WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The George Washington University v. Mohammed Irsad / Riyas Sulaima Lebbe

Case No. D2021-0697

1. The Parties

The Complainant is The George Washington University, United States of America (“United States”), represented by Wilkinson Barker Knauer, LLP, United States.

The Respondent is Mohammed Irsad, Sri Lanka / Riyas Sulaima Lebbe, Sri Lanka.

2. The Domain Name and Registrar

The disputed domain name <gwuop.org> is registered with Realtime Register B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2021. On March 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2021, 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 the Complainant on March 10, 2021 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 March 15, 2021.

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 March 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2021. The Response was filed with the Center on March 31, 2021.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 19, 2021. 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

Chartered by an Act of the United States Congress in 1821, the Complainant is a private university constituted as a not-for-profit corporation. The Complainant is based in Washington, D.C., United States, with additional campuses elsewhere in the United States. The Complainant is the largest institution of higher education in Washington, D.C. and maintains a roll of approximately 12,500 undergraduate and 15,300 graduate students, both national and international. For the 2020-21 academic year, the Complainant was ranked as 66th out of 381 national universities by “U.S. News & World Report”. The Complainant has many well-known divisions, such as George Washington University Law School, George Washington University School of Business, George Washington University School of Medicine and Health Sciences, and George Washington University Hospital. The “George Washington” and “George Washington University” elements of the names of these divisions are frequently abbreviated to “GW” and “GWU” respectively.

The Complainant uses the marks GW, GWU, and GEORGE WASHINGTON UNIVERSITY. Its use of the GWU mark dates back to at least 1908 (evidence provided). National and international media have referred to the Complainant by the GWU mark since at least 1928. The Complainant’s primary domain name is <gwu.edu> and the relative website traffic ranks at 3,212th among all United States websites and at 16,279th among all websites globally, with approximately 2,372,000 visits per month.

The Complainant is the owner of some ten United States federal registered trademarks for GW and GW UNIVERSITY including, for example, United States registered trademark no. 1714292 for the word mark GW, registered on September 8, 1992 in international class 41, and United States registered trademark no. 1699056 for the word mark GW UNIVERSITY, registered on July 7, 1992 in international class 16.

The disputed domain name was registered on October 29, 2019 and, according to the Complainant’s screenshots, points to a website promoting “The George Washington University of Peace USA”. Said site claims that this alleged institution was “incorporated by the government of the District of Florida in 2019, chartered by an Act of Congress in 1893” and claims to be accredited by the “International Accreditation Organization”, which confers an “accreditation for the issuance of degrees, diplomas and certificates” and also by “the International Accreditation Service (IAS), UK.” The Complainant asserts that these statements are false, that the Respondent does not have the requisite higher education accreditations in the United States, and that there is no such entity as the “government of the District of Florida”. Said alleged institution also refers to itself as “GWUP” on said website and provides a facility for online “certificate verification”.

Marketing materials from an entity named “Thirtyone Ventures”, which state that such entity operates in association with “GEORGE WASHINGTON UNIVERSITY OF PEACE” (website capitalization), and list the disputed domain name, indicate that upon payment of a fee for online courses an Internet user may obtain a certificate from “GEORGE WASHINGTON UNIVERSITY” (website capitalization) within 45 to 60 days. The Complainant states that this indicates that the Respondent is operating a “diploma mill”.

The holder of the disputed domain name and WhoIs-named registrant states that it is a web developer which was instructed by a Dr. S. L. Riyas. Dr. Riyas has engaged with the proceeding and states that he operates a business named George Washington University of Peace, LLC, a limited liability company under the laws of the State of Florida, United States with an address in Sammanthurai, Sri Lanka.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

Identical or confusingly similar

The disputed domain name consists of the Complainant’s GW mark and the letters “uop” and/or the Complainant’s GWU mark and the letters “op”. The most dominant and recognizable portions of the disputed domain name are the letters GW and/or GWU. The additional letters are an abbreviation of the latter part of the Respondent’s name “George Washington University of Peace” which is itself an infringement of the Complainant’s rights. The disputed domain name uses the abbreviation “gwu” in place of the phrase “George Washington University.” The use of an abbreviation in place of a word or phrase contained in another’s mark creates a likelihood of confusion between the mark containing the abbreviation and the mark containing the full word. The addition of the generic Top-Level Domain (“gTLD”) “.com” to a trademark to create a domain name is irrelevant when considering the similarity of a domain name to the trademark.

This is not a situation where an entity has chosen a two or three-letter acronym that could be interpreted as meaning any number of things. The context of the use of the disputed domain name makes it clear that most people would interpret the letters GWU as referring to the Complainant. The intention to adopt a confusingly similar domain name that will be associated with the Complainant is further shown by the Respondent’s adoption of a “seal” that is highly similar to the Complainant’s federally registered seal.

Rights and legitimate interests

The Respondent has not been authorized to use the Complainant’s marks, giving rise to a presumption that the Respondent cannot establish rights and legitimate interests in the disputed domain name. Use of the disputed domain name to intentionally trade on the well-known marks of another to lure Internet users to the Respondent’s website, which offers services that are competitive with the trademark owner’s services, cannot and does not constitute a bona fide offering of goods or services. To conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.

