WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lynn University, Inc. v. Perfect Privacy, LLC / Sarah Amo, lynn uni
Case No. D2016-1856
1. The Parties
Complainant is Lynn University, Inc. of Boca Raton, Florida, United States of America ("United States"), represented by Akerman LLP, United States.
Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Sarah Amo, lynn uni of Orchard Park, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <lynnu.org> (the "Domain Name") is registered with Register.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2016. On September 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 15, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 15, 2016.
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 Respondent of the Complaint, and the proceedings commenced on September 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on October 11, 2016.
The Center appointed John C McElwaine as the sole panelist in this matter on October 14, 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 a private university located in Boca Raton, Florida.
Complainant owns three United States trademark registrations for marks containing the term LYNN:
LYNN UNIVERSITY – U.S. Reg. No. 4542999 registered on June 3, 2014 for "Educating at university or colleges; Education services in the nature of courses at the university level; Educational services, namely, conducting distance learning instruction at the university level."
LYNN UNIVERSITY FIGHTING KNIGHTS – U.S. Reg. No. 4703216 registered on March 17, 2015 for "Educating at university or colleges; Education services in the nature of courses at the university level; Educational services, namely, conducting distance learning instruction at the university level."
ILYNN – U.S. Reg. No. 4845824 registered on November 3, 2015 for "Educational services, namely, providing on-line courses of instruction at the university level."
Complainant is also the registrant of the domain name <lynn.edu>.
Respondent registered the Domain Name on April 15, 2016. The Domain Name does not resolve to a functioning webpage.
5. Parties' Contentions
Founded in 1962, Lynn University is a private university located in Boca Raton, Florida. In 1991, the name of the university was changed to Lynn University to honor its benefactors. The university is accredited by the Commission on Colleges of the Southern Association of Colleges and Schools to award associate's, baccalaureate, master's and doctoral degrees.
Complainant alleges that Respondent has used the Domain for fraudulent activities. Specifically, it is claimed that Respondent has used the Domain Name to send emails that impersonate personnel at Lynn University attempting to make large purchases and to have those purchases billed to Complainant's account. An example is provided where Respondent sent an email from […]@lynnu.org dated April 20, 2016 impersonating Lynn University employee Daniel Caballero with an email address […]@lynn.edu to a Verizon Wireless Account Manager. Annex G of the Complaint. The email initially attempted to order 64 GB iPhone 6s Plus in rose gold. After it looked like the fraudulent order would be processed, Respondent increased the order to 100 smart phones and provided a fraudulent U.S. Internal Revenue Service W-9 tax form.
With respect to the first element of the Policy, Complainant alleges to have acquired distinctive common law trademark rights in the mark LYNN, LYNN UNIVERSITY and LYNN formative marks (the "LYNN Marks") by virtue of significant advertising across all platforms since 1996. In addition, Complainant alleges that the LYNN Marks are well-known for its best-in-class university and academic offerings. Moreover, the LYNN Marks have developed significant goodwill due to Lynn's extensive promotion for nearly thirty years. Complainant alleges that the Domain Name is virtually identical to Complainant's LYNN trademark except for the addition of the letter "U", which is a known abbreviation for the word "university." Complainant asserts that not only is the Domain Name confusingly similar to the LYNN Marks, but that Respondent's own actions prove an intention to cause such affiliation, mistake or deception.
With respect to the second element of the Policy, Complainant begins by pointing out that fraudulent activities are not a bona fide use of a mark. In addition, Complainant asserts that there is no evidence that Respondent is commonly known by the domain name or is making a legitimate noncommercial or fair use of the domain name within the meaning of paragraph 4(c)(ii) or (iii) of the Policy. Complainant asserts that Respondent used false and misleading contact information by identifying the organization as "lynn uni" and providing the email address of "[…]@yandex." Complainant points out that "lynn uni" is obviously shorthand for Complainant's name and trademark, and […]@yandex.com is an obvious attempt to induce confusion by using the name of Daniel Caballero, an employee of Complainant.
