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Generic Top Level Domain Name (gTLD) Decisions |
Nova Southeastern University, Inc. v.
Trademark
Claim
Number: FA0412000373768
Complainant is Nova Southeastern University, Inc. (“Complainant”),
represented by Jonathan Hudis of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., 1940 Duke Street, Alexandria, VA
22314. Respondent is Trademark (“Respondent”), PO Box 908GT,
Georgetown, Grand Cayman GT KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <novasoutheasternuniversity.com>, registered
with Newdentity.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically December
1, 2004; the National Arbitration Forum
received a hard copy of the Complaint December
1, 2004.
On
December 1, 2004, Newdentity confirmed by e-mail to the National Arbitration
Forum that the domain name <novasoutheasternuniversity.com> is
registered with Newdentity and that Respondent is the current registrant of the
name. Newdentity verified that Respondent is bound
by the Newdentity registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
December 6, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
December 27, 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@novasoutheasternuniversity.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 5, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum
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 National Arbitration 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 makes the following assertions:
1. The domain name that Respondent
registered, <novasoutheasternuniversity.com>, is identical to
Complainant’s NOVA SOUTHEASTERN UNIVERSITY mark.
2. Respondent has no rights to or legitimate
interests in the <novasoutheasternuniversity.com> domain name.
3. Respondent registered and used the <novasoutheasternuniversity.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
non-profit educational institution founded in 1964 as Nova University of
Advanced Technology. In 1974, the Board
of Trustees changed the University’s name to Nova University. In 1994, Southeastern University of the
Health Sciences merged into Nova University and the name was again changed to
Nova Southeastern
University. The
institution has graduated more than 76,000 students. Complainant is the largest independent institution of higher
education in the Southeastern United States and is the 8th largest
non-profit independent institution in the United States.
Since 1994,
Complainant has used the NOVA SOUTHEASTERN UNIVERSITY mark in connection with
traditional and distance education, research,
community outreach programs,
printed publications, and licensed promotional items such as memorabilia and
giftware.
Respondent
registered the <novasoutheasternuniversity.com> domain name May
30, 2003 and has used the domain name to host a website that offers information
and links relating to educational
institutions and educational services. The website contains a banner that includes
the words “Nova Southeastern University.”
The website also contains links to paid online surveys, online
prescription drug retailers and life insurance providers.
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 as the Panel considers
appropriate pursuant to paragraph
14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant
established by extrinsic proof in this proceeding that it holds a registration
for the service mark Nova Southeastern
University and that the mark was
registered October 3, 1995. Complainant
has used the NOVA SOUTHEASTERN UNIVERSITY mark in connection with its
education-related goods and services since 1994. These two offers permit the finding that Complainant established
legal and common law rights in the mark under paragraph 4(a)(i) of
the
Policy.
Further,
Complainant’s institution has some 76,000 alumni and is among the largest
independent institutions of higher education in
the Southeastern United
States. It is the 8th
largest non-profit independent institution in the United States. These facts are sufficient to establish that
the public has come to identify the NOVA SOUTHEASTERN UNIVERSITY mark as the
source of
Complainant’s goods and services.
See Gardner's
Super Mkts. Inc. v. Ambassa Holdings, Inc., D2002-0253 (WIPO June 14, 2002) (“In determining
whether the Complainant's mark has acquired secondary meaning, one must
consider a variety of factors, including,
but not limited to, advertising,
promotion, sales, media coverage and the length, manner and exclusivity of use
of the mark by the
Complainant.”); see also Tuxedos
By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary
meaning was
established).
The
<novasoutheasternuniversity.com> domain name incorporates
Complainant’s NOVA SOUTHEASTERN UNIVERSITY mark in its entirety and has merely
added the top-level domain
“.com.” In
comparing a domain name with a mark under paragraph 4(a)(i) of the Policy, the
addition of a top-level domain is immaterial.
Therefore, the disputed domain name is identical to Complainant’s
mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top-level of the domain name such as “.net” or “.com” does
not affect the domain
name for the purpose of determining whether it is
identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that the addition of a top-level domain is without legal
significance).
Complainant met
the requirements of Policy ¶ 4(a)(i).
Complainant has
established with extrinsic proof in this proceeding that it has rights to and
legitimate interests in the NOVA SOUTHEASTERN
UNIVERSITY mark. Complainant alleged as well that Respondent
has no such rights or interests.
Respondent did not respond to the Complaint. Where Complainant has made a prima facie showing the burden
shifts to Respondent to offer proof to the contrary. The Panel finds that Respondent admits through by its inaction
that it lacks rights and legitimate interests in the disputed domain
name. 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”); see also Bloomberg L.P. v. GAF, FA
190614 (Nat. Arb. Forum Oct. 20, 2003) (finding that since Respondent did not
come forward to explain what legitimate use it
may have had in the domain
names, the panel could “presume that
Respondent lacks rights and legitimate interests in the domain names at
issue”).
Nothing in the
record, including the WHOIS information, suggests to the Panel’s satisfaction
that Respondent is commonly known by
the disputed domain name, <novasoutheasternuniversity.com>,
pursuant to paragraph 4(c)(ii) of the Policy.
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly
known by the disputed domain name,
is a 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).
Respondent is using a domain name that is identical to Complainant’s
mark in order to host material that competes with Complainant’s
educational
goods and services. This suggests that
Respondent is using the goodwill associated with Complainant’s mark to attract
Internet users to Respondent’s website.
Such use is not a bona fide offering of goods or services and it is not
a legitimate noncommercial or fair use, pursuant to paragraphs
4(c)(i) and
(iii) of the Policy. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that
compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to
Complainant’s mark and that
Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods); see
also Coryn Group, Inc. v. Media Insight, FA
198959 (Nat. Arb. Forum Dec. 5, 2003) (finding
that respondent was not using domain names for a bona fide offering of goods or
services nor a legitimate noncommercial or
fair use because Respondent used the
names to divert Internet users to a website that offered competing services
with those offered
by the complainant under its marks).
Complainant met the
requirements of Policy ¶ 4(a)(ii).
Complainant has
alleged that Respondent registered and used the disputed domain name in bad
faith. Respondent intentionally has attempted
to attract Internet users to its
website for commercial gain, by creating a likelihood of confusion with
Complainant’s mark. As evidence,
Respondent is using a domain name that is identical to Complainant’s mark. Respondent has also used the domain name to
host links to a variety of businesses, including links to paid online surveys,
online
prescription drug retailers, as well as life insurance providers. These facts establish that Respondent has
violated paragraph 4(b)(iv) of the Policy.
See Am. Univ.
v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“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 also Qwest
Communications Int’l Inc. v. Shing, FA
187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's attempt to commercially benefit from the misleading
domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Respondent registered a domain
name that incorporates not merely a partial copy of Complainant’s institutional
name but an entire
26-letter rendition.
The Panel finds that it would be unreasonable to dismiss such conduct as
mere happenstance. The Panel concludes
that it is more likely than not that Respondent registered the domain name with
full knowledge of Complainant’s
rights in the NOVA SOUTHEASTERN UNIVERSITY
mark, which is evidence of bad faith registration and use. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (“Where an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to
confuse.”); see also 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).
Complainant has established
Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <novasoutheasternuniversity.com> domain name
be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 19, 2005.
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