WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Public University System, Inc. v. Domain Protection Services, Inc. / Domain Vault, Domain Vault LLC
Case No. D2020-1690
1. The Parties
The Complainant is American Public University System, Inc., United States of America (“United States” or “U.S.”), represented by The Marbury Law Group, PLLC, United States.
The Respondent is Domain Protection Services, Inc., United States / Domain Vault, Domain Vault LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <americanpublicuniversity.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Registrar also indicated that the disputed domain name “is currently on litigation lock pending legal proceedings that pre-date this complaint,” and that the “litigation lock may supersede any decision from the UDRP panel.” The Center sent an email communication to the Complainant on June 30, 2020 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 amended Complaint on June 30, 2020.
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 July 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2020.
The Center appointed David H. Bernstein as the sole panelist in this matter on August 11, 2020. 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.
On August 19, 2020, the Panel directed the Center to contact the Registrar to seek further information concerning the proceedings that the Registrar mentioned in its Registrar Verification. The Center sent an email to the Registrar seeking this information, including any information the Registrar has about the parties to that proceeding, when it was initiated, where it was filed, what claims were raised, and its current status. On September 3, 2020, the Registrar responded, and reported as follows: “In 2018, Domain Vault LLC [the Respondent] filed a complaint against Donuts seeking an order to require Name.com [the Registrar] to ‘unlock’ a portfolio of domain names registered to Domain Vault but which had also been the subject of a dispute in bankruptcy between the previous registrant, Quantec/Novo Point and the Baron Group. On January 30, 2018, the United States District Court Northern District of Texas granted Donuts’ motion to compel arbitration and stayed the case pending the outcome of arbitration. The Plaintiff has yet to initiate arbitration yet the domains are still on lock due to the court order which remains in place.”
Also on August 19, 2020, the Panel issued Administrative Panel Procedural Order No. 1 (“Procedural Order”) requesting that the Complainant: (1) file a Supplemental Submission clarifying whether American University Corporation (“American University”), the owner of the asserted trademark rights, consents to the remedy that the Complainant requested – namely, transfer of the disputed domain name to the Complainant (the exclusive licensee of the trademark at issue), see generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.4.2, 1.12, and 4.13; and (2) provide any information that the Complainant had about the proceedings that the Registrar mentioned in its Registrar Verification. On August 26, 2020, the Panel received the Complainant’s Supplemental Submission in which (1) American University provided its consent to transfer of the disputed domain name to the Complainant, and (2) the Complainant indicated that it was not aware of, and had no information concerning, any other proceedings related to the disputed domain name.
4. Factual Background
The Complainant American Public University System, Inc. is a West Virginia corporation specializing in online certificate and degree-granting programs. The Complainant is the exclusive licensee of the marks AMERICAN PUBLIC UNIVERSITY and AMERICAN PUBLIC UNIVERSITY SYSTEM (collectively, the “APU Marks”), which are owned by American University. Among the federally registered trademarks that American University has exclusively licensed to the Complainant are AMERICAN PUBLIC UNIVERSITY SYSTEM (and design) (U.S. Reg. No. 4,741,532 registered on May 26, 2015 with first use claimed back to May 16, 2009, for educational services, namely, providing instruction and training at the undergraduate and graduate levels in a variety of academic subjects and disciplines via a global computer network, with a disclaimer of “Public University System”), and AMERICAN PUBLIC UNIVERSITY VOLUNTEERS (stylized/design) (U.S. Reg. Nos. 4,409,416, 4,409,417, 4,423,797, 4,689,017, 4,739,358, and 4,739,359, for a variety of different goods and services, with various registration dates as early as October 1, 2013 and a variety of claimed dates of first use as early as June 17, 2011, with a disclaimer of “Volunteers” for some of the registered goods and services). The registrations for the AMERICAN PUBLIC UNIVERSITY VOLUNTEERS (stylized/design) marks were issued under Section 2(f) of the Lanham Act, with an indication that the U.S. Patent and Trademark Office (“USPTO”) accepted that “American Public University” has acquired distinctiveness by virtue of the use of that mark since at least as early as June 2002.1 It thus appears that the Complainant has been using the AMERICAN PUBLIC UNIVERSITY name since 2002.
