The Complainant is New York University, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is Maria Hill, New York University of Business and Technologies, United States, internally represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2020. On May 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 25, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 2020 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 May 28, 2020. 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 June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. The Respondent submitted a response on June 22, 2020. The Complainant submitted a supplemental filing on June 25, 2020. The Respondent submitted a supplemental filing on June 26, 2020. The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 20, 2020. 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 not-for-profit educational corporation founded in 1831 and organized under the laws of the State of New York, with its principal operations in New York, New York, United States. It is currently one of the largest private universities in the United States. The Complainant promotes itself and is commonly known by its initials, NYU. The Complainant’s primary website, “www.nyu.edu”, prominently displays the NYU mark, along with the trademark NEW YORK UNIVERSITY. The Complainant uses a number of additional domain names that incorporate the NYU mark accompanied with other letters and words, including “www.nyuad.nyu.edu” (for the NYU Abu Dhabi campus), “www.gonyuathletics.com” (the official website of NYU athletics), “wwwnyuscps.com” (for NYU’s School of Continuing and Professional Studies), “www.nyualumni.com” (for NYU Alumni), and “www.nyucareers.com” (for faculty and staff career opportunities at NYU). The Complainant refers to its many graduate and undergraduate schools using the NYU mark, including the NYU Stern School of Business, NYU School of Law, NYU Tisch School of the Arts, and NYU Grossman School of Medicine. In addition to its campuses and programs in New York and at NYU Abu Dhabi, NYU Shanghai, NYU London, and NYU Sydney, the Complainant operates numerous online courses, including business and technology programs that lead to online business degrees. The Complainant also has a strong social media presence, with accounts at Facebook, Instagram, Twitter, YouTube, LinkedIn, Weibo, and WeChat, all of which use the NYU trademark in the relevant social media handle and refer to the Complainant as NYU in the site content. The record includes many examples of the university’s renown, as well as recognition of the NYU mark in print and online media. These include reference in the 2019 Princeton Review to the Complainant as a “Top 5 Dream School” in polling among students and parents, and number six national ranking of the Complainant’s law school by U.S. News & World Report in 2020, along with number ten national ranking of its business school. The Complainant claims common law trademark rights in NYU, established through more than a century of use. Moreover, the Complainant holds numerous United States and international trademark registrations. These include the following relevant United States trademark registrations, claiming first use in commerce in 1896: MARK REGISTRATION NUMBER REGISTRATION DATE NYU (standard characters) 1789490 August 24, 1993 NYU (standard characters) 3770376 April 6, 2010 The Complainant also holds United States and international trademark registrations for NEW YORK UNIVERSITY as a word mark, including Unites States registration number 1792693 (registered on September 14, 1993), which is relevant to the discussion below. According to the Registrar, the Domain Name was created on September 10, 2015 and is registered to the Respondent Maria Hill, listing her organization as New York University of Business and Technologies, with a postal address in New York, New York, United States. The postal address matches that of a business known as The Shipping Place in Hyde Park, New York, which rents “digital mailboxes” to customers. The Domain Name resolves to the website of the New York University of Business and Technologies or “NYUBT” (the “Respondent’s website”). The home page explains NYUBT as follows: “NYUBT is a leading online university, offering a tuition-free higher education. We decided to put to good use the power of Internet and technology, so that all qualified high school graduates with no regard to nationality or wealth can get the quality education they deserve. If you want to take a tuition-free Bachelor’s degree in Management Information Systems, Business Administration, Marketing or Masters in MBA, make the first step by reviewing the Admissions process.” The website explains that there are no fees for classes or course materials, only a one-time “exam processing fee” according to the degree sought: USD 1,440 for a BSc in Managing Information Systems, for example. The Complaint includes screenshots of earlier versions of the Respondent’s website, which used the title “New York University of Business and Technologies” and “New York University of Business and Technology” interchangeably and also prominently displayed a logo the featured the Complainant’s registered NEW YORK UNIVERSITY trademark in large letters, with the words “of Business and Technology” in much smaller letters beneath. There was no disclaimer of affiliation with the Complainant. That logo no longer appears on the Respondent’s website at the time of this Decision, and there is now a disclaimer of affiliation that appears on the landing page and in the FAQs. However, the Respondent’s website continues to include no information about the Respondent’s identity. The Complaint demonstrates that an earlier version of the Respondent’s website listed the postal address of NYUBT as a location in New York City that is a residential building with a UPS Store located on the ground floor offering virtual mailboxes. The Respondent removed that address from the website after the state education authority sent the letter described below in January 2020. At the time of this Decision, the Respondent’s website does not include any information about the location of NYUBT. The Complaint also shows that the Respondent’s website formerly listed “William Green” as the contact for “admissions inquiries” to NYUBT. William Greene is also the name of a professor at the Complainant’s NYU Stern School of Business, and on April 26, 2020, a woman sent an email to the Complainant’s Professor Greene explaining that she had twice completed an application for admission to the Respondent’s MBA Program