DECISION

American University v. Nente.com

Claim Number:  FA0409000323761

PARTIES

Complainant is American University (“Complainant”), represented by Sherri N. Blount, of Morrison & Foerster, 2000 Pennsylvania Ave., NW, Suite 5500, Washington, DC 20006.  Respondent is Nente.com (“Respondent”), 4348 Broadway St. #304, Oakland, CA 94611.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americanu.com>, registered with Dotster, Inc.

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 3, 2004; the Forum received a hard copy of the Complaint on September 7, 2004.

On September 7, 2004, Dotster, Inc. confirmed by e-mail to the Forum that the domain name <americanu.com> is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, 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 September 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 28, 2004 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@americanu.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 4, 2004, 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 <americanu.com> domain name is confusingly similar to Complainant’s AMERICAN UNIVERSITY mark.

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

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

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

FINDINGS

Complainant, American University, is an accredited and well-known university and has awarded numerous degrees through its nationally ranked Kogod School of Business, Washington College of Law, College of Arts and Sciences, School of Public Affairs, School Of Communication and School of International Service.  Complainant began using in 1893 and has been commonly known as since, the AMERICAN UNIVERSITY mark in commerce in connection with educational services, namely, providing courses of instruction at the college and graduate level, distributing course materials, conducting educational conferences and educational research in the fields of politics, science, history, languages, computer technology, math, arts, music, entertainment services, namely, radio programming for a university setting, and organizing exhibitions of university-level athletics.  The AMERICAN UNIVERSITY mark has also been used in connection with novelty items, apparel, newsletters, desk accessories and other merchandise and related services. 

Complainant owns international trademark registrations for the AMERICAN UNIVERSITY mark in the European Community, New Zealand, Spain and the United Kingdom in connection with Complainant’s educational and other related goods and services as previously described.  Additionally, Complainant holds pending US Trademark Application serial number 75/901,070 for the AMERICAN UNIVERSITY mark. 

Complainant has taken steps to enjoin other parties from using or otherwise becoming commonly known by a name incorporating the AMERICAN UNIVERSITY mark in connection with educational services and related merchandise and services.  These steps include sending cease and desist letters to infringers of the AMERICAN UNIVERSITY mark, filing opposition proceedings with the USPTO and initiating UDRP proceedings. 

Respondent registered the <americanu.com> domain name on May 25, 2001 and is using the disputed domain name to redirect Internet users to Respondent’s website for the purpose of promoting the goods of Mackinnon Icehorse, the business featured on the website.  Respondent provides web hosting packages, which include domain name registration services, web page design, and hosting.  It has been contended that Respondent provides web hosting services to Mackinnon Inc., registrant of the <mackinnonicehorse.com> domain name to which the <americanu.com> domain name is linked.  Respondent benefits commercially from the fees it obtains in connection with the web hosting package it provides with respect to the use of the <americanu.com> 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 established that it has rights to the AMERICAN UNIVERSITY mark as evidenced by its International trademark registrations for the AMERICAN UNIVERISTY mark in the European Community, New Zealand, Spain an the United Kingdom. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 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).

The domain name registered by Respondent, <americanu.com>, is confusingly similar to Complainant’s AMERICAN UNIVERSITY mark because it is commonplace for universities to refer to themselves in an abbreviated manner using a full or abbreviated version of the school name and the letter “U.”  The letter “U” is a well-recognized abbreviation for the word university.  Respondent has created its domain name by simply appropriating the first portion of Complainant’s mark and abbreviating the latter half of Complainant’s mark.  A domain name that abbreviates a mark does not distinguish it from the trademark.  See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark); see also Down E. Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the domain name that contains Complainant’s mark.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name.   In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Moreover, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <americanu.com> domain name to redirect Internet users to Respondent’s website for the purpose of promoting the goods of Mackinnon Icehorse, the business featured on the website.  Respondent’s use of a domain name that is confusingly similar to Complainant’s AMERICAN UNIVERSITY mark to redirect Internet users interested in Complainant’s services to a commercial website that offers Internet and computer related services unrelated to Complainant’s services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also 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 Complainant’s mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”). 

Moreover, Respondent offered no evidence, and no proof in the record suggests that Respondent is commonly known by the <americanu.com> domain name.  Therefore, the Panel finds Respondent has failed to establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent intentionally registered a domain name that contains Complainant’s well-known mark and did so for Respondent’s commercial gain.  Respondent’s domain name diverts Internet users who seek Complainant’s AMERICAN UNIVERSITY mark to a commercial website, through the use of a domain name that is confusingly similar to Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(iii).

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 <americanu.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  October 15, 2004

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