Complainant is Universidad Autónoma de Nuevo León of San Nicolás de los Garza, Nuevo León, Mexico, internally represented.
Respondent is Cyber Domain Services Pvt.Ltd., Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Tirupati Domains and Hosting Pvt Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 25, 2010. On November 26, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 3, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 3, 2010.
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” or ”UDRP”), 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 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 28, 2010.
The Center appointed Frederick Abbott as the sole panelist in this matter on January 7, 2011. 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
Complainant has registered the word trademark FACPYA on the trademark register of the Mexican Institute of Industrial Property/Instituto Mexicano de la Propriedad Industrial (hereinafter “IMPI”), registration number 1169992, dated July 22, 2010, in international class 41, covering education, training, education, sporting and cultural activities (translation by Panel), claiming date of first use of August 6, 1982.
Complainant is a university, one school of which uses FACPYA as its acronym (Facultad de Contaduría Publica y Administración) (translated as School of Public Accounting and Management by Complainant). According to Complainant, the School of Public Accounting and Management (FACPYA) was founded in 1952 under a somewhat different title. The present title and corresponding acronym was formally adopted in March 1981.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, Respondent became the registrant of the disputed domain name on September 9, 2010. Based on an InterNIC WhoIs database report furnished by Complainant, the disputed domain name was initially created on September 11, 2005. In its record of registration, Respondent did not provide a usable physical mailing address and provided telephone contact information that is transparently nonoperational.
Respondent has used the disputed domain name in connection with a pay-per-click link farm parking page maintained by Sedo. Entering the disputed domain name into a browser address line in Mexico yields links (in Spanish) to various educational institutions and educational services principally located in Mexico. Entering the disputed domain name into a browser address line in the United States yields links (in Spanish and English) to educational institutions and educational services in the United States, Spain and elsewhere. Entering the disputed domain name into a browser address line in Switzerland yields links (in Spanish, Italian and English) to educational institutes and educational services in Europe and elsewhere. The link farm parking page in all cases indicates that the disputed domain name may be for sale by its owner.
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant contends that it is the holder of trademark rights in FACPYA based on registration in Mexico, and supported by long use in commerce in Mexico.
Complainant contends that the disputed domain name is identical or confusingly similar to its trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has not been known by the disputed domain name nor does it have trademark rights in that name; (2) Respondent has not been authorized by Complainant to use its trademark in the disputed domain name; (3) there is no evidence of preparation to use the disputed domain name in good faith by Respondent, and; (4) there is no basis for a finding of legitimate noncommercial or fair use in the disputed domain name on the part of Respondent.
Complainant alleges that the disputed domain name was registered and has been used in bad faith because: (1) Respondent is using the disputed domain name to direct Internet users to a pay-per-click link farm parking page that returns results listing institutions and services in competition with Complainant, and; (2) Respondent is offering the disputed domain name which contains Complainant’s unique trademark for sale. According to Complainant, Respondent did not randomly select the letters comprising Complainant’s trademark for use in the disputed domain name.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center used the means identified by the Rules to notify Respondent of the Complaint and commencement of the proceedings. Although email communications to Respondent appear to have been successfully delivered, the Panel notes that Respondent registered the disputed domain name (1) with contact information that effectively precluded physical delivery of the relevant documents, and (2) with transparently nonoperational telephone contact information. The Center discharged its responsibilities under the Rules to provide adequate notice to Respondent (Rules, para. 2(a)). Respondent deliberately provided false and incomplete contact information, and in such circumstances must be deemed to have received adequate notice of the proceedings.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the trademark FACPYA on the trademark register of IMPI and of use of that trademark in commerce in Mexico. Respondent has not challenged Complainant’s ownership of or the validity of the trademark. The Panel determines that Respondent has rights in the trademark FACPYA.
The disputed domain name wholly incorporates Complainant’s trademark, adding only the generic top level domain identifier “.com”. The disputed domain name is identical to the trademark from the standpoint of the Policy.
The Panel determines that Complainant has rights in the trademark FACPYA and that the disputed domain name is identical to that trademark. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent was not commonly known by the disputed domain name, because Complainant has not authorized Respondent to use its trademark, because use of the disputed domain name in connection with a link farm pay-per-click parking page that returns results of third parties offering services competitive with those of Complainant does not establish rights or legitimate interests, and because Respondent has not made preparations to use the disputed domain name for a bona fide offering of goods or services. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has used the disputed domain name in connection with a link farm parking page advertising the services of third parties in competition with those of Complainant. It is well-established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to services competitive with the trademark owner, does not establish rights or legitimate interests. See, e.g., Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404; VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager,WIPO Case No. D2010-0925; O, Inc. v. Metro Media,WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates,WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah,WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. A,WIPO Case No. D2007-1881. Respondent may not disclaim responsibility for the manner in which the disputed domain name is used because it has delegated parts of that responsibility to a domain name service provider.
The Panel determines that Complainant has demonstrated that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the 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 (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
The Panel notes that Complainant registered its trademark in Mexico prior to the date on which Respondent registered the disputed domain name.
Respondent has used Complainant’s distinctive FACPYA trademark in the disputed domain name to direct Internet users to a pay-per-click parking page that includes links to competitors of Complainant. This constitutes intentional use of a domain name for commercial gain to attract Internet users to a website by creating consumer confusion with Complainant’s mark with respect to Complainant as source, sponsor, affiliate or endorser of Respondent’s website.
In addition, Respondent solicits offers to purchase the disputed domain name on the website identified by the disputed domain name. In the Panel’s view, this suggests that Respondent registered the disputed domain name for the purpose of selling it to Complainant or a third party for a price likely in excess of its out-of-pocket costs directly related to the disputed domain name.
The Panel determines that Respondent registered and has used the disputed domain name in bad faith by using the distinctive trademark of Complainant to direct Internet users to a pay-per-click parking page and by offering to sell the disputed domain name.
The Panel will direct the Registrar to transfer the disputed domain name to Complainant. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to Complainant.
Frederick M Abbott
Sole Panelist
Dated: January 21, 2011
Full & Egal Universal Law Academy