The Complainant is Clemson University, United States of America, represented by Nelson Mullins Riley & Scarborough, L.L.P., United States of America.
The Respondent is Kanchana Wattana/Domain Manager, Samir net Domain names, of addresses in Thailand and India.
The disputed domain name, <clemsonuniversity.org> (the “Domain Name”), is registered with SiteName Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2019. On August 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 25, 2019, the Registrar transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 27, 2019.
The Center verified that the Complaint together with the amended Complaint 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 August 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2019. Several emails were received from Kanchana Wattana. However, no formal Response was filed with the Center.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 3, 2019. 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 Complainant has produced evidence to demonstrate that when the Complainant conducted a WhoIs search in respect of the Domain Name prior to filing the Complaint on August 8, 2019, the registrant of the Domain Name was listed as Kanchana Wattana of an organisation named “Samirnet – domain Names For Sale” of an address in Thailand.
On August 25, 2019, in response to the Center’s Registrar Verification request dated August 9, 2019, the Registrar cited the registrant as being “Domain Manager, Samir net Domain names” of an address in India. It was on the back of that information that the Center invited the Complainant to amend the Complaint, leading the Complainant to submit an amendment to the Complaint omitting the name of Kanchana Wattana as the Respondent.
On August 29, 2019, Kanchana Wattana sent an email to the Center stating: “hi, we have no interest in this domain and are happy to transfer, no need for a wipo dispute. Yours, Kanchana Wattana.”
In light of that email the Center enquired of the Complainant if it wished to have the proceeding suspended to allow time for settlement discussions. The Complainant replied on August 29, 2019 in the following terms:
“Thank you for your email. At this time we elect to move forward with the proceeding. Based on prior correspondence with Kanchana Wattana (see Annex 11) dated July 6, 2016 [sic]¨ Kanchana Wattana stated that the subject domain name ‘expired a few months ago and I have no connection with it…’. Furthermore, according to the registrar’s confirmation to the Center Kanchana Wattana is no longer listed as the registrant. Accordingly, based on the conflicting statements from Kanchana Wattana and the apparent games that are being played with respect to who the true owner of the subject domain name is we are unable to suspend the proceeding for settlement purposes because we cannot trust that Kanchana Wattana has any authority or ability to transfer the domain name as part of any settlement agreement. As such, Complainant elects to have the UDRP proceeding move forward at this time.”
On August 30, 2019 Kattana Wattana emailed the Complainant’s representative and the Center stating: “looks like you are tardy, a simple whois search reveals the domain has already been registered by a new party. please follow up your […]claim with the new domain registrant as follows below”. The email then continues with the text of a WhoIs search result purporting to show that the Registrar’s database has been changed to reflect the ‘fact’ that the Domain Name has been re-registered in the name of a new registrant, but the email does not identify the name of the new registrant.
Further emails followed from Kanchana Wattana the last being one sent to the Center on September 27, 2019 reading:
“to all concerned, the lawyers are apparently unable to do a simple whois search, lol.... the domain has expired at the end of its registration. no games, they are inexperienced domainers I would offer. please pursue this case with the current registrant. we have no interest in the domain, have made zero income, no use of the trademark in question. please simply check when the domain was registered, and evaluate that a whole year had passed, the domain was dropped, not re-registered, duh!!!!!! now a new party has registered the domain when it reverted to public availability, what is so hard to understand here. please contact the new registrant with your claim... duhhhhhhh! thankkkkkk yytyyoooooouuuuuu byyyyeee.”
The Panel has conducted an InterNIC WhoIs search at “www.internic.net” in respect of the Domain Name. The results are identical to those contained in Kanchana Wattana’s email of August 30, 2019. However, there is nothing before the Panel to indicate that ownership of the Domain Name has changed since August 25, 2019 when the Registrar submitted its verification response to the Center and confirmed to the Center that the Domain Name registration had been locked. In answer to the Registrar verification request question 9 the Registrar indicated that the Domain Name had been in the hands of the same registrant since creation of the Domain Name on May 30, 2019.
