WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Universidad Autónoma De Nuevo León (UANL) v. Navigation Catalyst Systems, Inc
Case No. D2010-2041
1. The Parties
The Complainant is Universidad Autónoma De Nuevo León (UANL) of Mexico, represented by Juan Angel Garza Vite of United States of America.
The Respondent is Navigation Catalyst Systems, Inc of United States of America.
2. The Domain Name and Registrar
The disputed domain name, <facdyc.com> (the “Domain Name”), is registered with Basic Fusion, Inc. (the “Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2010. On November 25, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 29, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 30, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 1, 2010.
The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 7, 2011. 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.
Having read the papers in the case the Panel sought (by way of a procedural order dated January 11, 2011) confirmation of a date. The Complainant provided the requisite information on January 13, 2011. The Respondent was given an opportunity to file a submission in response, but elected not to do so.
4. Factual Background
The Complainant is a seat of learning in the State of Nuevo Leon in Mexico. One of its ‘Schools’ is the School of Law and Criminology or, as it is known in Spanish, Facultad de Derecho y Criminologia, a name which it first adopted on September 12, 2001. Unsurprisingly, the School of Law and Criminology quickly became known by the acronym “FACDYC”.
The Complainant is the registered proprietor of Mexican trade mark registration number 1169993 dated June 29, 2010 FACDYC in class 41 for educational, training and other services.
The Domain Name was registered on September 2, 2004 and is connected to a parking page, which features advertising links. On October 21, 2010 one of the prominent links was headed “Criminology School”. The same heading featured on the site when the Panel visited the site on January 15, 2011 and this in turn led to a number of links to criminology colleges and courses.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to the Complainant’s registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s registered trade mark FACDYC (details are to be found in section 4) and the generic “.com” domain suffix. It being permissible for the Panel to ignore the generic domain suffix for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, the Panel finds that the Domain Name is identical to the Complainant’s registered trade mark.
C. Rights or Legitimate Interests
The Respondent recites the examples of what shall constitute evidence of rights or legitimate interests for this purpose as set out in paragraph 4(c) of the Policy and contends that none of them is applicable.
The Complainant contends that the Domain Name is an acronym which identifies the Complainant’s School of Law and Criminology, that so far as it is aware there is no other such school for which “FACDYC” is the acronym, that the content of the Respondent’s website with its prominent reference to “School of Criminology” makes it plain that the Respondent is fully aware of the significance of the acronym and that the Respondent’s use of the Domain Name is a commercial use designed to lure in visitors to the site looking for the Complainant and then offering the visitors pay-per-click links to other law schools and the like, the Respondent deriving revenue by way of the pay-per-click links.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly 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.
D. Registered and Used in Bad Faith
By the same reasoning, the Panel concludes that it was the Respondent’s objective from the outset to target the Complainant’s acronym and to exploit it for its own commercial gain.
While it is true that the Complainant only acquired its registered trade mark very recently and long after the Domain Name was registered (see section 4 above), the Panel is satisfied from the evidence filed by the Complainant that the Complainant’s School of Law and Criminology, which had previously existed under another similar name for many decades, will have quickly picked up a reputation and goodwill under the acronym, “FACDYC”, following the adoption of its new name in September 2001.
The Panel believes it to be very probable that by September 2, 2004 (i.e. 3 years after adoption of the new name) the Complainant will have been able to establish the existence of unregistered trade mark rights in respect of the acronym. Clearly, the Respondent, by adopting the acronym and by using it to provide links to law schools, is in a very weak position to argue the contrary and, indeed, has not sought to do so.
The Panel finds that the Domain Name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <facdyc.com>, be transferred to the Complainant.
Dated: January 17, 2011