ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION The University of Houston System v. William Morocco, Kenneth Stone, Cole Brad Case No. D2024-5016 1. The Parties The Complainant is The University of Houston System, United States of America (“United States”), represented by Holland & Knight, LLP, United States. The Respondents are William Morocco, United States, Kenneth Stone, Panama, and Cole Brad, United States. 2. The Domain Names and Registrars The disputed domain names and are registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “First Registrar”). The disputed domain name is registered with Internet Invest, Ltd. dba Imena.ua (the “Second Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2024. On December 5, 2024, the Center transmitted by email to the First and Second Registrars a request for registrar verification in connection with the disputed domain names. On December 5, 2024, the First and Second Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Whois Privacy Protection Foundation) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 10, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants, or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on December 11, 2024. 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
page 2 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 Respondents of the Complaint, and the proceedings commenced on December 17, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 7, 2025. The Center appointed Steven A. Maier as the sole panelist in this matter on January 13, 2025. 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. Consolidation of Proceedings As discussed in section 4.18 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” The Complainant submits that all three of the disputed domain names are subject to common control. It states that all the disputed domain names were registered between August and October 2024, and that all three have been used for the purpose of identical, or near identical, websites. The Complainant further submits that it sent a “cease and desist” communication to the Respondents concerning the disputed domain name on August 5, 2024, whereupon the Respondents moved their website to the disputed domain name , and that following further such communications on August 16 and September 17, 2024, and the Second Registrar blocking that disputed domain name, the Respondents then moved the website to the disputed domain name. The Respondents not having disputed the Complainant’s contentions as above, the Panel finds that all three of the disputed domain names are subject to common control, and that the consolidation would be fair and equitable to all parties. The Panel therefore directs that the proceedings in respect of all three of the disputed domain names be consolidated. 5. Factual Background The Complainant is a higher education institution located in Texas, United States which operates under the name and trademark UNIVERSITY OF HOUSTON. The Complainant is the owner of trademark registrations including (among others) the following: - United States trademark registration number 747078 for the word mark UNIVERSITY OF HOUSTON, registered on March 19, 1963; - United States trademark registration number 3114675 for a combined mark comprising the a stylized form of the letters UH, registered on July 11, 2006; and - United States trademark registration number 5304391 for the word mark HOUSTON, registered on October 10, 2017 for goods and services including educational services.
page 3 The Complainant is the owner of domain names including , , , and , all of which resolve to its official websites. Its website at “www.uh.edu” adopts a distinctive red and white colour scheme. The disputed domain names were registered on the following dates: on July 11, 2024 on August 5, 2024 on October 9, 2024 The Complainant has provided evidence that the disputed domain name has resolved to a website, purporting to be operated by an institution named Houston University of Texas, and offering “World-Renowned Online Learning”. The website adopts a colour scheme similar to the Complainant’s. The Complainant also exhibits an email emanating from the disputed domain name , which purports to come from the Houston University of Texas. The Respondents have not denied the Complainant’s contention that all three of the disputed domain names have at one time hosted identical or near identical versions of the website in question. At the date of this Decision, the disputed domain name resolved to the website described above, and the other two disputed domain names did not resolve to any active websites. 6. Parties’ Contentions A. Complainant The Complainant states that it was established in 1927 and is ranked among the leading college providers in the United States. It submits that it has marketed its trademarks for over 90 years through television, print media and the Internet, and that those trademarks have become well known in connection with educational goods and services. The Complainant submits that the disputed domain names are confusingly similar to trademarks in which it has rights. It also relies on its domain name registrations referred to above, and contends that the Respondents’ use of the Complainant’s trademarks and trade dress supports a finding of confusing similarity for the purposes of the Policy. The Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain names. It states that it has no relationship with the Respondents and has never authorized them to use any of its trademarks, that the Respondents have not commonly been known by the disputed domain names, and that the Respondents are making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain names. The Complainant submits that the dishonest nature of the Respondents’ website is evident from their failure to reply to “cease and desist” communications, the serial relocation of that website as referred to above, and also the fact that none of the accreditations claimed on the website is genuine. The Complainants refer to purported accreditations (together with relevant logos) by the following five bodies: Global Higher Education Accreditation Ministry (“GHEAC”), Gulf Accreditation Council for Higher Education (“GACHE”), US Business Program Accreditation Council (“USBPAC”), United States Commission of Engineering Accreditation (“USCOEA”) and United States Higher Education Accreditation Bureau (“USHEAB”). The Complainant provides analysis to suggest that none of these bodies is genuine, including that fact that four of their respective website domain names were all registered on the same day, namely May 20, 2024. Among other matters, the Complainant contends that none of the five bodies in question is recognized by the Texas Higher Education Coordinating Board. It adds that the list of institutions supposedly accredited by GHEAC does not include Houston University of Texas in any event.
