WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Ohio State University v. Cris Penn, osuedu
Case No. D2018-1015
1. The Parties
The Complainant is The Ohio State University of Columbus, Ohio, United States of America ("US" or "United States"), represented by Dreitler True LLC, United States.
The Respondent is Cris Penn, osuedu of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <osuedu.org> is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 8, 2018. On May 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 the Respondent of the Complaint, and the proceedings commenced on May 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 7, 2018.
The Center appointed Peter Wild as the sole panelist in this matter on June 18, 2018. 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 The Ohio State University, established in 1870, and is a well known and respected institutions of higher learning in the United States.
The Complainant owns US federally registered trademarks and collective marks for use in connection with its educational services, e.g.:
OSU – registration no. 1,121,595, registered July 3, 1979, for inter alia, providing college level educational programs;
OSU – registration no. 5,358,397, registered December 19, 2017, for clothing and headgear, namely, t‑shirts, shirts, hats, and baseball caps;
OSU – registration no. 4,035,057, registered October 4, 2011, for bracelets, earrings, and pendants.
Since October 6, 1989, the Complainant has owned the domain name <osu.edu> which it uses for all university email addresses.
The Respondent registered the disputed domain name <osuedu.org> on February 14, 2018. The Respondent is using the disputed domain name in at least one email address to pretend to be a staff member of the Complainant, sending out fake purchase orders.
5. Parties' Contentions
The Complainant claims that it has exclusive rights in the OSU trademark and <osu.edu> domain name, and it has not authorized Respondent, or any third party, to use the OSU trademark in a domain name. According to the Complainant, the disputed domain name is identical to its well-known and widely used <osu.edu> domain name and OSU trademarks. It incorporates the <osu.edu> domain name in its entirety, and simply adds the generic Top-Level Domain ("gTLD") extension ".org". The Complainant alleges the usual practice under the Policy is to disregard the addition of a gTLD in determining whether a domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Moreover, an Internet user (such as a recipient of one of the Respondent's fake purchase orders) may be confused by the mere addition of the ".org" extension gTLD into thinking that the disputed domain name is in some way connected to and associated with the Complainant. According to the Complainant, the Respondent has registered and is using the disputed domain name in bad faith by using a variation of the well-known <osu.edu> domain name for commercial gain by creating a likelihood of confusion with the Complainant's OSU trademarks as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Respondent led its targets into believing that they were dealing with the Complainant by soliciting products using fake email purchase orders that also contain infringing uses of the Complainant's logos and trademarks which constitutes bad faith.
The Respondent's registration and use of the disputed domain name was clearly done with full knowledge of the Complainant's trademarks and <osu.edu> domain name and the Respondent has no rights or legitimate interests in the disputed domain name and is using the disputed domain name to aid in perpetrating fraudulent activity.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has exclusive rights in the OSU trademark. The disputed domain name contains the identical element "OSU" with the addition of "edu" and the gTLD extension ".org". Previous UDRP panels repeatedly decided to disregard the addition of a gTLD in determining whether a domain name is identical or confusingly similar to a trademark or service right in which the Complainant has rights. Aspect Capital Limited v. Fluder, WIPO Case No. D2015-0475; Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046. Therefore, the addition of ".org" must be disregarded. The incorporation of the element "edu" in the disputed domain name does not change the overall impression of the disputed domain name in a sufficient way to avoid confusing similarity. The element is simply descriptive, as "edu" is the common abbreviation for education.
For these reasons this Panel holds that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not file an answer to the Complaint. The Complainant asserts that the Respondent is using the disputed domain name in an email address under which the Respondent contacts contractors of the Complainant, acting as a staff member of the Complainant using "[…]@osuedu.org" to contact victims by submitting fake "purchase orders" to third-party companies in hopes that they would send the Respondent the requested items. Such fake "purchase order" emails also contain infringing use of the Complainant's trademarks, and the Respondent identifies himself as "Cris Penn – Purchasing Manager". According to the Complainant, Chris Penn is not now and has never been an employee of the Complainant's purchasing department.
In the Complainant's view, this amounts to a deliberate attempt to take commercial advantage of the Complainant's trademark without the Complainant's consent. Whether the Respondent has rights or legitimate interests in the disputed domain name must be assessed against the Complainant's rights taking into account the manner in which the Respondent uses the disputed domain name. In these circumstances, it is difficult to see how the Respondent's conduct could be characterized as legitimate and thus permissible. In the absence of the Respondent's comments, and in light of the evidence submitted by the Complainant, the Panel finds that the Complainant has satisfied its burden to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
According to the record, the Respondent is using the disputed domain name in at least one email address to pretend to be a staff member of the Complainant sending out fake purchase orders for commercial gain. The Respondent also incorporates the Complainant's other trademarks in such email communications, which likely violates the Complainant's further trademark rights. This fact alone shows that the Respondent was well aware of the Complainant and its business and trademark when it registered the disputed domain name. In addition, the disputed domain name is almost identical to the Complainant's domain name which it uses for its email address system and thereby deliberately attempts to mislead the Internet user.
The Respondent did not submit any explanation or possible justification for its choice of the disputed domain name.
In light of all these elements, it is reasonable to infer that the Respondent wishes to take advantage of Internet users by acting as a staff member of the Complainant. In the present set of facts, it is inconceivable how the Respondent would be able to explain as to how and why it chose the disputed domain name in good faith and why confusion and deception is unlikely to occur. The Panel therefore finds that the Respondent registered and is using the disputed domain name in bad faith. That is, so as to take advantage of Internet users who know and trust the Complainant's trademark and to disrupt the Complainant's business.
In light of these factors, the third element of the Policy has been met.
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 <osuedu.org> be transferred to the Complainant.
Date: June 30, 2018