The disputed domain name, <americanpublicuniversity.com>, was initially registered by another party other than the Respondent on January 30, 2005. Based on the limited record submitted in this proceeding, it is unclear when the disputed domain name was acquired by the Respondent. The Complainant has provided in its Amended Complaint historical WhoIs information and archived screenshots of the websites to which the disputed domain name resolved at various dates since 2008, and inferred that the Respondent may have been the owner as early as August 2012 when the disputed domain name stopped hosting active webpages. However, the Registrar in its verification process was unable to determine when the Respondent registered the disputed domain name.
On May 29, 2020, counsel for the Complainant sent a cease-and-desist letter to Respondent via Domain Protection Services, Inc. (“DPSI”). The Complainant has not received a response.
At the time of the filing of the Complaint, and as of the date of this decision, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
Complainant
The Complainant contends that the disputed domain name, <americanpublicuniversity.com>, is identical to the AMERICAN PUBLIC UNIVERSITY trademark (in which it has rights by virtue of the exclusive license from American University) because it incorporates that trademark in its entirety, with the addition only of the generic Top-Level Domain (“gTLD”) “.com.” The Complainant also contends that the disputed domain name is confusingly similar to the AMERICAN PUBLIC UNIVERSITY SYSTEM trademark because the omission of the term “system” from the disputed domain name does not sufficiently distinguish it from the mark AMERICAN PUBLIC UNIVERSITY SYSTEM.
The Complainant states that, to the best of its knowledge, the Respondent has no rights or legitimate interests in the disputed domain name as there is no evidence of the Respondent’s use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant also contends that the Respondent has never been commonly known by the disputed domain name nor has the Complainant authorized or licensed the Respondent to use APU Marks. The Complainant asserts that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name as the domain name does not appear to be utilized in any way by Respondent.
The Complainant further contends that the Respondent is merely passively holding the disputed domain name, which constitutes bad faith. To support this contention, the Complainant points to (i) the reputation of the APU Marks, as evidenced by its exclusive license agreement and trademark registrations, (ii) the Respondent’s failure to respond despite repeated attempts to communicate, (iii) the Respondent’s use of a privacy service to conceal his or her true identity, and (iv) the fact that there is no conceivable good-faith use to which the Respondent could put the disputed domain name that would not infringe the Complainant’s APU Marks.
Respondent
The Respondent did not reply to the Complainant’s contentions.2
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that the Complainant must prove by a preponderance of the evidence in order to obtain transfer of the disputed domain name:
(i) the 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 respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Procedural Ruling
Given that the other proceedings referenced by the Registrar in its verification appear to have arisen out of the conduct of a prior owner of the disputed domain name, and given that the Respondent has not commenced arbitration despite the court’s order of 2018 compelling arbitration, the Panel has decided to proceed to decision pursuant to paragraph 18(a) of the Rules. The Panel further directs the Registrar to lift the litigation lock for purposes of transferring the disputed domain name to the Complainant unless the Respondent invokes the procedures of section 4(k) of the Policy.
B. Identical or Confusingly Similar
The Complainant has demonstrated that it has trademark rights in the APU Marks by virtue of the exclusive license granted by American University in those federally registered trademarks. As noted in the WIPO Overview, “an exclusive trademark licensee[…] is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.” WIPO Overview 3.0, section 1.4.1. The Complainant therefore satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.
The disputed domain name is identical to the Complainant’s APU Marks given that the disputed domain name incorporates the AMERICAN PUBLIC UNIVERSITY trademark in its entirety. As the WIPO Overview makes clear, “in cases where a domain name incorporates the entirety of a trademark, [...] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview 3.0, section 1.7.
The Panel therefore concludes that the Complainant has have satisfied the first element of the Policy.
C. Rights or Legitimate Interests
To make a prima facie case under the second element, the Complainant need only allege that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production then shifts to the Respondent to present evidence showing that it does have rights or legitimate interests. WIPO Overview 3.0, section 2.1. The burden of proof, however, always remains on the Complainant. Id.
The Complainant has asserted sufficient allegations to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has alleged that neither it nor American University has given the Respondent any permission to use AMERICAN PUBLIC UNIVERSITY in a domain name, and there is nothing on the website (because the disputed domain name does not resolve to an active website) that could support a finding that the Respondent is making a bona fide offering of goods or services under the disputed domain name, has been commonly known by the disputed domain name, or is making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has not responded to the Complaint or provided any submissions to the Panel. The Complainant’s prima facie showing is therefore unrebutted. Accordingly, the Complainant has satisfied the second element of the Policy.
D. Registered and Used in Bad Faith
The Respondent’s current passive holding of the disputed domain name supports a finding of bad faith. As explained in Section 3.3 of the WIPO Overview 3.0, “the non-use of a domain name […] would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good-faith use to which the domain name may be put.” Here, all four factors weigh in favor of a finding of bad faith.
