sufficient to circumvent Complainant’s rights in the AMERICAN UNIVERSITY mark nor do they avoid the confusingly similar element of Policy ¶ 4(a)(i).  See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the Complainant’s registered mark “llbean” does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent does not have rights or legitimate interests in the five disputed domain names.

Complainant has submitted uncontested evidence that Respondent has used the goodwill associated with Complainant’s mark in an attempt to commercially benefit from such use.  Respondent’s use of the disputed domain names to sell allegedly forged diplomas is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

In addition, Respondent is passively holding the <allamericanuniversity.info> domain name.  The disputed domain name was registered on February 19, 2003, and the record fails to show that Respondent has made any demonstrable preparations to use it.  Although Respondent has not passively held the disputed domain name very long, Respondent has failed to provide evidence of demonstrable preparations to use the domain name and Respondent’s conduct has demonstrated that it lacks rights or legitimate interests in similar domain names; therefore, the Panel concludes that Respondent lacks rights or legitimate interests in the <allamericanuniversity.info> domain name.  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).

Also, the WHOIS information for the disputed domain names lists Respondent, Richard Cook, as the registrant; however, it fails to establish Respondent as an “individual, business, or other organization” commonly known by the disputed domain names.  Furthermore, Respondent is not affiliated with Complainant and the evidence does not establish that Respondent is authorized or licensed to register or use domain names that incorporate the AMERICAN UNIVERSITY mark.  Therefore, Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Finally, Respondent’s failure to dispute the allegations in the Complaint, further suggests that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

It can be inferred that Respondent had knowledge of Complainant’s AMERICAN UNIVERSITY mark because the mark is nationally recognized, has been used in commerce since 1893, and Respondent registered several domain names that fully incorporated Complainant’s mark.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

Moreover, Respondent registered the disputed domain names and incorporated Complainant’s mark with the intent to commercially benefit from the goodwill associated with Complainant’s mark.  Respondent offers allegedly fraudulent diplomas for undergraduate and graduate level students through its disputed domain names.  Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.  See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).

Finally, Respondent has passively held the <allamericanuniversity.info> domain name.  Respondent has established a pattern of bad faith use of Complainant’s AMERICAN UNIVERSITY mark via the registration and use of the other four disputed domain names; therefore, it makes little sense to wait until the <allamericanuniversity.info> domain name is used to determine that Policy ¶ 4(a)(iii) has been satisfied when inevitably its use will constitute bad faith.  See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

The Panel finds that Policy ¶ 4(a)(iii) has been 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 <allamericanuniversity.com>, <allamericanuniversity.net>, <allamericanuniversity.org>, <allamericanuniversity.biz>, and <allamericanuniversity.info> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  August 21, 2003

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