WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
President and Fellows of Harvard College v. Rachel McGhin, Website
Case No. D2016-1220
1. The Parties
Complainant is President and Fellows of Harvard College of Cambridge, Massachusetts, United States of America (“United States”), represented by Perkins Coie, LLP, United States.
Respondent is Rachel McGhin, Website of Huntington, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <harvard-review.com> is registered with Launchpad.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2016. On June 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 22, 2016.
On July 22, 2016, the Center received an email from Respondent in response to the Notification of Default, stating that Respondent signed for the Complaint on July 13, 2016, and was in the process of selecting a representative. Respondent also asked the Center not to proceed with the arbitration absent a response. On July 22, 2016, the Center acknowledged receipt of Respondent’s email communication, and noted that the Complaint, Notification of the Commencement of Administrative Proceeding, and Written Notice were sent on July 1, 2016 to all contact details made known to the Center by Complainant and the Registrar, pursuant to the Center’s obligations under the Rules, paragraph 2(a). The Center further noted that as the July 21, 2016 due date for the filing of the Response had passed, the Center would commence the process to appoint the Administrative Panel, with the Panel having sole discretion to consider any late Response.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 27, 2016. 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.
4. Factual Background
Complainant is the owner of registration for the word service mark HARVARD on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 1,608,533, registration dated July 31, 1990, in international class (IC) 41, covering educational services, as further specified. Complainant is the owner of registrations on the Principal Register of the USPTO of various HARVARD-formative word trademarks and service marks, including but not limited to, HARVARD UNIVERSITY, HARVARD UNIVERSITY PRESS, HARVARD BUSINESS REVIEW and HARVARD LAW REVIEW (hereinafter the “HARVARD-formative” marks). The date of registration for each of the HARVARD-formative marks predates May 23, 2013, the date of registration by Respondent of the disputed domain name. Complainant has applied for registration as a word trademark of the term HARVARD REVIEW on the Principal Register, application dated March 11, 2016, serial number 86937451, in IC 16, covering “printed periodicals in the fields of fiction, poetry, photography, art, and essays”, asserting date of first use and first use in commerce of 1992.
Complainant is an educational institution based in the United States asserting an establishment date of 1636. Complainant provides educational services in classroom settings and through the promotion and sale of various additional products and services, including printed and electronic publications, test preparation services and academic tutoring, and related products and services. Complainant has spent substantial sums advertising and promoting its products and services in the United States and foreign countries. Complainant has registered a number of HARVARD and HARVARD-formative domain names, including <harvard.com>, <harvardbusinessschool.com>, <harvardlawschool.com> and <harvardmedicalschool.com>. Complainant maintains a substantial online presence associated with various HARVARD and HARVARD-formative domain names. As a consequence of its extensive history of providing educational services, and substantial expenditure in advertising and promotion, the HARVARD mark is well-known in the United States.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the date of creation of the record of registration for the disputed domain name is May 23, 2013, and the creation registration was in the name of Respondent.
The disputed domain name directs Internet users to a website homepage captioned “The Harvard Review”, and sub-captioned “SAT and ACT Prep, AP and Subject Tests, MCAT-LSAT-GMAT-GRE”. The menu labels refer to “HOME, TUITION, LOCATIONS, LETTERS OF RECOMMENDATION, PERFECT SCORES, NEWSDAY ARTICLE”. The homepage includes the following text:
Harvard Review Test Prep was founded by Dr. M. Fikar, the most successful Tutor/Coach of Standardized Tests in all of history. Among his serious students, virtually 100% score at or above 2300 on the SAT or 35 on the ACT, and gain admission to one of the ‘Big Four’: Harvard-Princeton-Yale-Stanford. His average student increases his/her score by 511 points (ACT 9 points), and each year several improve by 600-700 points; his all-time record is an increase of 610 points on the former 1600 point scale, equivalent to 920 points on the current 2400 point scale. He himself has scored perfectly on the SAT more than 100 times, a record that no one can come close to challenging. He has also scored perfectly on the ACT, LSAT, GMAT, MCAT, and GRE Exams.
GUARANTEED ADMISSION PROGRAMS
Harvard Review now offers Guaranteed Admission to Harvard, Princeton, Yale, and Stanford, as well as to elite MBA Programs at Harvard, Wharton, and Stanford.
We are in the process of developing Guaranteed Programs for admission to elite Medical, Dental, Veterinary, and Law Schools, including Harvard and Yale.
CLICK HERE FOR GUARANTEED ADMSSION TO HARVARD, PRINCETON, AND YALE.”
There is no apparent notice on Respondent’s website that “Harvard Review” is unaffiliated with Complainant.
