WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tufts University v. Domains By Proxy, LLC / Procurement NA

Case No. D2020-0402

1. The Parties

The Complainant is Tufts University, United States of America (“United States”), represented by Archstone Law Group, United States..

The Respondent is Domains By Proxy, LLC, United States / Procurement NA, United States.

2. The Domain Name and Registrar

The disputed domain name <tuftsedu.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 February 19, 2020. On February 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 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 Center sent an email communication to the Complainant on February 21, 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 amendment to the Complaint on February 24, 2020.

The Center verified that the Complaint together with the amendment to 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 February 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2020.

The Center appointed Steven M. Auvil as the sole panelist in this matter on April 2, 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.

4. Factual Background

The Complainant is a private research university located in Massachusetts, United States. Founded in 1852, the Complainant, at the time of writing this Decision, offers over 90 undergraduate and 160 graduate programs and has an enrollment of over 10,000 students.

The Complainant owns a registered United States service mark in connection with the TUFTS name (Reg. No. 1910498, registered on August 8, 1995). Additionally, the Complainant hosts a website in connection with the TUFTS name at the domain name <tufts.edu>.

The disputed domain name was registered on June 13, 2019. At the time of writing this Decision, the disputed domain name redirects to <tufts.edu>.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical or confusingly similar to the mark registered by the Complainant. The Complainant states that the relevant portion of the disputed domain name is identical to the Complainant’s TUFTS mark.

The Complainant asserts that the Respondent has no rights or legitimates interests in the disputed domain name. The Complainant states that it has never given the Respondent any authorization to use the TUFTS mark. The Complainant further states that the Respondent has not used the disputed domain name in connection with a legitimate business, legitimate noncommercial, or legitimate fair use of the Complainant’s mark.

The Complainant further asserts that the disputed domain name was registered and is being used in bad faith by the Respondent. The Complainant alleges that the Respondent is using the disputed domain name to deliberately mislead email recipients into believing that the Respondent is an authorized representative of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding based on the Complainant’s undisputed allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate “to accept as true all of the allegations of the Complaint.”).

Based on the foregoing guidance, the Panel makes the following findings and conclusions based on the allegations and evidence contained in the Complaint and reasonable inferences drawn from them.

A. Identical or Confusingly Similar

The Complainant is a highly regarded university that has been in existence for over 150 years. The Complainant is the owner of a United States service mark that contains the TUFTS name. In addition to this mark, the Complainant owns a domain name <tufts.edu>, which contains the TUFTS name. The Panel therefore finds that the Complainant has rights in the TUFTS mark.

Virtually no differences exists between the disputed domain name <tuftsedu.org> and the TUFTS mark in which the Complainant has rights. The disputed domain name consists of three elements: (i) the TUFTS mark in which the Compliant has rights, (ii) the suffix “edu”, and (iii) the Top-Level Domain “.org”.

As set forth in section 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable Top-Level Domain “is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. Therefore, the presence of “.org” in the disputed domain name is irrelevant.

Regarding the “edu” suffix, section 1.8 of WIPO Overview 3.0 provides that, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See The Ohio State University v. Cris Penn, WIPO Case No. D2018-1015 (complainant was a public research university, panel finds disputed domain confusingly similar and ultimately orders transfer of the disputed domain name when the disputed domain name incorporated full mark of the complainant with the suffix “edu”).

In the present case, the TUFTS mark is clearly recognizable within the disputed domain name, thereby creating confusing similarity with the Complainant’s mark. The “edu” suffix in the disputed domain name does nothing to dispel this confusing similarity, as “edu” is widely understood as an abbreviation for “education”. As the Complainant is an educational institution, the “edu” suffix in the disputed domain name is merely descriptive of the TUFTS mark owned by the Complainant. Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the TUFTS mark in which the Complainant has rights. Accordingly, the first element of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

From the allegations and evidence contained in the Complaint and reasonable inferences drawn from them, the TUFTS mark is a distinctive and well known mark registered by the Complainant. The Complainant did not authorize the Respondent to use the TUFTS mark. Therefore, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Section 2.1 of WIPO Overview 3.0, provides that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

In the present case, the Respondent has failed to meet its burden of production by providing evidence demonstrating rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Section 3.1.4 of WIPO Overview 3.0 provides that “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. (Emphasis added.) Additionally, section 3.4 of WIPO Overview 3.0 provides that, “[p]anels have held that the use of a domain name for purposes other than to host a website may constitute bad faith…. [M]any such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”. (Emphasis added.) Furthermore, section 3.2.1 of WIPO Overview 3.0 provides: “[p]articular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include… a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name…”

In the present case, consistent with section 3.1.4 of WIPO Overview 3.0, the disputed domain name incorporates the Respondent’s well-known TUFTS mark plus the descriptive term “edu” creating a rebuttable presumption of bad faith. Moreover, consistent with section 3.4 of WIPO Overview 3.0, it appears that the Respondent is using the disputed domain name to send fraudulent emails. Annex 5 to the Complaint. In light of these considerations, the Panel finds that the disputed domain name was registered and used in bad faith. The Respondent has not come forward with any evidence to counter the presumption applied or the evidence of bad faith use. Accordingly, the Panel concludes that third element of paragraph 4(a) of the Policy is satisfied.

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 <tuftsedu.org> be transferred to the Complainant.

Steven Auvil
Sole Panelist
Date: April 16, 2020