The Complainants are Babson College of Babson Park, Massachusetts, United States of America, Brandeis University of Waltham, Massachusetts, United States of America, Tufts University of Medford, Massachusetts, United States of America and The University of Vermont of Burlington, Vermont, United States of America (hereinafter sometimes referred to collectively as “the Complainant”), represented by The Law Office of Zick Rubin, United States of America.
The Respondent is Mark (Omar) Quevillo of Cambridge, Massachusetts, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2012. On May 3, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain names. On May 3, 2012, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on June 4, 2012.
The Center appointed Dennis A. Foster as the sole panelist in this matter on June 15, 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
The Complainant is comprised of four established United States of America educational institutions: Babson College; Brandeis University; Tufts University; and The University of Vermont. Each has obtained valid registrations from the United States Patent and Trademark Office (“USPTO”) for service marks corresponding to their names, i.e.: BABSON COLLEGE (Registration No. 1,643,980, registered May 7, 1991); BRANDEIS UNIVERSITY (Registration No. 2,233,342, registered March 23, 1999); TUFTS (Registration No. 1,910,498, registered August 8, 1995); and UVM (Registration No. 1,355,884, registered August 20, 1985).
The Respondent is the registered owner of the disputed domain names, , , and . The respective dates of registration are December 31, 2008, December 1, 2008, December 1, 2008 and January 19, 2011. The disputed domain names are attached to websites that, among other things, solicit donations from student Internet users for access to certain third-party websites. 5. Parties’ Contentions A. Complainant
The Complainant is comprised of four United States of America institutes of higher education: Babson College; Brandeis University; Tufts University; and The University of Vermont. The Complainant has registered the following marks with the USPTO: BABSON COLLEGE; BRANDEIS UNIVERSITY; TUFTS; and UVM. The Complainant also owns and offers services under their domain names: and ; ; and .
The disputed domain names, , , and are identical or confusingly similar to the respective service marks, BABSON COLLEGE, BRANDEIS UNIVERSITY, TUFTS, and UVM. In the first two instances, the terms “college” and “university” are dropped from the respective infringing disputed domain names, but the distinctive portion of the respective marks – namely, “Babson” and “Brandeis” – are replicated exactly. In the other two cases, the disputed domain names are identical to the respective marks. In all cases, the top-level domain, “.me”, is added, but fails to distinguish the disputed domain names from the marks.
The Respondent has no rights or legitimate interests in the disputed domain names. In each instance, the names are used for websites that purport to offer goods or services that appear to be connected with the Complainant. As there is no affiliation between the Complainant and the Respondent, such action is neither a bona fide offering of goods or services nor a noncommercial or fair use of the disputed domain names. Moreover, the Respondent’s website solicits money – in the form of USD60.00 for “Tax Deductible Gifts” or donations – from unsuspecting students; again falsely connecting the Complainant with the Respondent’s illegitimate attempt to gain commercially.
The disputed domain names were registered and are being used in bad faith. The Respondent uses the disputed domain names in connection with websites that use the Complainant’s registered word and design marks to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the websites. The Respondent’s scheme to deceive students into donating money under the auspices of the Complainant’s service marks is bad faith registration and use of the disputed domain names.
Further evidence of the Respondent’s bad faith is seen from its pattern of registering domain names corresponding to the service marks of educational institutions for unauthorized and illegitimate purposes. Furthermore, with respect to the use of the disputed domain name, , the Respondent has shown bad faith in engaging in the fraudulent attempt to gain fees by suggesting that such fees might assist students in obtaining course credit. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue: Consolidation of Complaints
Several prior UDRP panels have considered and granted the consolidation of multiple complainants into a single complaint where only one respondent is involved. See Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc.,WIPO Case No. D2009-1243; MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc.,WIPO Case No. D2009-0985; Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331; Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc.,WIPO Case No. D2005-1336; and NFL Properties, Inc. et al. v. Rusty Rahe,WIPO Case No. D2000-0128.
In most of these prior cases, the multiple complainants were related as either conjoined corporate entities, teams affiliated with a sports league or joint trademark licensees. However, in one case, Alabama One Call et al., supra, the panel permitted the consolidation of unrelated complainants into a single complaint. In this case, the Complainants, Babson College, Brandeis University, Tufts University and the University of Vermont, are unrelated entities. However, they are all similar institutes of higher education located in the northeastern region of the United States of America. Furthermore, the disputed domain names are all directed to websites that are virtually identical, save for references to the respective Complainant, and give rise to contentions of Policy violations based on virtually identical rationales among the Complainants in relation to their respective trademark and disputed domain name. As such, the Panel concludes that the Complainants have demonstrated that they have a “common grievance” with the Respondent, an element of consolidation consideration referred to in Alabama One Call et al, supra.
The Panel notes, also, that this case includes only four separate Complainants and four disputed domain names. Thus, the Panel may easily reassign ownership of any of those disputed domain names to the appropriate Complainant if necessary. To require each Complainant to file and pay for an individual claim, which would necessitate four panels and four opinions, would be procedurally inefficient and economically wasteful. In the Panel’s view, the Respondent faces no inequity in being required to respond to the similar contentions made by the four Complainants in this one Complaint as opposed to arguing, presumably, the same defenses to those same contentions in four separate complaints. Therefore, the Panel concludes that it would it be equitable and procedurally efficient to permit consolidation of the complainants in this case. See Alabama One Call et al., supra.