without receiving a response. At the time of this Decision, the Respondent’s website includes only generic contact information without giving full names for any person supposedly connected with NYUBT. The Complaint attaches evidence that another customer complained on Facebook of not having a reply from the Respondent, and also notes a lack of evidence on LinkedIn of students actually receiving degrees from the Respondent. The online database operated by the New York Department of State Division of Corporations shows no record of a registered business entity by the name of “New York University of Business and Technologies” or “New York University of Business and Technology”. On January 17, 2020, the New York State Education Department’s Office of Higher Education sent the Respondent a letter, attached to the Complaint, demanding that the Respondent “cease and desist from the offering of any credit-bearing postsecondary education, the awarding of degrees, and all advertising that refers to itself as a university or implies the offering of any credit-bearing postsecondary education.” As explained in the letter, “New York State Education Law §224 prohibits an entity from advertising or transacting business in New York State under the name ‘university’ or ‘college,’ unless the right to do so has been granted by the New York State Board of Regents. Furthermore, no entity may operate a college or university, conduct credit-bearing classes, or award degrees without authorization from the New York State Board of Regents. To date, NYUBT has not sought, nor has it been granted, authority to operate a degree-granting institution in New York State.” The letter advised the Respondent as well that a copy “is being forwarded to the Consumer Frauds and Protection Bureau of the Office of the New York State Attorney General and the Consumer Services Division of the NYC Department of Consumer Affairs for any action those offices deem appropriate.” The Respondent acknowledges that it received this letter from the state authority and gives its own version of the relevant facts in the Response submitted in this proceeding: “NYUBT is fully online university of business and technologies which offers affordable, non-accredited programs. We believe we can put to good use the power of Internet and technology so that all qualified high school graduates with no regard to nationality or wealth, can get the quality education they deserve. Being entirely online, the university does not operate in the USA or any other country. It is therefore not providing any accredited degrees in the USA, in the State of New York or any other state or country. The Respondent is considering accrediting with Distance Education Accrediting Commission (DEAC) but have not applied yet and having in mind the accreditation process and fees, it is evaluating the return on investment so there is good probability the university would never be accredited. All this is diligently described in the FAQ section of the website, link and shortcut to which is visible on the landing page of the university…. NYUBT has never offered credit-bearing postsecondary education nor the awarding of degrees in the USA or the State of New York. NYUBT has never operated in New York State and we have immediately fixed and removed the New York postal box address that we considered using for the future DEAC communication from the Contacts page. As a result of the above-mentioned letter, we have in good faith further enhanced our FAQ and bolded and underlined the sections which describe the above …” The Complainant observed in its Supplemental Submission in this proceeding that the Respondent’s Facebook page continued to display the logo with “NEW YORK UNIVERSITY” above the much smaller words “of Business and Technologies”. In reply, the Respondent removed that logo from its Facebook page. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Domain Name is confusingly similar to its NYU trademark, which is incorporated in its entirety. The Complainant argues that the Respondent has never been given permission to use the trademark and has no rights or legitimate interests in the Domain Name, as it has never sought or been granted authority from the New York State Education Department to operate a degree-granting institution and, in fact, has received a cease-and-desist letter from that authority. The Complainant cites Veuve Cliquot Ponsardin v. Polygenix Group Co.,WIPO Case No. D2000-0163, for the proposition that bad faith should be found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”. As the Complainant’s NYU mark enjoys wide recognition, it is “inconceivable” that the Respondent was unaware of the Complainant’s mark when it registered the Domain Name and used it for a website selling online university degrees, particularly when the logo displayed on the Respondent’s website featured the Complainant’s NEW YORK UNIVERSITY trademark in large letters over the much smaller words, “of Business and Technologies”. The Complainant argues that this misleading use of the Domain Name for commercial gain represents bad faith under the Policy. According to the Complainant, bad faith can also be found in the illicit offering of university degrees without authority from the State of New York, the obfuscation of the Respondent’s identity and location, the actual confusion of Internet users through contact information using a name similar to one of the Complainant’s professor’s, the Respondent’s unresponsiveness to applicants, and the lack of evidence of actual educational services or degrees furnished by the Respondent. B. Respondent The Respondent does not challenge the Complainant’s trademarks but observes that it does not use the initials “NYU” on the Respondent’s website and suggests that it is willing to take other steps to avoid confusion. The Respondent claims that it is making a legitimate use of the initials that comprise the Domain Name for a business name chosen, not to refer to the Complaint, but to New York as a place and a concept and to an online program of business and technology education: “The name of the university consists of two parts: ‘New York’ and ‘University of Business and Technologies’. To the Respondent, New York is a symbol of the new, free world. A symbol that all people are equal and there are unlimited opportunities for the businesses which add value. Throughout the world, there are indisputably multiple restaurants, hotels, companies and other entities named New York. The latter part is University of Business and Technologies because it describes specifically what the Respondent offers as a service. … The Respondent has named the university after New York which is a well-known throughout the world geographical location followed by ‘University of Business and Technologies’ which specifies what the university offers. The Respondent has never used the standalone NYU abbreviation anywhere in its website or communications.” The Respondent contends that using a “.com” rather than a “.edu” generic Top-Level Domain (gTLD), such as the Complainant employs, should also avoid confusion. The Respondent points out as well that many entities use “ny” in their domain names to signify the city or state of New York, as the Respondent does. The Respondent claims it has demonstrated its good faith by adding a disclaimer and removing the New York postal address from its website, the “similarly named” Mr. Green, and the logos that formerly highlighted the name “NEW YORK UNIVERSITY” above the words “of Business and Technologies”. