DECISION

Syracuse University v. Red Ant Hosting

Claim Number:  FA0409000332354

PARTIES

Complainant is Syracuse University (“Complainant”), represented by Robert J. Sinnema, of Bond, Schoeneck & King, PLLC, One Lincoln Center, Syracuse, NY 13215.  Respondent is Red Ant Hosting (“Respondent”), P.O. Box 259, St. Joseph, MI 49085.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sufacebook.com>, registered with Go Daddy Software, Inc.

PANEL

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

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 21, 2004; the Forum received a hard copy of the Complaint on September 24, 2004.

On September 22, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <sufacebook.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 18, 2004 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@sufacebook.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 October 27, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 Rules for Uniform Domain Name Dispute Resolution Policy (the "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 Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <sufacebook.com> domain name is confusingly similar to Complainant’s SU mark.

2. Respondent does not have any rights or legitimate interests in the <sufacebook.com> domain name.

3. Respondent registered and used the <sufacebook.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Syracuse University, has used the SU mark in connection with its education-related services and commercial products since at least 1980.  Complainant’s educational services are carried out throughout the United States and many other countries.  Complainant also operates overseas education programs in five countries.  Some of Complainant’s commercial products include, but are not limited to mugs, stadium blankets, caps, T-shirts, sweaters, scarves, teddy bears, spirit flags, stickers, binders, pencils and plates.  Complainant uses of the mark in conjunction with generic terms to designate education-related services, such as Complainant’s Internet home page, which includes links to “SU Info” and “SU Fact.” 

In addition, Complainant’s college of law prepares, distributes and uses SU faces books, which are booklets with names, photos, interests and other information about students. 

Complainant owns trademark rights through registration of the SU mark with the United States Patent and Trademark Office (Reg. No. 1,888,197, issued April 11, 1995). 

Respondent registered the <sufacebook.com> domain name on August 11, 2004 and is currently using the website as an online directory and social networking community that helps people find friends and other people within Complainant’s university community.  Respondent’s website incorporates Complainant’s SU mark and color scheme. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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.

Identical and/or Confusingly Similar

Complainant established rights in the SU mark through registration with the United States Patent and Trademark Office and through continuous use since 1980.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <sufacebook.com> domain name is confusingly similar to Complainant’s SU mark because the domain name includes Complainant’s SU mark with the addition of the generic or descriptive terms “facebook.”  The mere addition of generic or descriptive terms to Complainant’s registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name  <christiesauction.com> is confusingly similar to Complainant's mark since it merely adds the word "auction" used in its generic sense); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant contends that Respondent does not have any rights or legitimate interests in the <sufacebook.com> domain name that contains Complainant’s entire mark.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that “[p]roving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for [R]espondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Furthermore, when Complainant makes a prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts).

Respondent’s incorporation of Complainant’s entire mark into Respondent’s <sufacebook.com> domain name in addition to the use of Complainant’s registered mark and color scheme on Respondent’s website to offer directory services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(iii).  See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).

Additionally, nothing in the record, including the WHOIS domain name registration information, suggests that Respondent is commonly known by the domain name, pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also 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 Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s registration and use of a domain name that incorporates Complainant’s well-known registered mark in its entirety and deviates only with the addition of the generic or descriptive terms “face book” suggests that Respondent knew of Complainant’s rights in the SU mark at the time the domain name was registered.  Thus, the Panel finds that Respondent likely chose the <sufacebook.com> domain name based on the distinctive and well-known qualities of Complainant’s mark.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it).

Complainant produces face books.  Respondent registered and used the domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website.  The Panel finds that, by creating confusion around Complainant’s mark, Respondent is attempting to disrupt the business of a competitor.  Registration of a domain name for the purpose of disrupting the business of competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

            The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <sufacebook.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  November 9, 2004

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