WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Touro College v. William Vaughan, SMTM Investments, Ltd.
Case No. D2007-1813
1. The Parties
The Complainant is Touro College of United States of America, represented by Dow Lohnes PLLC, United States of America.
The Respondent is William Vaughan, SMTM Investments, Ltd., Australia.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with InnerWise, Inc. d/b/a ItsYourD.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2007. On December 14, 2007, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourD a request for registrar verification in connection with the domain name at issue. On December 14, 2007, InnerWise, Inc. d/b/a ItsYourD transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2008.
The Center appointed Mr. Steven A. Maier as the sole panelist in this matter on January 29, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Domain Name was registered on April 7, 2002.
5. Parties’ Contentions
A. The Complainant
The Complainant states that it operates an independent, non-profit institution of higher and professional education which has been continuously operated under the mark TOURO COLLEGE since at least 1970. It was chartered by the Board of Regents of the State of New York in that year. It has approximately 23,000 students enrolled in undergraduate, graduate and professional programs. It has campuses located at New York, Florida, Nevada and California within the United States of America, and internationally at Berlin, Jerusalem and Moscow. It operates numerous websites, including those linked to the domain names , , and .
The Complainant is not the owner of any registered trade marks for the name ‘Touro College’. However, it has used the name ‘Touro College’ continuously for over 35 years and has spent millions on promoting educational programs under that name. By virtue of these matters and the operation of the websites referred to above, it has developed substantial reputation and goodwill in that name in its geographic regions. A Google search of the phrase ‘touro college’ yields 250,000 results of which the first 50 refer exclusively to the Complainant. By virtue of these matters the Complainant has acquired unregistered trade mark rights in the name ‘Touro College’.
The Domain Name is identical to the Complainant’s mark TOURO COLLEGE save for the generic suffix ‘.com’.
The Respondent registered the Domain Name without the knowledge or authority of the Complainant. It is not a licensee of the Complainant and has no authority to use the ‘Touro College’ name. The Domain Name redirects to a portal site that includes links to the Complainant’s competitors and products and services that are competitive with those of the Complainant. The Respondent’s use of the Domain Name in this way exacerbates the potential for confusion caused by the Respondent’s registration of the Domain Name itself.
The Respondent is unable to demonstrate any rights or legitimate interest in the Domain Name. In particular, it has made no demonstrable preparations before notice of the dispute to use the Domain Name in connection with a bona fide offering of goods or services. On the contrary, it has used the Domain Name to divert Internet users and lure them to a site offering products and services competitive with those of the Complainant.
Nor has the Respondent ever been commonly known by the Domain Name, nor has he made legitimate non-commercial or fair use of the Domain Name without intent misleadingly to divert consumers for potential gain. Its intent is precisely to divert consumers in that way, presumably to receive compensation in the form of ‘click-through’ or other advertising revenues.
The Domain Name has undergone a series of changes of ownership since January 2007 which were designed to conceal the true identity of the registrant and frustrate the aims of the Policy. In particular:
(i) As of January 18, 2007 the Domain Name was registered to Cayman Trademark Trust.
(ii) Following the dispatch of a letter of demand from the Complainant’s counsel to Cayman Trademark Trust, the registration of the Domain Name was changed to REIT, Inc., which was the registrant as of April 3, 2007.
(iii) Following the dispatch of a subsequent letter of demand to REIT, Inc., the registration was changed to Domain Administration Limited, which was the registrant as of July 20, 2007.
(iv) Following a subsequent letter of demand to Domain Administration Limited on November 13, 2007, the registration was changed to the Respondent.
The above circumstances are indicative of ‘cyberflight’, and are evidence of the Respondent’s bad faith. The registration details of the Domain Name have been changed in response to each demand letter received. In every case the transfers have been effected between associated registrants, all connected with the Respondent. In particular, Domain Administration Limited and the Respondent are in effect the same entity, sharing contact details. Domain Administration Limited has a track record of ‘cybersquatting’ cases, having lost at least 12 UDRP cases in the past two years.
The Complainant also relies on the Respondent’s use of the Domain Name as described above as establishing the Respondent’s bad faith.
The Complainant seeks a transfer of the Domain Name.
B. The Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that, by virtue of its trading activities over the past 35 or more years under the name ‘Touro College’, the Complainant has obtained substantial goodwill attaching to that name, which is sufficient to ground a finding of unregistered trade mark rights in the present UDRP proceeding. The Panel also finds that the Domain Name is confusingly similar to the Complainant’s mark, being identical but for the formal suffix ‘.com’.
B. Rights or Legitimate Interests
The Complainant states that it has never authorized or licensed the Respondent to use its mark, whether for the purposes of the Domain Name or otherwise. The Respondent has failed to respond to the Complaint and has made no positive case on this or any of the other circumstances that are capable of evidencing rights or legitimate interest. There is no evidence that the Respondent has commonly been known by the Domain Name, that before notice of this dispute it made any preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it has made legitimate non-commercial or fair use of the Domain Name without intent misleadingly to divert consumers for potential gain. On the contrary, the Panel accepts the Complainant’s submission that the Respondent has used the Domain Name dishonestly to lure Internet users to websites offering services competitive with those of the Complainant.
C. Registered and Used in Bad Faith
In the absence of any Response, the Panel accepts the Complainant’s evidence that the registration of the Domain Name has been shuttled between associated parties, in response to a series of demand letters, with the object of avoiding the consequence of the Policy. The Panel readily infers bad faith from such conduct. The Panel further accepts that the Respondent’s use of the Domain Name to resolve to a website offering goods or services competitive with those of the Complainant constitutes further evidence of bad faith: the Domain Name comprises an unadorned use of the Complainant’s (unregistered) trade mark and the Respondent has plainly sought to divert, and take unfair advantage of, Internet users expecting to find the Complainant’s own website.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel finds that the Complaint succeeds and orders that the Domain Name, , be transferred to the Complainant.
Steven Maier
Sole Panelist
Date: February 12, 2008
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