With respect to the third element of the Policy, Complainant asserts that by incorporating its well-known trademark in the Domain Name and using it to send emails for the purpose of making fraudulent purchases, which if successful would be billed to Complainant, is clear evidence of use of the Domain Name in bad faith. In addition, Complainant assert bad faith registration since Respondent used false and misleading contact information by identifying the organization as "lynn uni" and providing the email address of "[…]@yandex.com."
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with actual evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.") Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established rights in the LYNN Marks as evidenced by its trademark registrations, its long-standing use of the mark LYNN and LYNN UNINVERSITY in connection with educational services, its registration of <lynn.edu> and the significant marketing and media attention that Complainant has received under its LYNN Marks.
The Domain Name <lynnu.org> is confusingly similar to Complainant's LYNN Marks because it contains Complainant's core LYNN trademark in its entirety, plus the initialism "U", which is commonly known to stand for the word "university." It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, does not avoid confusing similarity. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307. Moreover, the premise of the email scams perpetrated by Respondent belie its intention to use a domain name confusingly similar to Complainant's LYNN Marks.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant's LYNN Marks.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Name. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the disputed domain name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141 (discussing and citing the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1); seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252. Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
"(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."
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name. In particular, Complainant asserts that Respondent is not a licensee or affiliate of Complainant. Complainant has also shown that Respondent used false and misleading contact information by identifying the organization as "lynn uni" and providing the email address of "[…]@yandex.com." The WhoIs data is false and an attempt to induce confusion by using the name of Daniel Caballero, an employee of Complainant.
Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the Domain Name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
The Panel finds that the use of Domain Name to divert Internet traffic to a scam or a phishing scheme is not a bona fide offering of goods or services. Twitter, Inc. v. Moniker Privacy Services/ accueil des solutions inc, WIPO Case No. D2013-0062 ("This Panel accepts the Complainant's contention that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services. It further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name."); see also CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name holding, "such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name").
Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent's default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Here, Respondent registered the Domain Name to perpetrate an email scam. Complainant's core LYNN trademark was intentionally chosen when the Domain Name was registered to pray on the public that received the fraudulent emails. In light of the email scam, there could be no other legitimate explanation except that Respondent intentionally registered the Domain Name to cloak its scam and deceive recipients into believing the emails were from Complainant. Such activity constitutes a disruption of Complainant's business and also establishes bad faith registration and use. Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., WIPO Case No. D2013-0117 (finding bad faith based upon the similarity of the disputed domain name and the complainant's mark, the fact that the complainant is a well-known global security company and the fact that the disputed domain name is being used to perpetrate an email scam.)
In addition, the use of a deceptive domain name for an email scam has previously been found by panels to be sufficient to establish that a domain name has been registered and is being used in bad faith. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367; Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., WIPO Case No. D2013-0117.
Moreover, in finding a domain name used only for an email scam was bad faith, the panel in Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel, WIPO Case No. D2016-0387, pointed out that numerous UDRP panels have found such impersonation to constitute bad faith, even if the relevant domain names are used only for email. See, e.g., Terex Corporation v. Williams Sid, Partners Associate, WIPO Case No. D2014-1742 ("Respondent was using the disputed domain name in conjunction with…an email address for sending scam invitations of employment with Complainant"); and Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar, WIPO Case No. D2011-0128 ("although the disputed domain names have not been used in connection with active web sites, they have been used in email addresses to send scam emails and to solicit a reply to an 'online location'").
Additionally, it would be simply inconceivable that Respondent was not aware of Complainant's trademark rights in light of the distinctiveness of the LYNN Marks at the time the Domain Name was registered and the subsequent use of this Domain Name intentionally to deceive the public. There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is suggestive of bad faith registration and use.
For this reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.
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, <lynnu.org>, be transferred to Complainant.
John C McElwaine
Date: October 28, 2016