The Complainant is St. Thomas University, Inc. of Miami Gardens, Florida, United States of America (“United States”), represented by Espinosa Trueba Martinez, PL, United States.
The Respondent is Silvana Carpintero of Dania Beach, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2016. On September 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2016.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on October 24, 2016. 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 a university based in South Florida, United States. The Complainant asserts rights in the common law trademark ST THOMAS UNIVERSITY, which it has been using continuously domestically and internationally since 1985 to identify and provide its educational services. The Complainant also asserts rights in a septagram logo design mark which it has been using since October 2007 to identify and provide its educational services. Furthermore, the Complainant asserts rights in the STU trademark which it has been using since 1996 to identify and provide its educational services. The Complainant is owner of the copyrights to the content of its website “”.
On July 8, 2016, the Respondent registered and began using the disputed domain name which, in addition to fully incorporating the school mark in the domain name, resolves to a website that identically incorporates the Complainant’s ST THOMAS UNIVERSITY trademark, septagram design mark and copyrighted materials. 5. Parties’ Contentions A. Complainant
The Complainant alleges that:
The disputed domain name is identical or confusingly similar to a common law service mark in which the Complainant has rights.
The Complainant claims that students and potential students seeking to learn about the Complainant and its services are likely to be misled into going to the website at the disputed domain name. The Complainant states that the Respondent is not merely using the disputed domain name to offer a competing service, but that it is using the disputed domain name to operate a counterfeit website that is a nearly identical copy of the Complainant’s website.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant alleges that the Respondent has made no bona fide offering of goods or services on the website identified with the disputed domain name, but is merely counterfeiting the Complainant’s website. The Complainant states that the Respondent does not identify itself on its website, but instead represents itself as the Complainant, i.e.,St. Thomas University.
The Complainant contends that the Respondent has no rights to any of the Complainant’s marks. The Complainant avers that the Respondent’s website cannot serve any legitimate noncommercial or fair use purpose. The Complainant states that the sole purpose of the Respondent’s website is to obtain commercial gain by diverting consumers thereby tarnishing the Complainant’s trademark.
The disputed domain name has been registered and is being used in bad faith.
The Complainant states that ever since its registration the Respondent has used the disputed domain name to point at a counterfeit version of the Complainant’s website which, to the common user, appears to be operated by the Complainant. The Complainant contends that the Respondent’s website was created solely for the purpose of stealing consumer information from unsuspecting consumers who think that they are dealing with the Complainant.
The Complainant states that the Respondent registered the disputed domain name primarily to disrupt the Complainant’s business and mislead consumers. The Complainant avers that the Respondent infringes on the Complainant’s various trademarks and copyrights in its legitimate website including but not limited to ST THOMAS UNIVERSITY and the septagram design mark.
The Complainant alleges that, by using the disputed domain name to point at a counterfeit site, the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To satisfy this element, the Complainant must establish that it has rights to a trade or service mark, and that the disputed domain name is identical or confusingly similar to such mark. See the Policy, paragraph 4(a)(i). Under the Policy, the test of confusing similarity is “confined to a consideration of the disputed domain name and the trademark.” America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004.
The Complainant contends that it has used the trademark ST THOMAS UNIVERSITY for more than two decades to provide its educational services. The Panel finds that the Complainant has produced sufficient evidence to establish common law rights in the ST THOMAS UNIVERSITY trademark for the purposes of the Policy. The disputed domain name incorporates the Complainant’s trademark in its entity. Under paragraph 4(a)(i) of the Policy, it is well established that the fact that a domain name wholly incorporates a complainant’s mark is sufficient to establish identity or confusing similarity for purposes of the Policy.
In addition, while not conclusive under the first element, the Respondent’s website identified with the disputed domain name identically incorporates the ST THOMAS UNIVERSITY trademark, the septagram design mark and copyrighted materials from the Complainant’s website.
The Respondent, in defaulting, does not dispute that the disputed domain name is identical or confusingly similar to the trademark ST THOMAS UNIVERSITY.
The Panel thus finds that the Complainant has rights to the trademark, that the trademark is identifiable with the Complainant, and has considerable goodwill. The Panel further finds that the disputed domain name is identical to the Complainant’s trademark. The Complainant has thus satisfied its burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant alleges, and the Respondent has not disputed, pre-existing usage of the trademark ST THOMAS UNIVERSITY sufficient to warrant common law trademark protection. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name in that:
i. The Respondent is not commonly known by the disputed domain name, does not own any trademark or service mark registrations of the disputed domain name, nor is making a legitimate noncommercial or fair use of the disputed domain name.
ii. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. Rather, the Respondent uses the disputed domain name to operate a counterfeit website which is a nearly identical copy of the Complainant’s website. The sole purpose of the website at the disputed domain name is to mislead unsuspecting consumers to the Respondent’s website to collect their personal information.
Although the ultimate burden of proof under paragraph 4(a)(ii) of the Policy is on the complainant, where a complainant has made a prima facie showing in this regard the burden of production shifts to the respondent to rebut such showing. Dr. Ing. h.c.F. Porsche AG v. Hakan Melek,WIPO Case No. D2004-0982; John Swire & Sons Limited v. David Huang,WIPO Case No. D2000-1106; Cimcities, LLC v. John Zuccarini D/B/A/ Cupcake Patrol,WIPO Case No. D2001-0491.
The Panel finds that the Complainant has made a sufficient prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent did not respond to the Complainant’s contentions, the Complainant’s contentions are deemed undisputed, and the Complainant’s burden of proof under paragraph 4(a)(ii) of the Policy is thereby satisfied. C. Registered and Used in Bad Faith
The Complainant has shown that the Respondent has wholly incorporated the Complainant’s renowned trademark ST THOMAS UNIVERSITY into the disputed domain name. Moreover, the Respondent’s registration of the disputed domain name, occurring more than two decades after the Complainant started to use the trademark ST THOMAS UNIVERSITY, evidences that the Respondent knew of the Complainant’s longstanding rights in the trademark and the valuable goodwill associated with the trademark.
Furthermore, students or potential students might guess at the Complainant’s domain name and be diverted to the Respondent’s website. Unsuspecting consumers, entering their personal data on the Respondent’s website to inquire about the Complainant’s educational services, will expect an answer from the Complainant. It will tarnish the Complainant’s trademark if these consumers never receive an answer from the Complainant upon their inquiry. This evidences that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the Complainant’s business. See paragraph 4(b)(iii) of the Policy.
The use of the Complainant’s trademark in its entirety intentionally misleads customers regarding the affiliation or association of the Complainant with the disputed domain name. The Respondent’s use of the disputed domain name to mislead unsuspecting consumers to its website and to collect their personal information is knowingly in bad faith.
The Panel thus finds that the Complainant has proved that the disputed domain name has been registered and is being used in bad faith. The Panel again notes that the Respondent did not respond to the Complainant’s contentions. The Complainant’s contentions are therefore deemed undisputed, and the Panel finds that paragraph 4(a)(iii) of the Policy is therefore satisfied. 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 disputed domain name be transferred to the Complainant.
Maxim H. Waldbaum
Sole Panelist
Date: October 31, 2016
Full & Egal Universal Law Academy