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#UCSF .com #UDRP : Beware of University owned trademarks in #domain names

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The University of California in San Francisco, is an educational institution founded in 1868 under a different name. In the late 1960s it acquired its current name, and the UCSF acronym.

In 2012, the UCSF mark was registered, citing first use in 1969. The University of California in San Francisco, operates from the domain UCSF.edu, registered in 1986.

The matching .com domain, UCSF.com, was used in the 1990’s by the Urology Consultants of South Florida, according to the Internet Archive. The domain dropped, and was re-registered in 2000, keeping that registration date for 15 years. In 2015, the domain UCSF.com dropped and was re-registered.

The Regents of the University of California filed a UDRP at the National Arbitration Forum, against the current registrant of the domain UCSF.com.

During the proceedings, the Respondent in this UDRP failed to submit a response. Kenneth L. Port, sole panelist, ordered the domain UCSF.com to be transferred to the Complainant.

Full details of this UDRP decision follow:

The Regents of the University of California v. Domain Admin / Mira Holdings Inc

Claim Number: FA1712001763642
PARTIES

Complainant is The Regents of the University of California (“Complainant”), represented by Raffi V. Zerounian of Hanson Bridgett LLP, California, USA. Respondent is Domain Admin / Mira Holdings Inc (“Respondent”), Minnesota, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ucsf.com>, registered with NamePal.com, LLC.

PANEL

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.

Kenneth L. Port as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 19, 2017; the Forum received payment on December 19, 2017.

On December 21, 2017, NamePal.com, LLC confirmed by e-mail to the Forum that the <ucsf.com> domain name is registered with NamePal.com, LLC and that Respondent is the current registrant of the name. NamePal.com, LLC has verified that Respondent is bound by the NamePal.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ucsf.com. Also on December 28, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On January 18, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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

Complainant registered the UCSF mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,099,127, registered Feb. 14, 2012). See Amend. Compl. Annex A. Respondent’s <ucsf.com> domain name is confusingly similar to Complainant’s mark as Respondent has simply appropriated a domain name consisting of only Complainant’s well-known UCSF mark followed by the “.com” generic top-level-domain (“gTLD”).

Respondent has no rights or legitimate interests in the <ucsf.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent previously offered the disputed domain name for sale, whereas now the disputed domain name fails to resolve. See Amend. Compl. Annex H.

Respondent registered and uses the <ucsf.com> domain name in bad faith. Respondent offers to sell the disputed domain name. Respondent intentionally attracts, for commercial gain, Internet users otherwise seeking Complainant to Respondent’s resolving website through the creation of a likelihood of confusion as to Complainant’s affiliation or endorsement of the disputed domain name. Respondent fails to make an active use of the disputed domain name.

B. Respondent

Respondent failed to submit a Response in this proceeding. Respondent registered the <ucsf.com> domain name on January 18, 2015.

FINDINGS

The Panel finds that the disputed domain name is confusingly similar with Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.

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.”

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.

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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint 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.”).

Identical and/or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by taking Complainant’s mark in its entirety and adding the g TLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.

As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.

Rights or Legitimate Interests

Further, the Panel finds that Respondent has no rights or legitimate interests in or to the dispute domain name. Respondent has no rights, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.

Respondent also lacks a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent has offered the disputed domain name for sale. Complainant asserts Respondent advertised the <ucsf.com> domain name for sale. See Amend. Compl. Annex H. The Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

As such, Respondent has no rights or legitimate interests in or to the disputed domain name.

Registration and Use in Bad Faith

Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant alleges Respondent offers to sell the disputed domain name. Offers to sell a disputed domain name can be indicative of bad faith per Policy ¶ 4(b)(i) where the domain name appropriates a complainant’s mark. See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Complainant provides screenshot evidence of the sales page for the <ucsf.com> domain name. See Amend. Compl. Annex H. The Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(i).

Next, Complainant argues Respondent intentionally attracts, for commercial gain, Internet users otherwise seeking Complainant to Respondent’s resolving website through the creation of a likelihood of confusion as to Complainant’s affiliation or endorsement of the disputed domain name. Use of a disputed domain name to create confusion and attract Internet users who are otherwise seeking a complainant for a respondent’s commercial gain constitutes bad faith per Policy ¶ 4(b)(iv). Complainant contends that Respondent creates confusion via the wholesale appropriation of Complainant’s UCSF mark into the disputed domain name of which Respondent then attempts to sell. See Amend. Compl. Annex H. The Panel finds that Respondent registered and used the <ucsf.com> domain name in bad faith.

Last, Complainant contends Respondent fails to make an active use of the disputed domain name. The non-exclusive nature of Policy ¶ 4(b) allows for the consideration of additional factors in an analysis for bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Inactive holding of a disputed domain name can further substantiate a finding of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant contends Respondent formerly made an active use of the disputed domain name but that now the disputed domain name fails to resolve. See Amend. Compl. Annex H. The Panel finds that Respondent registered and used the disputed domain name in bad faith.

Finally, given the totality of the circumstances and the widely known nature of Complainant’s trademark, the Panel also finds that Respondent had actual knowledge of Complainant’s trademark and its rights in and to the same.

As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.

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 <ucsf.com> domain name be transferred from Respondent to Complainant.

Kenneth L. Port, Panelist

Dated: January 23, 2018


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