Beginning on April 5, 2016, Complainant through its counsel transmitted several cease and desist demands to Respondent by email and hard copy express courier transmittal. Respondent did not respond to those communications.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it owns rights in the HARVARD and HARVARD-formative marks, as well as other marks incorporating HARVARD, which Complainant collectively refers to as the “HARVARD marks”.
Complainant claims that the disputed domain name is confusingly similar to the HARVARD marks, including because the HARVARD marks (or their principal term) are inherently distinctive, have long been used in United States commerce and are widely recognized, and; on the basis of appearance, sound, impression and meaning similar to the disputed domain name.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has not licensed or authorized Respondent to use the HARVARD marks or any confusingly similar mark in the disputed domain name or otherwise; (2) Respondent on information and belief does not own a trademark or service mark registration comprising in whole or in part the HARVARD marks; (3) Respondent is using the disputed domain name to direct Internet users interested in Complainant’s products and services to a website offering services highly related to the types of services offered under Complainant’s marks; and (4) Respondent’s use of the disputed domain name is not a legitimate noncommercial or fair use of Complainant’s HARVARD marks within the meaning of the Policy.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent’s failure to respond to a cease-and-desist letter from Complainant’s counsel is evidence of bad faith; (2) Respondent had actual or constructive notice of Complainant’s rights in the HARVARD marks, or at least some of them, when it registered the disputed domain name; (3) given the fame and repute of Complainant’s marks, there is no plausible explanation for Respondent to have registered the disputed domain name other than to divert consumer traffic to Respondent’s website for commercial gain. By registering and using the disputed domain name to direct Internet users to Respondent’s commercial website, Respondent has registered and used the disputed domain name in bad faith pursuant to the Policy.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
No other communication was received from Respondent further to the above-mentioned July 22, 2016 email communication.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. The express courier delivery service engaged by the Center reported that the Written Notice of the commencement of the proceeding was successfully delivered to at least one of the several physical addresses associated with Respondent, and Respondent by email confirmed receipt of the Complaint one week prior to the due date for a Response. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of rights in the word service mark HARVARD, and of ownership rights in a number of HARVARD-formative marks, including by registration on the Principal Register of the USPTO and by use in commerce in the United States (seeFactual Background, supra). Registration on the Principal Register establishes a presumption of rights in the marks, and Respondent has not contested Complainant’s rights. The Panel determines that Complainant owns rights in the service mark HARVARD and in the HARVARD-formative marks.
The disputed domain name directly incorporates Complainant’s HARVARD service mark. Following a hyphen, it adds the term “review”. A number of Complainant’s HARVARD-formative marks incorporate the term “review”, including HARVARD BUSINESS REVIEW and HARVARD LAW REVIEW. Complainant asserts use of the term HARVARD REVIEW in commerce since 1992. Moreover, the term “review” is used in the English-language both as a verb and a noun. As a verb, the term refers, among other things, to the act of studying, providing information about and/or reviewing materials for instructional purposes (e.g., to “review the course materials”). As a noun the term is commonly used to refer to a collection of reviews, articles and/or essays.1 As HARVARD is an educational institution that provides instructional services that include “review”, Internet users viewing the disputed domain name <harvard-review.com> would be likely to assume that the website associated with the disputed domain name is operated or endorsed by Complainant, particularly in light of inclusion in the disputed domain name of the distinctive term HARVARD. The panel determines that the disputed domain name is confusingly similar to Complainant’s HARVARD and HARVARD-formative marks.
The Panel determines that Complainant owns rights in the HARVARD and HARVARD-formative marks, and that the disputed domain name is confusingly similar to those marks.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
(Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Based on the evidence before the Panel, and also noting the Panel’s finding below, the Panel finds no indication of rights or legitimate interests on the part of Respondent.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Those include that: “(iv) by using the domain name, [the respondent has] intentionally attempted 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.”
Respondent is using the disputed domain name to direct Internet users to a website that uses Complainant’s well-known service mark in its banner identifier, and which website offers services in the same area as those provided by Complainant. Respondent knew or should have known of Complainant’s well-known mark when it registered and used the disputed domain name, including because Respondent refers to Complainant’s educational institution on its homepage (and guarantees admission to Complainant’s educational institution). Respondent is offering its services at a price, and it is acting for commercial gain. Respondent is using the disputed domain name to intentionally attempt to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to Complainant serving as source, sponsor, affiliate or endorser of Respondent’s website.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Based on its finding that Complainant has satisfied all three elements of the Policy required for a determination in its favor, the Panel determines that the disputed domain name should be transferred by the Registrar to Complainant.
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 <harvard-review.com> be transferred to Complainant.
Frederick M. Abbott
Date: August 3, 2016
1 See, e.g., “www.merriam-webster.com/dictionary/review”.