The Complainant is CollegeNET, Inc.of Portland, Oregon, United States of America (“USA”), represented by Stoel Rives, LLP, USA.
The Respondent is Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd of Chitre, Panama.
The disputed domain name <colledgenet.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed in with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2018. On October 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the first amended Complaint and the second amended Complaint on October 18, 2018.
The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2018.
The Center appointed Marilena Comanescu as the sole panelist in this matter on November 13, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of the proceeding is English.
The Complainant CollegeNET, Inc. provides college information and scholarship services aimed towards college-bound students, as well as online application hosting and processing for hundreds of colleges and universities. The Complainant also operates a social network at its website at “www.collegenet.com” through which students create topics, write or video-cam about them, and vote to determine who will win scholarships.
The Complainant owns various trademark registrations for COLLEGENET, such as:
- the USA trademark registration no. 2045384 for the word COLLEGENET filed on April 5, 1995 and registered on March 18, 1997 for services in class 42;
- the USA trademark registration no. 3062325 for the word COLLEGENET filed on January 7, 2004 and registered on February 28, 2006 for services in class 41; and
- the European Union trademark registration no. 002338804 for the word COLLEGENET filed on August 13, 2001 and registered on September 26, 2013 for goods and services in classes 9 and 42.
The disputed domain name was registered on February 14, 2018 and at the time of filing the Complaint, it resolved to a webpage redirecting to fraudulent and misleading websites, scamming the Internet users to install fraudulent software. Furthermore, the disputed domain name was offered for public sale both on the website corresponding to the disputed domain name and on the Registrar’s auctions website.
The Complainant sent a cease-and-desist letter to the Respondent on June 27, 2018 asking it to cease from using the disputed domain name but no response was received.
The Complainant contends that the disputed domain name is confusingly similar to its trademark COLLEGENET, the Respondent has no rights or legitimate interests in the disputed domain name <colledgenet.com>, and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
The Complainant holds rights in the COLLEGENET trademark.
The disputed domain name <colledgenet.com> reproduces the Complainant’s trademark COLLEGENET in its entirety with a slight alteration, an additional letter inserted in the content of the mark.
The majority of the UDRP panels have considered that a domain name which consists of a common, obvious or intentional misspelling of a trademark is confusingly similar to the relevant mark for the purposes of the first element. See section 1.9 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.net”, “.info”, “.org”) is a technical requirement that may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name <colledgenet.com> is confusingly similar to the Complainant’s trademark COLLEGENET, pursuant to the Policy, paragraph 4(a)(i).
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting the Respondent has ever been commonly known by the disputed domain name.
The Respondent is using the disputed domain name to redirect Internet users to fraudulent and misleading websites. This activity does not constitute a bona fide offering of goods or services or a legitimate noncommercial use.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
The Complainant holds trademark rights for COLLEGENET since at least 1995. The disputed domain name was created in February 2018.
According to the records in the file, the Respondent has used the disputed domain name to redirect Internet users to fraudulent and misleading websites, scamming such users to install fraudulent software.
Also, the disputed domain name was registered under a privacy service and was offered for public sale.
The use of privacy services and the business of buying and selling domain names can be legitimate activities particularly when they involve dictionary word domain names, but it does not necessarily confer rights to use for that purpose a domain name identical or confusingly similar to another party’s trademark.
Furthermore, whether the respondent is operating a commercial and trademark-abusive website can impact panel’s assessment. See section 3.6 of theWIPO Overview 3.0. According to the records before it, this Panel concludes that the privacy service was used merely to avoid being notified of the UDRP dispute and/or to avoid having a record as a cybersquatter in the relevant public archives.
The Respondent remained silent to both the present proceeding and the Complainant’s cease-and-desist letter asking the cancelation of the disputed domain name.
In the present case, the Respondent has registered the disputed domain name incorporating the Complainant’s mark and uses it to redirect Internet users to third party websites and to install fraudulent software, uses a privacy shield in the WhoIs and has not participated in the present proceeding to put forward arguments in its support, therefore the Panel concludes that the provision of paragraph 4(b)(iv) of the Policy which provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” applies in the present case and is evidence of registration and use in bad faith. Internet users searching for the Complainant would acces the website corresponding to the disputed domain name considering it belongs or is somehow associated with or endorsed by the Complainant.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <colledgenet.com> be transferred to the Complainant.
Date: November 16, 2018
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