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the 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 domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] 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 that it deems applicable”. 6.1 Preliminary Matter: Supplemental Filings The Complainant and the Respondent each submitted supplemental filings. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. The Complainant’s Supplemental Submission replies to facts and arguments appearing in the Response and to the post-Complaint changes in the Respondent’s website. The Complainant observes that the Response concedes that the Respondent does not operate in New York, which undercuts that the Respondent’s claim to a legitimate interest in using the initials “ny” in the Domain Name. The Complainant also notes that the Respondent’s Facebook page continues to display the Respondent’s logo with “NEW YORK UNIVERSITY” above the much smaller words “of Business and Technologies”. In its own Supplemental Submission, the Respondent claims this was an oversight and reports that it has removed that logo from its Facebook page. Otherwise, the Supplemental Submissions largely repeat arguments made in the Complaint and Response, respectively. Nevertheless, the Panel accepts the Supplemental Submissions for the limited purpose of allowing the Parties to address the facts concerning the Respondent’s legitimate interests in referring to its supposed connection with New York and its alleged bad faith in displaying a logo reinforcing the confusing similarity of the Domain Name. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Domain Name incorporates the Complainants’ registered NYU mark in its entirety, adding the letters “bt”. Id., section 1.8 (the addition of generic terms or characters to a string that entirely incorporates a trademark is normally insufficiently distinctive for this element of the Policy). The gTLD “.com” “is viewed as a standard registration requirement” and as such is normally disregarded under the first element of the Policy. Id., section 1.11.2. The fact that the Complainant and other universities commonly use the “.edu” gTLD does not mean that they could not also use “.com” or, more importantly, that an average Internet user would necessarily notice this distinction (in search results or otherwise). The Panel concludes, therefore, that the first element of the Complaint has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the 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) that 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. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated its trademark rights and a lack of permission for the Respondent to use the Complainant’s mark in the Domain Name. The Respondent claims that the Domain Name corresponds to the initials of its enterprise, which has a name based on a geographic location, New York, and a description of its services, a “university” of “business and technologies”. The Respondent offers no evidence, however, of a legal entity with a corresponding name, and the Respondent admits that it “has never operated in New York State”. Until this Complaint was lodged, the Respondent’s website and social media site misleadingly advertised educational degrees for money under a logo using the Complainant’s mark NEW YORK UNIVERSITY, above the words “of Business and Technology” in very much smaller lettering. This does not reflect a legitimate interest in New York as a place, but rather an interest in misleading Internet users by raising a false impression of affiliation with the Complainant. The Panel finds that the Respondent has failed to demonstrate rights or legitimate interests in the Domain Name. The Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” This example fits the circumstances of the present case. The Complainant’s registered NYU mark is well-known and long-established in the field of education, and the Respondent, which offers putative online university degrees for a fee, was clearly aware of the Complainant. The clearest evidence, apart from the Domain Name itself, lies in the various forms of the logo that formerly appeared prominently on the Respondent’s website and Facebook page, featuring the Complainant’s name and registered trademark, NEW YORK UNIVERSITY, in large capital letters above the much smaller words representing the balance of the Respondent’s chosen name, “of Business and Technologies” or, as it sometimes appeared, “of Business and Technology”. In its Supplemental Submission, the Respondent attributes this to a poor design decision and insists, as it did in the Response, that the true meaning of its name is understood as referring to “New York” and separately to a “University of Business and Technologies”. This explanation is simply not credible, given the Complainant’s fame and the Respondent’s presentation of the name as “NEW YORK UNIVERSITY” on a website that clearly sought to attract the attention of individuals seeking a prestigious-sounding degree. Other facts contribute to an inference of bad faith in this case. The Respondent continues to obscure its identity, and it has only gradually removed misleading elements from its website and social media, under pressure from state authorities and this UDRP proceeding, as detailed above. The Panel finds bad faith in the registration and use of the Domain Name and concludes that the Complainant prevails on the third element of the Complaint. 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, W. Scott Blackmer
Sole Panelist
Date: August 3, 2020
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