WIPO Domain Name Decision D2008-0172 for nuffic.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Stichting Nuffic v. Domain Administrator / Moniker Privacy Services

Case No. D2008-0172

 

1. The Parties

The Complainant is Stichting Nuffic, The Hague, Netherlands, represented by Wessel, Tideman & Sassen, Netherlands.

The Respondent is Domain Administrator, Hong Kong, SAR of China; Moniker Privacy Services, Pompano Beach, Florida, United States of America (which for convenience the Panel will refer to collectively as “the Respondent”).

 

2. The Domain Name and Registrar

The disputed domain name is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint (identifying the Respondent as “Moniker Privacy Services”) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2008 via e-mail and on February 11, 2008 as a hardcopy. On February 4, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 7, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which were different from the information provided in the Complaint. The Center sent an email communication to the Complainant on February 11, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on February 15, 2008 via e-mail and a hardcopy version on February 18, 2008. The amendment added the registrar-disclosed registrant “Domain Administrator” as a Respondent. The Center verified that the Complaint together with the amendment to 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 February 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2008.

The Center appointed Christian Schalk as the sole panelist in this matter on March 31, 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.

The Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English.

 

4. Factual Background

The Complainant is a Dutch foundation which funds and promotes higher education throughout the world. The Complainant’s activities comprise among others the organisation of congresses, seminars and workshops. Furthermore, the Complainant is engaged in the academic research, evaluation of exams granting scholarships.

The Complainant owns the following Benelux trademark registrations covering Belgium, the Netherlands and Luxembourg:

– NUFFIC. LINKING KNOWLEDGE WORLDWIDE, covering goods and services in Int. classes 35, 36, 41 and 42 with priority date of April 21, 1999;

– N STUDY IN THE NETHERLANDS YOUR GATEWAY TO EUROPE (word and design mark), covering goods and services in Int. classes 35, 36, 41 and 42 with priority date of May 16, 2000;

– NUFFIC (word mark), covering goods and services in Int. classes 35, 36, 41 and 42 with priority date of May 12, 2006;

– NUFFIC (word and design mark), covering goods and services in Int. classes 35, 36, 41 and 42 with priority date of November 23, 2006.

The Complainant is also owner of the following domain names:

–

–

–

–

–

The Complaint explains that these domain names are used for the exploitation of its products and services and are all connected to one of the abovementioned trademarks.

Given the worldwide accessible Internet presence, the Complainant argues that it and its goods and services have become well known in the field of higher education and research.

The disputed domain name was registered on December 25, 2001 by a entity called “”. On July 26, 2007, the Complainant sent a cease and desist letter via registered mail to this entity and asked for the transfer of this domain name. However, the domain name was transferred to the Respondent. Neither the Complainant nor its legal representatives received ever a written reply to the cease and desist letter.

After filing of the initial Complaint with the Center, the Respondent changed its contact details, which required the Complainant to submit an amendment to the Complaint.

The disputed domain name resolves to a website which obviously provides access to resources and information on scholarship, degrees, universities and on education programs in the Netherlands and in other countries.

 

5. Parties’ Contentions

A. Complainant

The Complainant believes that the disputed domain name is identical to its trademarks. It argues further, that the Respondent pretends to be active, like the Complainant, in higher education and research as well. This behaviour could confuse potential clients who want to buy the products and/or hire the services of the Complainant. Therefore, the Complainant fears that potential clients could be thrown out of balance because the websites, which are linked with the disputed domain name, contain only a set of links to other websites to which the Complainant does not want to be associated with, since it could harm its reputation.

The Complainant believes also, that the Respondent has no rights or legitimate interests in respect of the domain name at issue.

The Complainant explains that the Respondent lacks a bona fide use offering of goods and services since the website linked with the disputed domain names contains only a set of links towards other websites.

The Complainant argues also that the Respondent is not commonly known by the domain name at issue and has no relation with higher education and research at all.

Furthermore, the Complainant regards the Respondent as a mere extension of its registrar. In this context the Complainant explains, that instead of transferring the disputed domain name by “” to the Complainant after the receipt of his cease and desist letter, it was transferred without notification to the Respondent. For all these reasons, the Complainant believes, that the Respondent tries to tarnish the Complainant’s trade-and/or service marks, which misleads potential clients of the Complainant.

Furthermore, the Complainant believes that the domain name at issue was registered and is being used in bad faith. In this context, the Complainant argues that given the transfer of the domain name to the Respondent after the Complainant’s letter to “”, the Respondent must have been registered the disputed domain name in order to prevent the Complainant from reflecting its trade- and/or service marks in the corresponding domain name. This behaviour causes confusion among Internet users and potential clients. To support this argument, the Complainant provides printouts of websites with information on–among others–university courses, study exchange programs and scholarships. The Complainant is mentioned as relevant source for further information, services and as an institution where students can apply for scholarships. In this connection, the disputed domain name is mentioned in every case as the Complainant’s web address.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The domain name holder has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

It is essential to dispute resolution that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (paragraph 2(a) of the Rules).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (see Bayerische Motorenwerke AG. v. Dariusz Herman, Herman DOMCREATE et co., WIPO Case No. DNAME2004-0001).