As a Florida limited liability company, the “George Washington University of Peace” cannot credibly claim not to have known of one of the United States’ oldest, most renowned, and most prestigious institutions of higher learning. Knowingly adopting such name, and/or using the Complainant’s trademark unfairly as a lure for its rivals or to pass itself off as the Complainant, cannot give rise to a bona fide offering of goods or services on the Respondent’s part. The Respondent was never commonly known by the disputed domain name and had not acquired trademark or service mark rights therein. To come within the safe harbor of paragraph 4(c)(ii) of the Policy, a respondent must have been commonly known by the domain name prior to the time of registration.

The Respondent is not engaging in criticism, parody or operating a fan site, which could bring it within the scope of paragraph 4(c)(iii) of the Policy. The offering of competing services for a charge takes the Respondent outside the realm of noncommercial use as does the attempt to pass itself off as the Complainant. The Respondent appears to be operating a “diploma mill” which will provide a certificate from “George Washington University”. This alone establishes that the Respondent has no rights or legitimate interests in the disputed domain name. The fact that the Respondent also copied substantial portions of the Complainant’s seal means that it cannot show a right or legitimate interest in the disputed domain name.

Registered and used in bad faith

The Respondent is either seeking to mislead and divert visitors seeking the Complainant’s website, or to mislead visitors into believing that the “George Washington University of Peace” is part of, sponsored by or affiliated with the Complainant. This constitutes bad faith use and registration of the disputed domain name. Alternatively, the Respondent is operating a “diploma mill” which also shows its bad faith. The Respondent had actual or constructive notice of the Complainant’s rights. However, the Respondent’s knowledge of the Complainant’s rights is irrelevant because the reputation of brands and trademarks transcend national borders in the Internet age. In light of the Complainant’s well-established rights in its marks, and the coupling in the disputed domain name of such marks with a non-descriptive abbreviation, there is no conceivable way in which the Respondent could use the disputed domain name in good faith.

B. Respondent

In its informal Response, the Respondent contends as follows:

Riyas Sulaima Lebbe is the owner of the disputed domain name. The George Washington University of Peace is registered in the State of Florida with the intention to function as a legally registered University in the United States from 2030. It now functions as a “Think Tank for Peace research and Development according to the UNSDG Goals and norms”.

Responsibility for content creation for the Respondent’s website was handed over to an individual in Sri Lanka who supplied a dummy profile, which was given by mistake to the web developer to upload without being corrected. A committee was appointed to review the terms of the Complaint [on behalf of the Respondent]. According to the committee’s suggestions, the website functions have been temporarily stopped, two members have been appointed to edit the contents of the website in accordance with the Complaint, the Respondent apologizes for any mistakes, and notes that the issue between the Parties may be regarded as concluded.

The Respondent did not notice any mistakes until it was contacted by the Center. The Respondent affirms that it has no intention to damage the Complainant’s good name, nor does it have any intention to establish a “degree mill” anywhere in the world. The Respondent has not issued any degree certificates in the name of the George Washington University of Peace. The Respondent undertakes to take the necessary (unspecified) steps to edit its website within 10 working days from March 31, 2021.

The Respondent made the following additional comments in its response to a complaint made by the Complainant to the Florida Department of Agriculture and Consumer Services:

The Respondent is aware that THE GEORGE WASHINGTON UNIVERSITY, related logos and service marks including GW are federally registered trademarks. The Respondent asked its company filing service to identify a suitable name for registration and selected “The George Washington University of Peace”. This is a different name and the educated community will understand that difference.

The Respondent has never advertised that it and the Complainant are the same institution or have ever collaborated, nor did it have any intent to spoil the Complainant’s good name or mislead anyone. The Respondent has clearly mentioned on its website that it has no authority to issue its own degree until it is recognized as a full University. The Respondent is currently affiliated with a few globally recognized Universities (unspecified).

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

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

A. Preliminary Issue: Respondent Identity

Paragraph 1 of the Rules defines the respondent as “the holder of a domain name registration against which a complaint is initiated.” The holder of the disputed domain name and WhoIs-listed registrant in the present case has asserted that it registered the disputed domain name on behalf of a named customer, in other words, effectively as proxy, although not by way of a proxy service provided by the Registrar. Said named customer has engaged with the administrative proceeding, has provided an informal Response to the Center and has also replied to the complaint made by the Complainant to the Florida Department of Agriculture and Consumer Services.

In all cases involving a privacy or proxy service, and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed (see section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the present case, the Panel cannot substitute the Respondent’s alleged customer in place of the Respondent because the Respondent has effectively admitted that it is the registrant of record and therefore is the holder of the disputed domain name. It remains in control of the disputed domain name and thus is responsible for the content on any related website. Nevertheless, the Panel is prepared to join the Respondent’s alleged customer as a Respondent in the case, since it appears to be an underlying beneficial registrant and has indicated that it wishes to participate in the proceeding as, or on behalf of, the Respondent.

