The Complainant is The Juilliard School of New York, New York, United States of America (“United States”), represented by Kelley Drye & Warren, LLP, of New York, New York, United States.
The Respondent is My Juilliard of Cambridge, Massachusetts, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2012. On January 31, 2012, the Center transmitted by e-mail to GoD, LLC, a request for registrar verification in connection with the disputed domain name. On January 31, 2012, GoD, LLC, transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on February 6, 2012.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”) (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2012.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 6, 2012. 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
Complainant states that it is a not-for-profit corporation that “has used the JUILLIARD mark in the United States in connection with educational services in the field of drama, dance and music, and related goods and services”; that it “attracts thousands of students from around the world each year who come to study at Juilliard”; that it “earns millions of dollars in gross annual revenue from the educational services that it provides to its students, and also from the sale of related goods and donations that it receives from patrons of the arts and other well-wishers of Juilliard”; and that it “has an active presence on the Internet, operating the website JUILLIARD.EDU, which is devoted to the promotion of Complainant’s goods and services.”
Complainant further states that it has rights in and has used the trademark JUILLIARD for more than 80 years. In support thereof, Complainant provided as an exhibit a copy of the certificate of registration for U.S. Reg. No. 3,749,064 for the mark JUILLIARD for use in connection with, inter alia, “[e]ducational services, namely, conducting classes in the fields of drama, dance and music and entertainment services in the nature of organizing and conducting drama, dance and musical performances and exhibitions.” This mark claims a date of first use in commerce of October 28, 1926, and the mark was registered on February 16, 2010. In addition, Complainant provided a list, with registration numbers and other relevant data, of other trademarks owned by Complainant that contain the word “Juilliard”. Collectively, these marks are referred to hereafter as “the JUILLIARD Trademark.”
The Disputed Domain Name was created on January 13, 2011, and is being used in connection with a website titled “My Juilliard” that offers “Google Apps for Students at The Juilliard School” and includes a solicitation section titled “Sign Me Up!” along with the text, “Get Yours with a Tax-Deductible Gift… minimum $100.00”. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is “virtually identical” to the JUILLIARD Trademark because “[i]t incorporates the entirety of Complainant’s JUILLIARD mark and only adds the country code top level domain ‘.ME.’”
- Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “Respondent is . . . not a licensee of Complainant and is not otherwise authorized to use” the JULLIARD Trademark; “Respondent’s sole intention was to benefit financially from the renown associated with Complainant's trademark by misleadingly diverting consumers and diluting Complainant's trademark”; and “[u]se of Complainant's JUILLIARD mark does not bear any legitimate relationship to Respondent’s business but for seeking to create a false association with Complainant and attracting visitors for its own commercial gain.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[b]y including the entirety of Complainant’s famous mark in the Disputed Domain Name, and by using this mark to fraudulently solicit donations on behalf of Complainant from visitors to the website associated with the Disputed Domain Name, Respondent is seeking to create an association with Complainant and is clearly intended to attract Internet users and capitalizing on the goodwill of Complainant's famous mark for its own commercial gain.” B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the JUILLIARD Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the JUILLIARD Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “juilliard”), as it is well-established that the top-level domain name (i.e., “.me”) should be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Given that the second-level domain of the Disputed Domain Name, “juilliard”, is identical to the JUILLIARD Trademark, “it is obvious without the need for elaboration that Complainant has proven the first element of the Policy.” Regan Campbell Ward-McCann v. Site Services International, Richard Sorensen,WIPO Case No. D2008-0386. B. Rights or Legitimate Interests
Complainant has argued that, inter alia, Respondent has no rights or legitimate interest in the Disputed Domain Name because, inter alia, “Respondent is . . . not a licensee of Complainant and is not otherwise authorized to use” the JULLIARD Trademark; “Respondent’s sole intention was to benefit financially from the renown associated with Complainant's trademark by misleadingly diverting consumers and diluting Complainant’s trademark”; and “[u]se of Complainant’s JUILLIARD mark does not bear any legitimate relationship to Respondent’s business but for seeking to create a false association with Complainant and attracting visitors for its own commercial gain.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location. Policy, paragraph 4(b).
Complainant does not specify which, if any, of the factors set forth paragraph 4(b) of the Policy is applicable here, although it implies that bad faith exists pursuant to paragraph 4(b)(iv). The Panel agrees that, by using the Disputed Domain Name in connection with a website offering for sale (via a “Tax-Deductible Gift”) “Google Apps for Students at The Juilliard School,” Respondent is likely to confuse consumers into believing that its website is somehow affiliated with or endorsed by Complainant. See, e.g., Pancil, LLC v. Jucco Holdings,WIPO Case No. D2006-0676 (“The only explanation of what has happened is that the Respondent’s motive in registering and using the sites seems to be . . . simply to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. These both constitute evidence of registration and use in bad faith: paragraph 4(b)(iii) & (iv) of the Policy.”); and Yale University v. Yale Explore and movcom,WIPO Case No. D2011-1367 (transfer of and ).
Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy. 7. Decision
For all 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 Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: March 20, 2012
Full & Egal Universal Law Academy