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Generic Top Level Domain Name (gTLD) Decisions |
Bob Jones University v. Stefan Stukenberg
d/b/a Stukenberg Telecom
Claim
Number: FA0410000358041
Complainant is Bob Jones University (“Complainant”), represented
by James M. Bagarazzi, of Dority & Manning,
Post Office Box 1449, Greenville, SC 29602-1449. Respondent is Stefan
Stukenberg d/b/a Stukenberg Telecom (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bju.net>, registered with Tucows Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
29, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 1, 2004.
On
November 1, 2004, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <bju.net> is with Tucows Inc. and that
Respondent is the current registrant of the name. Tucows Inc. has verified that
Respondent is bound
by the Tucows 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
November 5, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 29, 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@<bju.net> by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 7, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed John J.
Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bju.net>
domain name is identical to Complainant’s BJU mark.
2. Respondent does not have any rights or
legitimate interests in the <bju.net> domain name.
3. Respondent registered and used the <bju.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Bob
Jones University, was established in 1927 as an institution of higher learning.
Complainant
established through extrinsic proof in this proceeding that it owns a trademark
for the BJU mark, registered with the
United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,146,427, issued March 24, 1998) for goods and services
relating to
education. Complainant’s first use of the BJU mark in commerce was
in 1967.
Respondent
registered the <bju.net> domain name on May 4, 1998. Respondent is using the domain name to
direct Internet users to a commercial health and wellness website that is
completely unrelated
to Complainant’s mark.
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.
Complainant
established that it has rights to and legitimate interests in the BJU mark
through registration with the USPTO. 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).
The domain name
that Respondent registered, <bju.net>, is identical to
Complainant’s BJU mark because the domain name incorporates Complainant’s mark
in its entirety and only deviates
with the addition of the generic top-level
domain “.net.” The mere addition of a generic top-level domain does not negate
the confusing
similarity between Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Little Six, Inc. v. Domain For Sale,
FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net>
is plainly identical to Complainant’s MYSTIC LAKE
trademark and service mark); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that
the domain name <nike.net> is identical to Complainant’s famous NIKE
mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in 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 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).
Respondent uses the <bju.net>
domain name to redirect Internet users to an
unrelated commercial website. While
this appears to be a legitimate business, nothing at the disputed domain name
references the BJU mark. Using
Complainant’s mark and the goodwill surrounding that mark in a domain name as a
means of attracting Internet users to an unrelated
business is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i). Similarly, such
diversionary use of Complainant’s
mark for a commercially oriented website is
not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii). See Prudential
Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no
rights or legitimate interests in the disputed domain name where Respondent
was
using Complainant’s mark to redirect Internet users to a website offering
credit card services unrelated to those services legitimately
offered under
Complainant’s mark); see also U.S. Franchise Sys., Inc. v. Howell, FA
152457 (Nat. Arb. Forum May 6, 2003) (holding
that Respondent’s use of Complainant’s mark and the goodwill surrounding that
mark as a means of attracting Internet users
to an unrelated business was not a
bona fide offering of goods or services).
Respondent
registered the <bju.net> domain name for Respondent’s commercial
gain. Respondent’s domain name diverts Internet users to Respondent’s
commercial website that
is completely unrelated to Complainant’s educational
services. Respondent’s acts of diversion, motivated by commercial gain, through
the use of a identical domain name is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent
registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)
because Respondent was using the confusingly similar domain name to attract
Internet users to its commercial website);
see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site
to its own website for commercial gain); see also
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when
the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent
is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bju.net> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: December 20, 2004
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