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the trademark NUFFIC. LINKING KNOWLEDGE WORLDWIDE which priority date is before the registration date of the disputed domain name. The term “nuffic” is the distinctive element of this trademark. It is linked with the slogan “Linking Knowledge Worldwide”, which describes at least one of the Complainant’s activities under the NUFFIC trademark. Therefore, the Panel believes that the disputed domain name is at least confusingly similar with a prior trademark of the Complainant.

B. Rights or Legitimate Interests

The Complainant succeeds in making a prima facie case that the Respondent lacks rights or legitimate interests, the burden of proof for any rights or legitimate interest in the disputed domain name passes to the Respondent. According to the material brought before the Panel, the Panel finds that the Respondent does not have demonstrated rights or legitimate interests in the disputed domain names for the following reasons:

The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, there is no evidence that the Respondent is known by the domain names at issue. The Complainant has also never granted the Respondent a license or authorization to use any of its trademarks.

Furthermore, the fact that the Respondent provides a website under the disputed domain name with services which are also offered by the Complainant is not a bona fide offering of goods or services but rather one which seeks profit from confusion with the Complainant.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for the Complainant to show the Respondent’s bad faith registration and use of the disputed domain names:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.

According to the material brought before the Panel and in the absence of a formal Response to the Complaint, the Panel finds, that for the reasons outlined below, the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy and that this is the case in (a) if “” and the Respondent were the same person or somehow related (i.e. the Respondent carried out the registration of the disputed domain name already), and (b) “” and the Respondent were independent parties (i.e. “” transferred the domain name at issue to the Respondent after receipt of the Complainant’s cease and desist letter).

It is a well-established principle under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to his knowledge the registration of the domain name will not infringe the rights of any third party.

Given the fact that the term “nuffic” is an unusual coined word and that the disputed domain name has been transferred from one entity to another after the Complainant sent a cease and desist letter to “”, the Panel finds that the Respondent was in all likelihood well aware of the Complainant’s trademark when he registered the disputed domain name.

Furthermore, the disputed domain name was linked with a website providing access on information and services identical with those of the Complainant. Given the structure of the website linked with the domain name at issue and its content, i.e. the degree of similarity with the Complainant’s websites and services which are also offered by the Complainant, the Panel finds that the purpose of having registered the disputed domain name, was to divert traffic intended for the Complainant’s website to the website of the Respondent or otherwise benefit from likely Internet-user confusion, and thus to take advantage of the Complainant’s trademark and its reputation. The printouts of educational websites presented by the Complainant show sufficient evidence, that the domain name at issue must have been used several times by Internet users seeking the Complainant’s services.

Moreover, the Respondent exchanged his apparently correct contact details by false ones after the initial Complaint was filed. The Panel believes that the only reason for such behaviour was, to frustrate or at least to delay the present UDRP proceedings. This in the Panel’s view constitutes a clear breach of the registration agreement (see also: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). For all these reasons the Respondent has registered the disputed domain name in bad faith and is using the domain in bad faith.

Given the case that the Respondent is apparently an entity different from “”, then the Panel believes, that the fact, that the Respondent did not register the disputed domain name itself but apparently acquired it from the previous listed owner, does not mean that the Respondent has not “registered” the domain name within the meaning of the Policy since there is no reason to differentiate between a direct registration and registration after transfer. The domain name at issue was in fact “registered” within the meaning of the Policy when it had been acquired by the Respondent after July 26, 2007 (see, e.g. Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2000-1406; Hebdomag Inc. v. Illuminaty Marketing,WIPO Case No. D2001-0206; Feria Muestrario Internaticional de Valencia v. Mr. JP Bronston,WIPO Case No. D2002-1163; Soci�t� Air France v. Vladimir Federov,WIPO Case No. D2003-0639; Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH,WIPO Case No. D2004-0016). It is also possible that the previous registrant may have transferred the domain name to the present, registrar-disclosed registrant “Domain Administrator” under cover of a privacy service (“Moniker Privacy Services”). See e.g. The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658],WIPO Case No. D2007-1438.

However this may be, after having acquired the disputed domain name, the Respondent became party of the Registration agreement and all its terms and conditions. The Panel believes that the Respondent must have been aware of this fact. Such registration agreements also stipulate that the domain name registrant, here the Respondent, represents and warrants to the registrar that, to this knowledge the registration of the domain name will not infringe the rights of any third party. The fact that the Respondent maintained or built up the website linked with the domain name at issue and provided false contact details after receipt of the Complaint in order to frustrate or at least to delay any attempts of transferring the disputed domain name to the Complainant shows that the Respondent must have been aware of the Complainant and his rights in the NUFFIC trademarks. Therefore, also under the assumption that “” and the Respondent were different entities, the Panel believes that the Respondent has registered the disputed domain name in bad faith and is using the domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(b)(iv) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.

Christian Schalk
Sole Panelist

Dated: April 14, 2008

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