The Complainant is Universidad Autonoma De Nuevo Leon of San Nicolás de los Garza, Nuevo Leon, Mexico.
The Respondent is Askmysite.Com LLC of Cresskill, New Jersey, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2011. On June 9, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2011, the Registrar 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” 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 June 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2011. The Respondent did not submit any formal response. However, the Center is in receipt of three email communications from the Respondent on June 8, 2011, July 8, 2011 and July 14, 2011. The Center also received an email of June 23, 2011 from the Respondent which was forwarded by the Complainant to the Center on the same date.
The Center appointed Joan Clark as the sole panelist in this matter on July 28, 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
The Complainant is the owner of the trademark FAPSI registered with the Mexican Institute of Industrial Property (“IMPI”) on July 22, 2010, in respect of education, training, entertainment, sport and cultural activities.
The disputed domain name was registered on November 21, 2003, and it has a scheduled expiration date of November 21, 2011. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights, that is, the trademark FAPSI registered with the IMPI on July 22, 2010. The Complainant explains that its trade-mark consists of the acronym FAPSI derived from the School of Psychology (Facultad de Psicologia in Spanish) (emphasis and underlining added).
The Complaint contains a history of the School of Psychology including its creation on June 17, 1966 as part of the School of Philosophy and Arts of the Complainant and that the School of Psychology was settled in the medical area campus in 1973. The Complainant outlines various services offered by the school including symposia, courses and seminars, as well as the foundation of a suicide prevention center.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, that it was not known by the distinctive sign FAPSI, that it does not have the authorization of the Complainant to use the denomination FAPSI, and that the name of the Respondent does not imply any legitimate right or interest in the disputed domain name. The Complainant asserts that the disputed domain name was registered and is being used in bad faith, that the only purpose of its registration was to obtain economic gain through a practice of pay-per-click, and that the Respondent’s main goal was to sell the disputed domain name to the Complainant or its competitors. In support of this assertion, the Complainant refers to statements on the website for the disputed domain name offering it for sale.
The Complainant states that the Respondent has not shown demonstrable or even ambiguous preparations for the legal use of the disputed domain name. Finally, the Complainant asserts that there is no real evidence of the Respondent’s using the disputed domain name in connection with a bona fide offering of goods or services, or of making demonstrable preparations to use the disputed domain name in this manner. The Complainant maintains that it is impossible to believe that the disputed domain name was randomly chosen, but that instead it was deliberately chosen due to its association with the Complainant, and that its main and sole purpose was to be linked with the Complainant’s trademark. B. Respondent
The Respondent did not submit a formal response. However, as indicated earlier, the Respondent submitted several email communications. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant’s trademark FAPSI. As has been found in numerous UDRP decisions, the addition of the suffix “.com” does not affect the issue as to whether a domain name is identical or confusingly similar to a trademark.
The Panel also finds that the Complainant is the owner of and has rights in the registered trademark FAPSI.
Accordingly, the disputed domain name is identical to a trademark in which the Complainant has rights, and the first element to be established in order for the Complaint to succeed has been confirmed. B. Rights or Legitimate Interests
The Respondent has not put forward any evidence to show it has rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has been known by the disputed domain name and there is no evidence that it made demonstrable preparations to use it in connection with a bona fide offering of goods or services. Finally, the Complainant’s evidence is clear that no authorization was ever given to the Respondent to use the Complainant’s trademark in the disputed domain name.
It is clear from several statements on print-outs of the Respondent’s website, produced by the Complainant, that the Respondent’s purpose was not to use the disputed domain name and its website itself, but rather to offer it for sale. For example, the following statements appear: “Make an offer now”, “Want ?”, “?Interesado en este dominio?”, and “Pregunta acerca del dominio FAPSI.com.” In addition, correspondence has been produced from the Respondent to the Complainant inviting the latter to make an offer to acquire the disputed domain name (email of June 23, 2011).
The Panel is of the opinion that the disputed domain name was created to entice the Complainant or one of its competitors to acquire it for a commercial advantage to the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the second element required to be established in order for the Complaint to succeed has been confirmed. C. Registered and Used in Bad Faith
The Complainant has established that the term FAPSI is an acronym for the name of the School of Psychology of the Complainant University, and that the School of Psychology has operated since at least 1966, originally as part of the School of Philosophy and Arts until 1973 and subsequently as the separate School of Psychology, conducting studies of psychology, various symposia, courses and seminars as well as services offered in the School. Although the Complainant’s trademark FAPSI was registered in the year 2010, some seven years after the disputed domain name was created, the Panel is of the view that the disputed domain name was chosen based upon the acronym FAPSI which according to the unrefuted evidence of the Complainant was in use as early as1966. The website associated with the Respondent’s disputed domain name refers throughout to links about studies in psychology and other matters relating to psychology, similar to the services offered by the Complainant, confirming to the Panel that the disputed domain name was chosen because of the Complainant’s use, through its School of Psychology, of the acronym FAPSI. This conclusion is reinforced by the fact that “fapsi” is a made-up word and in the absence of a formal Response from the Respondent there is no other explanation for its appearance in the disputed domain name.
The Respondent was aware of the Complaint which was served on the Respondent by the Complainant on June 8, 2011 and again forwarded by the Center to the Respondent on June 21, 2011. In subsequent correspondence to the Complainant, the Respondent did not deny any of the assertions in the Complaint, but instead invited the Complainant to make an offer to acquire the disputed domain name and, a couple of weeks later, in another communication to the Complainant, purported to accept an offer for the disputed domain name which in fact was never made insofar as the evidence shows.
The Panel is of the view that the Respondent registered the disputed domain name to create confusion with the Complainant’s School of Psychology and its acronym FAPSI, with the intention to offer the disputed domain name to the Complainant, or one of the Complainant’s competitors, for commercial gain.
The Panel concludes that the disputed domain name was registered in bad faith. Although the Respondent has not made active use of the disputed domain name, its registration by the Respondent precludes the Complainant from registering it and constitutes a passive use which, in the circumstances of the present case, is also in bad faith. See Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and numerous subsequent decisions holding that the passive holding of a domain name may be considered use for the purpose of determining whether a domain name were used in bad faith.
The Panel therefore finds that the disputed domain name was registered in bad faith and has been used in bad faith, and the third element to be established for the Complaint to succeed has been confirmed. 7. Decision
For 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 the Complainant.
Joan Clark
Sole Panelist
Dated: August 11, 2011
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