Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Institute for the International Education of Students, Chicago, IL, USA ("Complainant") represented by Richard Assmus, Mayer, Brown & Platt. The Respondent is International Education Services, Chicago, IL, USA ("Respondent").

The domain name at issue is "iesabroad.com" registered with Network Solutions.

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 20, 2000; The Forum received a hard copy of the Complaint on October 20, 2000.

On 10/23/00, Network Solutions confirmed by e-mail to the Forum that the domain name "iesabroad.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 24, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 13, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@iesabroad.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 28, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant alleges the following:

1. The domain name "iesabroad.com" is confusingly similar to trademark "IES";

B. Respondent

No submission from Respondent has been received by the Panel. See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding that based on Respondent’s failure to respond, the Panel draws two inferences: 1) that Respondent does not deny the facts asserted by Complainant, and 2) Respondent does not deny conclusions which the Complainant asserts can be drawn from the facts).

Complainant is the Institute for the International Education of Students, a 501(c)(3) corporation. Structured as an academic consortium, Complainant has 124 prestigious U.S. colleges and universities as members that send their students on IES programs. Complainant has operated since 1950 study abroad programs which have been responsible for coordinating the foreign study of over 40,000 U.S. students in countries such as Argentina, Germany, and Japan. Complainant now operates 23 study abroad programs in 11 countries, and in 1999 over 1900 students used Complainant’s services.

Complainant has been using the mark "IES" in connection with its study abroad programs since 1950, over five decades of continuous use. In addition, Complainant has filed for Federal registration on the IES mark for use in connection with its study abroad programs. Complainant anticipates that this registration will issue in due course.

Respondent is "International Education Services," which is not listed in Chicago-area directory assistance as of October 19, 2000, is not a registered business in the State of Illinois as of October 19, 2000, and which is apparently "operated" out of a residential address in northwest Chicago. Complainant believes that Respondent is the alter ego of CEA International and its webmaster Chris Schiffhauer, both of whom were on notice of Complainant’s claim to the domain name "iesabroad.com". CEA International is Complainant’s competitor in the study abroad field.

The disputed domain name "iesabroad.com" was first registered by Kaye Buttitta, an employee of CEA, at the same address as the Tempe, Arizona headquarters of CEA International ("CEA") on August 4, 1999. The administrative and billing contact was listed as Brian Boubek, Chief Executive Officer of CEA.

Soon after that registration, Complainant was offered the domain name at an exorbitant premium over its cost. Over the course of the next nine months, Complainant was approached by a number of representatives of CEA International, including Mr. Schiffhauer, regarding the sale of the domain name, all quoting prices in excess of $10,000. Throughout this period, the "iesabroad.com" domain name either acted as a "pass-through" to the CEA website at "travelabroad.com" or featured an "under construction" page offering the domain name for sale.

In July 2000, attorneys for Complainant sent CEA International a cease and desist letter demanding the transfer of the domain name <iesabroad.com>. On July 24, 2000, the registration with Network Solutions was transferred to Respondent, with the contact individual being Chris Schiffhauer, the webmaster for CEA International.

In an apparent attempt to veil the domain name in an air of legitimacy, the website now contains a "shell" site purporting to be the website of "International Education Services." There is no public record of this entity. Furthermore, none of the links on the website are operative, and the only listed e-mail address is linked to Chris Schiffhauer’s web design business, "webdez.com." Through counsel, Complainant attempted to contact the "new" owner, Respondent, and the individual Complainant was told "operated" the business, Jori Schaill. Complainant has not received any response to these inquiries.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The domain name "iesabroad.com" incorporates Complainant’s entire IES mark, and in addition, is a small variation on Complainant’s website, "iesabroad.org." The Panel concludes that the domain name in question is confusingly similar to the Complainant’s mark based on Policy ¶ 4.a.(i). See Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s mark AOL).

Complainant has rights in the IES mark. Complainant has used the IES mark in connection with its study abroad programs over five decades. Such long-standing use is sufficient to confer common law trademark rights in IES. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that Complainant have rights in a registered trademark and that it is sufficient to show common law rights); Bibbero Systems, Inc. v. Tseu & Assoc., FA 94416 (finding common law rights in the mark BIBBERO as the Complainant, Bibbero Systems, Inc. had developed brand name recognition with this term by which the Complainant is commonly known). Further, IES trademark right was established due to the fact that Complainant has filed for Federal registration on the IES mark for use in connection with its study abroad programs. See SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, D2000 - 0131 (WIPO April 13, 2000) (finding that the Rules do not require that the Complainant's trade mark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

On the other hand, the domain name was used only by CEA to host an offer for sale of the domain name. Respondent, who took control of the domain name after the initiation of this dispute, uses the domain name to host an inoperative "shell" site. These uses are not legitimate uses in connection with a bona fide offering of goods or services under Policy ¶ 4.c.(i) or legitimate noncommercial or fair use under Policy ¶ 4.c.(iii). Moreover, Respondent has not been commonly known by the domain name under Policy ¶ 4.c.(ii).

Accordingly, the Panel concludes that Respondent has no rights or legitimate interests with respect to the domain name based on Policy ¶ 4.a.(ii). See Woolworths plc. v. David Anderson, D2000-1113 (Oct. 10, 2000) (finding that the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests); Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1)Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

The domain name was registered in bad faith due to the fact that the domain name was offered for sale to the public and specific offers were made to Complainant by its competitor CEA for the price of more than $10,000, which were in excess of documented out-of-pocket registration cost. Policy ¶ 4.b.(i). See Vartec Telecom, Inc. v. Jim Olenbush, D2000-1092 (WIPO Sept. 28, 2000) (finding bad faith registration where the Respondent registered the domain in order to sell it "for far more than he paid for it" by sending a general email to the Complainant offering the domain name for sale).

"iesabroad.com" incorporated the trademark of its competitor IES. Such disruption is indicative of bad faith. Policy ¶ 4.b.(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business).

Moreover, the fact that CEA used the domain name "iesabroad.com" as a "pass-through" to its own site "travelabroad.com" to attract Internet users further indicates its bad faith under Policy 4(b)(iv). See AltaVista Company v. Andrew Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4.b.(iv) where the Respondent linked the domain name to a website that offers a number of web services).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "iesabroad.com" be transferred from the Respondent to the Complainant.