ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION The Juilliard School v. My Store Admin, My Store Case No. D2024-3712 1. The Parties The Complainant is The Juilliard School, United States of America (“United States”), represented by Archstone Law Group, United States. The Respondent is My Store Admin, My Store, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2024. On September 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (Tucows Domains Inc) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2024, 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 amendment to the Complaint on September 17, 2024. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2024. The Complainant submitted an amended Complaint on September 24, 2024.1 The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2024. 1 Panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. As the amended Complaint was filed after the Notification of the Complaint, the Panel will not consider it. Even if the Panel had considered this supplemental filing, this would not have changed the outcome of this case.
page 2 The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 14, 2024. 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 world-renowned performing arts academy in New York City, founded in 1905, that offers undergraduate and graduate degrees in dance, drama, music, historical performance, and vocal arts and produces more than 700 annual performances in New York City and other locations globally. These educational programs and performances are advertised under the JUILLIARD mark online and in social media as well as in print and other media. The Complainant operates a website at “www.julliard.edu”, where the Complainant’s public recognition in the United States and abroad is well documented. The Complainant holds the following relevant United States trademark registrations: Mark Registration Number Registration Date Goods or Services JUILLIARD (word) 2091832 August 26, 1997 International Class 9; computer software for use in teaching music JUILLIARD (word) 3749064 February 16, 2010 International Classes 25, 41; clothing, educational services, entertainment services and performances THE JUILLIARD STRING QUARTET (word) 2287547 October 19, 1999 International Class 41; educational services, entertainment services The Registrar reports that the disputed domain name was created on July 22, 2024, and is registered to the Respondent “My Store Admin” of “My Store”, listing a postal address in the United States, and a Hotmail contact email address. It does not appear that the disputed domain name has been used for an active website to date. . 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to its registered and distinctive JUILLIARD marks, adding the term “alumni”, which commonly refers to graduates of an educational institution such as the Complainant. The Respondent has made no commercial or noncommercial use of the disputed domain name and thus appears to have no rights or legitimate interests in it. The Respondent is not connected with the Complainant and is not authorized to use the JUILLIARD marks. The Complainant concludes that the Respondent’s only purposes in registering the disputed domain name are to “engage in deceptive and misleading activities” and/or “to attempt to sell the domain name for a profit”. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) and the respondent has no rights or legitimate interests in respect of the disputed domain name; (iii) and the disputed 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”. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark (the registered JUILLIARD marks) for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the JUILLIARD mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, “alumni”) may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the disputed domain name and the marks for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Respondent does not appear to be known by a corresponding name, and the disputed domain name has not been associated with a website, either commercial or noncommercial, displaying a legitimate purpose. The composition of the disputed domain name, including the word “alumni”,
page 4 suggests an association with the Complainant or its graduates, but the Respondent has not presented evidence of such an association. Accordingly, the Panel finds that the Respondent has failed to rebut a reasonable presumption that it lacks rights or legitimate interests in the disputed domain name. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Complainant’s JUILLIARD mark is distinctive, well known, and long-established. The composition of the disputed domain name, with the word “alumni” typically referring to graduates of an educational institution, reinforces the assumption that the Respondent was aware of the Complainant’s JUILLIARD mark. The disputed domain name was recently registered, and there is no evidence in the record that the Respondent, to date, has used the disputed domain name for a website or attempted to sell it to the Complainant or a competitor for an amount in excess of out-of-pocket costs. Thus, the enumerated instances of bad faith in the Policy, paragraphs 4(b)(i) and (iv), to which the Complaint alludes, do not apply. However, while Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, other circumstances also may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes, as in such cases, the distinctiveness and reputation of the Complainant’s trademark, as well as the composition of the disputed domain name that appears to target the Complainant’s mark. Accordingly, the Panel finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. The Respondent’s failure to reply and offer any legitimate reason for registering the disputed domain name lends weight to the inference of bad faith. The Panel finds that the Complainant has established the third element 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. /W. Scott Blackmer/ W. Scott Blackmer Sole Panelist Date: October 22, 2024
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