First, the APU Marks have been found by the USPTO to have acquired distinctiveness. Moreover, the Complainant has submitted evidence of its reputation, developed over more than 18 years of use of the APU Marks. The Complainant has certified that it operates an online university under the name American Public University; that the top Internet search results for “American Public University” return website listings affiliated with the Complaint including the Wikipedia page profiling American Public University; that the American Public University System has an estimated active enrollment of over 80,000 students from all 50 U.S. states and more than 15 countries worldwide; that the Complainant is a member of various national educational organizations and professional associations such as the Council of College and Military Educators (“CCME”) and National Association of Institutions for Military Education Services (“NAIMES”), where it uses the APU marks; and that the Complainant has been recognized, on multiple occasions, on the U.S. News & World Report’s list of Best Online Bachelor’s Programs. This evidence, which is unrebutted, demonstrates that the APU Marks are distinctive and have developed a reputation in the educational field.
Second, the Respondent has failed to submit a Response or to provide any evidence of actual or contemplated good-faith use. If the Respondent had some good-faith basis for registering and using the disputed domain name, it was the Respondent’s burden to bring that information to the Panel’s attention once the Complainant made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. Even without a Response, the Panel could still assess whether the Respondent appears to have rights or legitimate interests based on other evidence – such as the Respondent’s name or the contents of the Respondent’s website – but here, there is no other evidence available to the Panel that could support such a finding as the website is inactive.
Third, the Respondent concealed its identity by registering the disputed domain name through a privacy service. Although there can be some legitimate reasons to use a privacy service, here, the use of a privacy service has frustrated the Complainant’s ability to investigate the Respondent’s possible legitimate intentions, interfered with the Complainant’s ability to try to reach out to the Respondent to resolve this dispute short of filing a Complaint, and increased the time and cost of this proceeding because the Complainant had to file an amendment to their Complaint once the Respondent’s true identity was revealed by the Registrar.
Fourth, although one might imagine some descriptive fair use to which the Respondent could have put the disputed domain name (such as to discuss the public university system in the United States), given the Complainant’s trademark rights, it is implausible that the Respondent could successfully use the disputed domain name in a way that would not cause confusion with the Complainant’s trademark. Moreover, even if some descriptive fair use may have been possible, it is notable that the Respondent has not effectuated any such use – or any use at all – in the many years in which it has owned the disputed domain name. The exact period of time in which the Respondent has owned the disputed domain name is unclear, but that is a problem created by the Respondent, who registered the disputed domain name using a privacy service and has not participated in this proceeding. The Complainant’s evidence establishes that the Respondent (and perhaps its predecessors in interest) has not used the disputed domain name for any active website since August 2012, which represents more than eight years of non-use.
Because all four of the passive holding factors support a finding of bad faith use and registration, the Panel founds that the Complainant has satisfied its burden of proving, on the basis of the record before the Panel, that the Respondent has registered and used the disputed domain name in bad faith.
The Complainant has also suggested that bad faith may be found in light of the history of this domain name being abused by previous owners, including the purported use of pay-per-click (“PPC”) advertising links. In the absence of any evidence that the Respondent is linked to, or affiliated with, or acting in concert with, the prior owner, the actions of previous owners are not relevant to the assessment of whether this Respondent registered and used the disputed domain name in bad faith.
7. Decision
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 <americanpublicuniversity.com> be transferred to the Complainant.
David H. Bernstein
Sole Panelist
Date: September 4, 2020
1 Some of this detail comes from the USPTO file wrappers for the cited registrations. It is well accepted that “a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include . . . accessing trademark registration databases.” WIPO Decision Overview 3.0, section 4.8.
2 Given the absence of a Response, the Panel has carefully reviewed the record to ensure that the Center discharged its obligations to give the Respondent fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415. In an attempt to provide notice to the Respondent, the Center sent notification of the Complaint to the Respondent via email, fax and (DHL) courier. The Center’s records reflect that, although some of the email notices bounced back, the fax notice was successfully transmitted and the package sent via DHL courier was successfully delivered. In light of the successful transmission of the Written Notice of Complaint via fax and courier, it appears likely that the Respondent received actual notice of the Complaint. Regardless, even if the Respondent did not receive actual notice, the Panel finds that the Center has discharged its obligation to provide fair notice to the Respondent under paragraph 2(a) of the Rules. Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.