According to the WhoIs search conducted by the Complainant prior to the filing of the Complaint, the Domain Name was registered by Kanchana Wattana of Samirnet – domain Names For Sale. At a date following the filing of the Complaint on August 8, 2019 and the sending to the Registrar of the request for Registrar Verification, but prior to the Registrar’s response to that request the WhoIs record was amended to omit the name of Kanchana Wattana. Nonetheless, given (a) the Registrar’s answer to question 9 (see above) and (b) the email on August 29, 2019 from Kanchana Wattana indicating that he was then in a position to transfer the Domain Name to the Complainant, the Panel finds on the balance of probabilities that Kanchana Wattana is effectively the current registrant in control of the Domain Name. For the purposes of this decision the Panel treats both Kanchana Wattana and Domain Manager, Samir net Domain names as the Respondent.
The Complainant is a University based in South Carolina, which was founded in 1889. It operates a website connected to the domain name, <clemson.edu>, which was registered on February 19, 1987. It is the registered proprietor of several trade mark registrations covering the name “Clemson” including United States Trade Mark Registration No. 2,316,195 CLEMSON UNIVERSITY registered on February 8, 2000 (application filed November 25, 1998) for goods in classes 29 and 30.
The Domain Name was registered on May 30, 2019 and is connected to a Sedo.com parking page featuring sponsored links to a variety of websites, many of which bear no relation to the Complainant. The website indicates that the Domain Name is available for purchase.
On July 1, 2019, the Complainant emailed the Respondent, drawing the Respondent’s attention to the Complainant’s trade mark rights and seeking inter alia transfer of the Domain Name. The Respondent replied on July 6, 2019 in the following terms: “That domain expired a few months ago and I have no connection with it, nor any page. The landing page you see is not mine, and likely was put up by the new registrar. To find the new registrant, please do a WhoIs search online. Please confirm” and attached a link to a NetworkSolutions WhoIs site, signing off as Kanchana Wattana.
With the amended Complaint the Complainant produced evidence (Annex 13 of the Amended Complaint) to demonstrate that Kanchana Wattana is the proprietor of at least 25 domain names, the majority of which are the names of educational establishments. These domain names (e.g., names such as <tallahasseecommunitycollege.net>, <floridametropolitanuniversity.com>, barryuniversity.net> and <kennedykingcollege.net>) appear to be connected to revenue earning pay-per-click webpages.
The Complainant contends that the Domain Name is identical or confusingly similar to its CLEMSON trade marks; that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent has not responded to the Complainant’s contentions but has submitted several emails the last one being dated October 4, 2019. The communications that the Center and the Complainant have received from the Respondent are to the effect that the Respondent no longer owns the Domain Name and has no connection with the webpage to which it is connected. The Respondent has not sought to explain the Registrar’s response to question 9 of the Center’s request for Registrar Verification.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The Domain Name comprises the Complainant’s CLEMSON UNIVERSITY trade mark and the “.org” generic Top Level Domain identifier. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Domain Name is uniquely apt to describe the Complainant. The use to which it is being put, namely to connect to a pay-per-click parking page featuring sponsored advertising links, is a commercial use, but cannot by any stretch of the imagination be said to be a bona fide use, connected as it is to sponsored links many of which appear to have no connection with the Complainant. The Domain Name bears no relation to the name of the Respondent and the Complainant has given no permission for the Respondent to use its name and trade mark.
The Complainant has made out a prima facie case, in other words a case calling for an answer from the Respondent. The Respondent has not sought to provide any answer, save to distance itself from the Domain Name and the use to which it is being put. If the Respondent had come forward with anything to support its contention and, in particular, to explain the Registrar’s response to the Center’s Registrar Verification request (see section 4 above), the Respondent might have given the Panel pause for thought. However, in the absence of any detailed explanation, the Panel cannot conceive of any basis upon which the Respondent can be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
On the evidence before the Panel and absent any coherent response from the Respondent, the Panel finds on the balance of probabilities that the Domain Name was selected precisely because it is the name of the Complainant and with a view to attracting unsuspecting visitors to the Respondent’s website, deceived into believing that they were visiting a website of or associated with the Complainant. The aim will have been to generate commercial gain from any pay-per-click revenue derived from the advertising links featured on the Respondent’s parking page. This appears to be the Respondent’s business model. The Panel has visited the websites connected to the other domain names of the Respondent referred to in section 5 above and notes that they are all connected to revenue earning parking pages.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <clemsonuniversity.org>, be transferred to the Complainant.
Date: October 11, 2019
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