DECISION

American University v. FIG Vietnam

Claim Number:  FA0409000323760

PARTIES

Complainant is American University (“Complainant”), represented by Sherri N. Blount, of Morrison & Foerster 2000 Pennsylvania Ave., NW, Suite 5500, Washington, DC 20006.  Respondent is FIG Vietnam (“Respondent”), Thuan Kieu Plaza Unit #1604, 190 Hong Kong Bang Str., District 5 HCMC, Vietnam.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americanuniversity.com>, registered with Fabulous.com Pty Ltd.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 3, 2004; the Forum received a hard copy of the Complaint on September 7, 2004.

On September 7, 2004, Fabulous.com Pty Ltd. confirmed by e-mail to the Forum that the domain name <americanuniversity.com> is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 13, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 4, 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@americanuniversity.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 26, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <americanuniversity.com> domain name is identical to Complainant’s AMERICAN UNIVERSITY mark.

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

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

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

FINDINGS

Complainant, American University, is a U.S. tertiary institution, offering educational services since its charter by Congress in 1893.  Complainant registered the AMERICAN UNIVERSITY mark in various countries in the European Community on July 18, 2002 (European Community reg. nos. 02260099, 000710951, and 002005635; New Zealand reg. no. 212751; Spain reg. no. 1788384M; and United Kingdom reg. nos. 1451537 and 2272273).  Complainant also has a pending registration in the United States, filed on January 21, 2000 (app. no. 75901070).  In addition, Complainant has submitted evidence of various adversarial proceedings regarding Complainant’s policing of its mark.  Complainant has also included articles and newspaper clippings to demonstrate use of its mark in the public.

Respondent registered the <americanuniversity.com> domain name on August 11, 1998.  The domain name leads to a portal site, which offers the resultant search of “American University” including links to businesses and educational services.

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

For the sake of initiating a claim under the Policy, Complainant holds the appropriate rights in the AMERICAN UNIVERSITY mark.  The Panel finds that Complainant has common law rights in the AMERICAN UNIVERSITY through its use in commerce since 1893.  In addition, the Panel accepts Complainant’s articles and newspaper clipping as evidence of secondary meaning.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

Respondent’s <americanuniversity.com> domain name is identical to Complainant’s mark.  The only difference is the addition of the generic top-level domain, which does not significantly distinguish the domain name from the mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

Complainant has established Policy ¶ 4(a)(i)

Rights or Legitimate Interests

Respondent has not filed a Response in this matter.  Therefore, the Panel may accept all of Complainant’s reasonable assertions as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)

Respondent is wholly appropriating Complainant’s mark to create a portal webpage that links to competing and related businesses.  The Panel accepts Complainant’s allegation that Respondent receives revenues for each referral from its website.  Appropriating another’s mark to list the mark holder’s competitors and generate revenues is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website).

Nothing in the record, including Respondent’s WHOIS registration information, indicates that Respondent is commonly known by the <americanuniversity.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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").

Complainant has established Policy ¶ 4(a)(ii)

Registration and Use in Bad Faith

Respondent is appropriating Complainant’s mark in the <americanuniversity.com> domain name to generate revenues by offering links to Complainant’s competitiors.  This practice is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where Respondent, a company financially linked to Complainant’s main competitor, registered and used the domain name in question to disrupt Complainant’s business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

By appropriating Complainant’s mark in the <americanuniversity.com> domain name, Respondent has created confusion as to the source or origin of the website information at the corresponding domain name.  The Panel finds that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (“Since the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.”); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Complainant has established Policy ¶ 4(a)(iii)

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 <americanuniversity.com> domain name be TRANSFERRED from Respondent to Complainant.

_____________________________________

James A. Carmody, Esq., Panelist

Dated:  November 4, 2004

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