The Complainant is Florida National University, Inc. of Hialeah, Florida, United States of America (“United States”), represented by Peretz Chesal & Herrmann, P.L., United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Toby Schwarzkopf of Los Angeles, California, 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 January 24, 2017. On January 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2017, 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 the Complainant on January 30, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 31, 2017.
The Center verified that the Complaint together with the amended 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 February 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on March 3, 2017. 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 private university located in Florida and founded in 1982. The Complainant since as early as June 2012 has used FLORIDA NATIONAL UNIVERSITY as a designation of source for its educational services. The Complainant also owns a United States trademark registration for the word plus design mark FNU FLORIDA NATIONAL UNIVERSITY, shown below, which was filed on June 26, 2012, and registered by the United States Patent and Trademark Office (“USPTO”) on October 18, 2016.
The disputed domain name was registered by the Respondent on May 16, 2016, according to the Registrar’s WhoIs records. The disputed domain name resolves to a website which purports to provide assistance to students at Florida National University in qualifying for partial or full loan forgiveness, and encourages students to “see if you qualify” by electronically submitting online personal information. The landing page on the Respondent’s website prominently displays against the backdrop of what appears to be a building on the Florida National University campus the following:
FLORIDA NATIONAL UNIVERSITY LOAN
FORGIVENESS
The Complainant maintains that the Respondent’s website is a scam. The Complainant through its legal counsel issued a cease-and-desist letter to the Respondent on October 11, 2016, to which the Complainant received no reply. There is no disclaimer of affiliation with Florida National University on the Respondent’s website. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is “nearly identical” to its FLORIDA NATIONAL UNIVERSITY mark, in which the Complainant asserts common law rights, and confusingly similar to the Complainant’s registered FNU FLORIDA NATIONAL UNIVERSITY mark.1 According to the Complainant, the addition of the words “loan forgiveness” do not serve to distinguish the disputed domain names from the Complainant’s marks. The Complainant further asserts that the generic Top-Level Domain (“gTLD”) “.com” typically is disregarded when assessing identity or confusing similarity under the first element of the Policy.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that the Respondent has not been commonly known by the disputed domain name, and has not been authorized to use the Complainant’s FLORIDA NATIONAL UNIVERSITY marks. The Complainant asserts that the Respondent is using the disputed domain name to divert Internet users to the Respondent’s website, on which the Respondent disseminates false and misleading information about loan forgiveness programs purportedly available to Florida National University students. The Complainant maintains that the Respondent is operating a scam, posting a false testimonial from a purported student who has never attended the university. In view of this, the Complainant submits that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services, nor making a legitimate noncommercial or other fair use of the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent clearly was aware of the Complainant and its rights in the FLORIDA NATIONAL UNIVERISTY marks when registering the disputed domain name. The Complainant submits that the Respondent registered the disputed domain name to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s FLORIDA NATIONAL UNIVERSITY marks as to source, sponsorship, endorsement of affiliation of the Respondent’s website and the services purportedly offered thereon. The Complainant reiterates that the Respondent’s website contains false and misleading information and advertising concerning loan forgiveness purportedly available to students at Florida National University. The Complainant further submits that the Respondent registered the disputed domain name in bad faith with the intent to disrupt the Complainant’s financial aid services. The Complainant further asserts that the Respondent’s use of a privacy protection service and failure to respond to the Complainant’s cease-and-desist letter also are indicative of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s FNU FLORIDA NATIONAL UNIVERSITY mark, in which the Complainant has established rights through registration and use, and to the Complainant’s FLORIDA NATIONAL UNIVERSITY mark, in which the Complainant has established common law rights. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy has been held to encompass registered marks as well as unregistered or common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218.
In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). As noted earlier, when registering the Complainant’s FNU FLORIDA NATIONAL UNIVERSITY mark, the USPTO determined “FLORIDA NATIONAL” had acquired distinctiveness for purposes of Section 2(f) of the Lanham Act. In view of this, and given the Respondent’s use of FLORIDA NATIONAL UNIVERSITY since 2012, the Panel finds that the mark has acquired secondary meaning. The Panel further notes that common law protection generally is recognized in connection with the tort of passing off. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.7 (UDRP affords protection in civil law jurisdictions equivalent to trademark protection under the tort of passing off).
In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement. See WIPO Overview 2.0, paragraph 1.2. The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Applying this standard, the disputed domain name is confusingly similar to the Complainant’s marks for purposes of paragraph 4(a)(i) of the Policy. The Complainant’s marks are plainly recognizable in the disputed domain name, and the addition of the words “loan forgiveness” does not serve to dispel confusing similarity.
Although the Top-Level Domain (“TLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, TLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is confusingly similar to the Complainant’s marks, which the Respondent is using to divert Internet users to a website soliciting personal information while purportedly offering loan forgiveness programs for students or former students at Florida National University.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Based on the totality of circumstances reflected in the record, it is evident that the Respondent was aware of the Complainant and had the Complainant’s marks in mind when registering the disputed domain name. The Respondent is using the disputed domain name, which is confusingly similar to the Complainant’s marks, to divert Internet visitors, presumably students or former students at Florida National University, to the Respondent’s website. Internet visitors could easily expect that the website they have arrived at is affiliated with or endorsed by the Complainant. The website contains no disclaimer of any such affiliation. The evidence strongly suggests that the Respondent has posted a fictitious testimonial on the website, and as noted earlier, the website solicits personal information from Internet visitors.
In the absence of any explanation from the Respondent, the Panel concludes that the foregoing does not constitute use or preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor does such mala fide use qualify as a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy, or support any claim by the Respondent to have been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. As noted above, it is undisputed that the Respondent has not been authorized to use the Complainant’s marks.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy. As noted above, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. In the absence of any explanation from the Respondent, the Panel finds from the record that the Respondent’s primary motive in relation to the registration and use of the disputed domain name more likely than not was to capitalize on or otherwise take advantage of the Complainant’s rights, by intentionally creating a likelihood of confusion with the Complainant’s marks as to sponsorship, endorsement or affiliation with the Respondent’s website and the services offered thereon.
The record also supports an interference that the disputed domain name was registered by the Respondent in bad faith with the purpose of disrupting the Complainant’s business (i.e., financial aid) under paragraph 4(b)(iii) of the Policy. Further, in the attendant circumstances, the Respondent’s use of a privacy protection service is evocative of a bad faith attempt to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy. See, e.g., Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
William R. Towns
Sole Panelist
Date: March 14, 2017
1 The words “FLORIDA NATIONAL” in the mark were registered by the USPTO under Section 2(F) of the Lanham Act. This reflects a determination by the USPTO that “FLORIDA NATIONAL” has acquired distinctiveness when used by the Complainant as a designation of source for its educational services.
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