page 4 The Complainant contends that the disputed domain names have been registered and are being used in bad faith. It submits that the disputed domain names are confusingly similar to the Complainant’s trademarks, and also to its URL at “www.uh.edu”. The Complainant contends that Respondents are deliberately causing confusion to Internet users by virtue of these matters and their replication of the Complainant’s colour scheme. It adds that the Respondents’ bad faith is evident from their failure to reply to the Complainant’s “cease and desist” correspondence. The Complainant further contends that the Respondents are using the disputed domain names misleadingly to obtain personal information from prospective students. It exhibits an email query from an individual who received an email from: “[…]@uoht.education”, stating that the recipient had been recommended for a scholarship, querying whether that email was genuine or a scam. It also exhibits an (anonymous) text communication suggesting that the Respondents are operating a scam aimed at obtaining money from Internet users by causing confusion with the Complainant. The Complainant requests the transfer of the disputed domain names. B. Respondents The Respondents did not reply to the Complainant’s contentions. 7. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element under the Policy 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 3.0, section 1.7. The Complainant has demonstrated that it is the owner of registered trademark rights for the marks UNIVERSITY OF HOUSTON, HOUSTON, and a figurative mark UH. The Panel notes in this regard that panels under the UDRP have found in various previous cases that abbreviations or acronyms for a trademark may be confusingly similar to that trademark for the purposes of the first element under the Policy (see e.g. DER Touristik UK Ltd (t/a Voyages Jules Verne) v. LION, WIPO Case No. D2024-3570; Fenix International Limited c/o Walters Law Group v. Privacy Service Provided by Withheld for Privacy ehf / Nemanja Krecelj, Rocket Science Group, WIPO Case No. D2022-1622). The Panel notes further the guidance provided by section 1.7 of WIPO Overview 3.0 as follows: “In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple
page 5 respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity.” Further, as per section 1.15 of WIPO Overview 3.0: “In some instances, panels have… taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.” As further discussed below, the Panel finds that the Respondents’ website seeks to trade off the Complainant’s reputation, and therefore supports a finding of confusing similarity between the disputed domain names and the Complainant’s trademarks. The Panel therefore finds that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests The Respondents purport to be using the disputed domain names to promote online education services on behalf of the Houston University of Texas. While that business name is similar to the Complainant’s UNIVERSITY OF HOUSTON trademark, both names are comprised of geographical and dictionary terms, and it is not the function of panels under the UDRP to resolve claims of trademark infringement as between legitimate competing businesses. Therefore, for the Complainant to succeed in this proceeding, it must establish, on the balance of probabilities, that the Respondents’ Houston University of Texas business and website do not represent a bona fide business, but are instead a sham or pretext for taking unfair advantage of the Complainant’s trademark rights. Having considered all the circumstances of the case, the Panel does not find on the balance that the Respondents’ website represents a genuine business venture. The Panel reaches this conclusion for a number of reasons. First, while the Respondents’ website appears to be reasonably sophisticated on first viewing, the Panel finds its content to be generic in nature and to lack the specificity that would more typically be associated with a website representing a significant academic institution. For example, the website lists some 16 academic departments, in which it claims to offer “distinguished faculty members”. Although it provides the names of three of these academics for each department, no information is provided about these individuals or their profile or qualifications, other than their title (e.g. Head of Department) and an email address. Furthermore, searches against a random sample of the names on both Google and LinkedIn (where Houston University of Texas apparently has an account) did not return any results connecting any such individuals with the Respondents’ institution1. The Panel also takes account of the Complainant’s submissions regarding the authenticity of the accreditation bodies referred to on the Respondents’ website, and notes that the Respondents have not disputed those submissions. Secondly, the Panel accepts the Complainant’s evidence, which the Respondents have again not disputed, that the Respondents did not reply to “cease and desist” letters received from the Complainant, but instead altered the URL of their website on two occasions. Thirdly, the Respondents have neglected to file any Response in this proceeding or otherwise to reply to the Complainant’s submissions. In the case of each Respondent’s registration agreement, the submission to a 1 As noted in section 4.8 of WIPO Overview 3.0, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision
page 6 mandatory dispute resolution procedure was a condition of registration of the disputed domain names. While a failure to respond is not, of itself, fatal to a respondent’s case, the Panel would find it extraordinary that no Response would be filed in this proceeding, in order to defend the registration of the disputed domain names, if the Respondents’ supposed academic institution was in fact a genuine commercial venture. Also taking into account the matters referred to below in the context of bad faith registration and use, the Panel concludes on balance that the Respondents’ website does not represent a bona fide commercial venture, and is instead a sham or pretext for taking unfair advantage of the Complainant’s trademark rights. The Panel therefore finds that the Respondents have no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith While the Panel’s findings in respect of the second element under the Policy, above, also point strongly to a finding of registration and use of the disputed domain names in bad faith, the Panel notes further the similarity between the Complainant’s UNIVERSITY OF HOUSTON trademark and the name of the Respondents’ institution, the similarity of the disputed domain names to the Complainant’s URL at “www.uh.edu” (including for this purpose the generic Top-Level Domain (“gTLD”) in each case), and the similarity of the Respondents’ colour scheme to that of the Complainant. Taking all such matters into account, the Panel finds on balance that, by using the disputed domain name, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of their website or of a product or service on their website (paragraph 4(b)(iv) of the Policy). The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith. 8. 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 names , and be transferred to the Complainant. /Steven A. Maier/ Steven A. Maier Sole Panelist Date: January 23, 2025
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