WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
University of Southern California v. Best Domains Sociedad De Responsabilidad Limatada, DomainsLimitada.com
Case No. D2017-1605
1. The Parties
The Complainant is University of Southern California of Los Angeles, California, United States of America, represented by Stetina Brunda Garred & Brucker, United States of America (“USA”).
The Respondent is Best Domains Sociedad De Responsabilidad Limatada, DomainsLimitada.com of Grecia, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name <uscvillage.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2017. On August 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Following the renewal of the disputed domain name for purposes of this proceeding, on August 28, 2017, the Registrar transmitted by email to the Center its verification response. The Center sent an email communication to the Complainant on August 29, 2017 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 September 1, 2017.
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 September 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 9, 2017. 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
The Complainant is, as its name suggests, a well-known university or college in Southern California. According to the Complaint, it has been using the acronym USC in connection with its services, including the promotion and sale of goods, since 1910.
The Complaint includes evidence of a number of trademarks registered by the Complainant in the USA:
- USA Registered Trademark No. 1,240,848 for USC in relation to a wide variety of goods in International Classes 6, 10, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26 and 28, which was filed in 1978 and registered on June 7, 1983. The trademark stated a range of dates as the dates when it was first used in commerce (in the USA) including in 1914 for necklaces, watches and other class 14 goods and clothing, footwear and headwear in class 25;
- USA Registered Trademark No. 1,689,594 for USC in relation to sweatshirts and t-shirts, which was registered on May 26, 1992 and was first used in commerce in 1920; and
- USA Registered Trademark No. 2,319,979 for USC in relation to educational services, which was registered on February 22, 2000 and first used in commerce in 1910.
The Complainant has also submitted evidence of other, more recent registrations for USC-formation marks including “USC Alumni Association”, “USC Credit Union” and “USC Trojan Family Magazine”.
“USC Trojans” is the name of the Complainant’s sports teams and it sells, or authorises the sale of, a range of sportswear and other memorabilia under that name.
The Complainant has also established a precinct on its campus under the designation “USC Village”, apparently previously known as “University Village”, which includes student residential colleges, housing, learning facilities and a retail sector. Information about and services provided by this precinct are promoted on websites with the URLs “www.usc-village.com” and “www.village.usc.edu”.
The Respondent is apparently in the business of acquiring and offering for sale domain names.
The disputed domain name was registered in 2010. At the time of the filing of the Complaint, it did not resolve to an active website and does not appear ever to have been in use.. On July 31, 2017, the Complainant’s representative received an unsolicited invitation to purchase the disputed domain name. On August 3, 2017, the Complainant’s representative received a second unsolicited communication offering the disputed domain name for sale again and pointing out its potential attractiveness to the Complainant in view of the similarity of the disputed domain name to the URLs that the Complainant uses.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record confirmed by the Registrar in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
The Panel notes that the Registrar has confirmed that the language of the registration agreement is English. The Respondent’s general website at “www.domainslimitada.com/index-english.html” is in English. That is, the Respondent’s general website is in two language versions: Spanish and English. Accordingly, it is appropriate that the language of the proceeding be English.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant’s trademark rights.
There are two parts to this inquiry: the complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in Section 4 above.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the Top-Level Domain, the Complainant’s registered trademarks for USC are clearly and prominently visible in the disputed domain name. The Panel finds therefore that the disputed domain name is confusingly similar to those registered trademarks. The disputed domain name is also identical to the name of the Complainant’s residential precinct, although it is not clear from the Complaint when the residential precinct became formally known by that name.
B. Rights or Legitimate Interests
The second requirement the complainant must prove is that the respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not authorised the Respondent to register or use the disputed domain name. Indeed, the Respondent is not associated with the Complainant in any way.
The disputed domain is plainly not derived from the Respondent’s name.
So far as the record shows, the Respondent has not made any use of the disputed domain name, apart from the offer to sell it to the Complainant. Although the disputed domain name was registered in 2010, the Complainant’s registered trademarks pre-date that by many years. Moreover, the Complainant’s use of “USC” goes back very much further – one hundred years further.
In these circumstances, the Complainant has made out a clear prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
That being so, an evidential burden shifts to the Respondent to show why or how it has such rights. The Respondent in this case, however, has not submitted a response and so has not attempted to rebut the Complainant’s prima facie case. It has not made any attempt to justify its registration in the face of the Complainant’s allegations.
Accordingly, the Panel finds that the Complainant has established this requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the relevant Respondent has both registered and used the disputed domain name in bad faith. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant charges that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant, or some third person, for a price more than the registration costs or otherwise to disrupt the Complainant’s business.
As already noted, the Complainant points out that the Respondent’s business model is to register domain names and offer them for sale to the public. The Respondent claims to “offer the best domains at the best prices”. Further, the Respondent has apparently made no use of the disputed domain name save to solicit a purchase offer from the Complainant when the disputed domain name was coming up for renewal.
The Complainant alleges that the Respondent was well aware of the Complainant and its trademarks when the Respondent registered the disputed domain name. The Respondent has made no attempt to deny or refute that allegation. The Complainant, and its acronym, are well-known; having been established in 1880 and the Complainant has been using “USC” in relation to the goods and services the Complainant provides for over 100 years. In these circumstances, it seems likely that the Respondent was aware of the Complainant and the resemblance of the disputed domain name to the Complainant’s trademarks when the Respondent registered the disputed domain name.
In these circumstances, the fact that there does not appear to have been any use of the disputed domain name (until the communications earlier this year soliciting a purchase offer) is no bar: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Although the emails soliciting a purchase offer from the Complainant did not specify an amount, they stated that the Complainant was being given an opportunity to buy the disputed domain name before it was offered to the general public. The context makes it plain that the Respondent was seeking a price in excess of the usual registration costs for a domain name and carried with it the not so subtle threat that the disputed domain name would be offered to the highest bidder in the public at large if the Complainant failed to avail itself of the opportunity. As previously noted, the Respondent has not attempted to justify its conduct.
Accordingly, the Panel finds that the disputed domain name has been both registered and used 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 disputed domain name <uscvillage.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: October 18, 2017