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Generic Top Level Domain Name (gTLD) Decisions |
Bob Jones University v. John Wang
Claim
Number: FA0410000358037
Complainant is Bob Jones University (“Complainant”), represented
by James M. Bagarazzi, of Dority & Manning,
Post Office Box 1449, Greenville, SC 29602-1449. Respondent is John Wang (“Respondent”), P.O. Box 52082,
Palo Alto, CA 94303.
The
domain name at issue is <bju.org>, registered with Bulk
Register.
The
undersigned 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
Panelist in this proceeding.
Judge
Harold Kalina (Ret.) 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, Bulk Register confirmed by e-mail to the National Arbitration
Forum that the domain name <bju.org> is registered with Bulk
Register and that Respondent is the current registrant of the name. Bulk
Register has verified that Respondent
is bound by the Bulk Register 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 2, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 22, 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.org 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
November 30, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Judge Harold Kalina (Ret.) -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.org>
domain name is identical to Complainant’s BJU mark.
2. Respondent does not have any rights or
legitimate interests in the <bju.org> domain name.
3. Respondent registered and used the <bju.org>
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.org> domain name on December 16, 1999. Respondent is using the domain name to
redirect Internet users to the <org.com> domain name, a website linking
to various providers
of commercial goods and services.
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.org>, 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 “.org.” 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 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 Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the
domain name such as “.net” or “.com” does not affect the domain
name for the
purpose of determining whether it is identical or confusingly similar).
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 is
using the <bju.org> domain name to redirect Internet users to a
website that links to various providers of commercial goods and services.
Furthermore,
the Panel infers that Respondent likely receives monetary
compensation by redirecting Internet users to Respondent’s website.
Respondent’s
use of a domain name identical to Complainant’s mark to redirect
Internet users to an unrelated website linking to various providers
of
commercial goods and services, where Respondent likely receives referral fees,
is not a use in connection with a bona fide offering
of goods or services
pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair
use of the domain name pursuant
to Policy ¶ 4(c)(iii). See Pioneer Hi-Bred
Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that
Respondent did not have rights or legitimate interests in a domain name that
used
Complainant’s mark and redirected Internet users to a website that pays domain
name registrants for referring those users to
its search engine and pop-up
advertisements); see also Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (holding
that Respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a
bona fide offering of goods
or services nor a legitimate noncommercial or fair use of the domain name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <bju.org> domain name for Respondent’s commercial
gain. Respondent’s domain name diverts Internet users to a website that links
to various providers
of commercial goods and services that completely unrelated
to Complainant’s educational services. Furthermore, the Panel infers that
Respondent likely receives monetary compensation for its practice of
redirection. Respondent’s acts of diversion, motivated by commercial
gain,
through the use of an 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.org> domain name be TRANSFERRED
from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
December 7, 2004
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