In line with the reasoning above, the Panel will permit the consolidation of the Complainants under this Complaint. 7. Discussion and Findings
Pursuant to UDRP paragraphs 4(a)(i)–(iii), the Panel shall find that the Complainant has prevailed in these proceedings and order transfer of the disputed domain names, , , and , if the Complainant proves that:
(i) The disputed domain names are 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 disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has presented the Panel with ample evidence (Complaint, Annex 4) of its USPTO service mark registrations for the marks, BABSON COLLEGE, BRANDEIS UNIVERSITY, TUFTS and UVM. Consequently, the Panel concludes that Complainant has rights in those marks sufficient to satisfy Policy paragraph 4(c)(i). See, The SANS Institute v. WhoisGuard,WIPO Case No. D2007-0426 (“Complainant has established rights in the SANS mark through registration with the USPTO.”).
The Panel notes that all of the disputed domain names contain, as a suffix, the top-level domain, “.me”. In all cases, that suffix is irrelevant with respect to the Panel’s evaluation of the identicalness or similarity between those names and the marks owned by the Complainant. See, e.g. Sterling Jewelers Inc. v. Korey Jimenez / L,WIPO Case No. DME2012-0003 (“It has long been held that the addition of a top-level domain is irrelevant to the determination of whether the domain name is identical or confusingly similar to a complainant’s mark.”); and The Juilliard School v. My Juilliard,WIPO Case No. DME2012-0002 (“As to whether the Disputed Domain Name is identical or confusingly similar to the JUILLIARD Trademark…it is well-established that the top-level domain name (i.e., “.me”) should be disregarded for this purpose.”).
In comparing the disputed domain names and with the marks, TUFTS and UVM, respectively, the Panel determines that they are identical. Moreover, while the Panel does not find to be identical to BABSON COLLEGE or to be identical to BRANDEIS UNIVERSITY, the Panel recognizes that in both instances the names are confusingly similar to the respective marks. In so concluding, the Panel notes that the names contain in full the distinct first term of those marks, and that educational institutions are referred to commonly by only their first term. So that Babson College is known commonly as “Babson”, and Brandeis University as “Brandeis”. Moreover, those two institutions operate respective online services through the domain names, and . See, Banque Saudi Fransi v. ABCIB,WIPO Case No. D2003-0656 (finding to be confusingly similar to the ALBANK AL SAUDI AL FRANSI mark, where the complainant conducted business online through ); and Archer-Daniels-Midland Company v. Robyn Bodine (a.k.a. D.L. Tate, Donnie Tate) ,WIPO Case No. D2002-0482 (“Just as the addition of common words to a protected mark will not save a challenged domain name, so deletion of a nonessential portion of the mark does not vitiate the likelihood of confusion.”).
In the Panel’s view, the Complainant has proven that the disputed domain names are identical or confusingly similar to service marks in which the Complainant has rights. B. Rights or Legitimate Interests
Because the Complainant has been found by the Panel to possess rights in service marks to which the disputed domain names are either identical or confusingly similar, and the Complainant asserts that there is no affiliation between it and the Respondent, the Complainant has made out successfully a prima facie case that the Respondent has no rights or legitimate interests in those disputed domain names. The Respondent has come forth with no evidence to rebut that prima facie case, but the Panel will examine whether the record otherwise supports the proposition that the Respondent has such rights or legitimate interests by application of Policy paragraph 4(c).
The Complainant contends, with clear supporting evidence (Complaint, Annex 5), that the Respondent has attached websites to the disputed domain names whose primary use is to appeal for “tax deductible gifts” – in the amount of USD 60.00 or more – from student Internet users in exchange for activation of links to “Google Apps” services. However, in line with previous UDRP rulings, the Panel finds that provision of linkage to third-party services such as “Google Apps” is not a “bona fide offering of goods or services” that might bring paragraph 4(c)(i) into play on behalf of the Respondent. See, for example, SAP AG v. Domains by Proxy, Inc. / Sales,WIPO Case No. D2009-0264; and Sanofi-aventis v. Gerard Scarretta,WIPO Case No. D2009-0229.
Moreover, as there is no evidence that said “gifts” are connected to charitable or public interest purposes – as opposed to merely enriching the Respondent – the Panel concludes that paragraph 4(c)(iii), which calls for “legitimate noncommercial or fair use” of disputed domain names, is also inapplicable. Finally, the record contains no evidence that the Respondent, a Mr. Quevillon, has been commonly known by any of the disputed domain names, thus eliminating paragraph 4(c)(ii) as support for the Respondent’s position.
Since the record offers no effective rebuttal to the Complainant’s prima facie case, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the UDRP sets forth four circumstances, any of which, if found by the Panel to apply, mandate a finding of bad faith registration and use of the disputed domain names, as follows:
(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you[the Respondent] have 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 you have engaged in a pattern of such conduct; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In this case, the Complainant has contended, without contradiction from the Respondent or otherwise from the record, that the Respondent uses all of the disputed domain names for websites that actively solicit monies – in the form of “gifts” – for the Respondent’s commercial gain. The Panel accepts the validity of this contention. See, Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. FA95095 (“The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.”); and Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). As all of the disputed domain names have been determined to be confusingly similar to service marks owned by the Complainant, the Panel concludes that the Respondent intends to gain commercially though the attraction of Internet users by creating the likelihood of confusion with those marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. That conclusion is consistent with the circumstance elaborated in paragraph 4(b)(iv) above and thusly probative of the Respondent’s bad faith registration and use of the names.
As so reasoned, the Panel finds that the Complainant has proven 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 UDRP and 15 of the Rules, the Panel orders that: the domain name, , be transferred to the Complainant, Babson College; the domain name, , be transferred to the Complainant, Brandeis University; the domain name, , be transferred to the Complainant, Tufts University; and the domain name,, be transferred to the Complainant, The University of Vermont.
Dennis A. Foster
Sole Panelist
Date: July 23, 2012
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