The holder of the disputed domain name’s alleged customer is an individual, named as Dr. S. L. Riyas. In one of the communications with the Center which form part of the informal Response, Dr. Riyas notes that he is the “owner” of the disputed domain name. The Panel notes that Dr. Riyas appears to have prepared the informal Response in his personal capacity, albeit that he also notes that he is a founder of George Washington University of Peace, LLC, a limited liability company and thus a separate legal person. In these circumstances, the Panel determines that Dr. Riyas shall be joined as Respondent and, for convenience, both the holder of the disputed domain name and Dr. Riyas shall be referred to as “the Respondent” throughout this Decision.

B. Identical or Confusingly Similar

The first element under the Policy is essentially a standing requirement in which the Panel assesses whether the Complainant has UDRP-relevant rights in a trademark and, if so, whether the disputed domain name is identical or confusingly similar to such mark. In the present case, the Panel finds that the Complainant has rights in its GW and GW UNIVERSITY registered trademarks as outlined in the factual background section above. The Panel also finds that the Complainant has unregistered trademark rights in the mark GWU, which the record shows has been in use to describe it and its activities since as early as 1908 and has been recognized by national and international media since 1928.

As the Complainant observes, the second level of the disputed domain name consists of either the Complainant’s GW mark, coupled with the letters “uop” and/or the Complainant’s GWU mark coupled with the letters “op”. In either case, the Complainant’s mark is readily recognizable within the disputed domain name. The addition of the other letters would not prevent a finding of confusing similarity under the first element test (see section 1.8 of the WIPO Overview 3.0). Finally, the Respondent does not mount any particular challenge to the Complainant’s submissions on this topic.

In all of the above circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and thus that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“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.”

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Complainant notes that the Respondent has not been authorized to use the Complainant’s trademarks and that the Respondent uses said marks to lure Internet users to the Respondent’s website where they are offered competitive services. The Complainant also asserts that the Respondent was never commonly known by the disputed domain name and has no trademark rights therein. Finally, the Complainant notes that the Respondent is not making any noncommercial use of the disputed domain name, is operating a “diploma mill” and is impersonating the Complainant by having copied substantial portions of its seal. Taken together, these submissions are sufficient in the Panel’s view to establish the requisite prima facie case. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of any rights or legitimate interests which it might have in the disputed domain name.

The Respondent’s case is essentially that it is operating a research and development “think tank” pending approval to operate as a University in the United States in 2030. It has however provided no independent evidence with its informal Response, which consists purely of bare and unsubstantiated assertions. On the other hand, the Complainant has produced compelling evidence which shows that certificates relating to distance learning are being offered in the name of the Respondent’s alleged institution for a fee. The disputed domain name is specifically quoted on the relative “Thirtyone Ventures” marketing material. Given the extent to which the Complainant’s University is extremely well-known, and the fact that the name of the Respondent’s alleged institution (together with the abbreviated version found in the disputed domain name) is confusingly similar to it, the Panel does not consider that the offering of educational services under such name could be regarded as bona fide within the meaning of paragraph 4(c)(i) of the Policy, whether or not the Respondent has plans to apply for accreditation to operate a University in the fullness of time. Accordingly, such activity does not confer any rights or legitimate interests upon the Respondent in terms of paragraph 4(c)(i) of the Policy. Furthermore, the Respondent’s services are evidently of a commercial nature and do not constitute a noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy.

With regard to the fact that the Respondent has registered a limited company, as described in the factual background section above, and that the disputed domain name represents an abbreviation of such company name, the Panel notes that no evidence has been presented that the Respondent has ever been known (far less commonly known) by the disputed domain name. The Respondent cannot therefore avail itself of paragraph 4(c)(ii) of the Policy. The mere registration of a company name is insufficient on its own to meet the relevant requirements of the Policy (on this topic, see the discussion relating to company names in Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672).

The Respondent focuses on the steps which it has taken since the Complaint was filed to address unspecified issues in its website content. No evidence has been provided as to what steps have actually been taken and what changes are proposed to the content. The Respondent appears to suggest that the publication of its website was a mistake and that a “dummy profile” was uploaded by accident. The Panel finds this submission impossible to accept as the website is highly specific to the alleged institution rather than being a template in style or substance. More importantly, said website corresponds to the services being offered at the “Thirtyone Ventures” website, including the facility for online “certificate verification”.

In any event, the Respondent’s rights and legitimate interests are assessed with a view to the circumstances prevailing at the time of filing of the Complaint. The Respondent is responsible for the content at the disputed domain name at that time, and any subsequent changes would not be sufficient to correct the fact that the disputed domain name itself is confusingly similar to the Complainant’s GW and GWU marks and is being used both on the Respondent’s website and on the “Thirtyone Ventures” materials in connection with similar services. Accordingly, no after the fact changes to the website associated with the disputed domain name would confer rights or legitimate interests upon the Respondent in the present case.

It is particularly notable that the Respondent fails to explain or even comment upon the Complainant’s evidence with regard to the “Thirtyone Ventures” materials. The Respondent does not seek to disassociate itself from such content, which specifically includes the disputed domain name in its description of the Respondent’s alleged institution. This content suggests, in the absence of any countervailing evidence, that the Respondent is actively using the disputed domain name to provide distance learning services for a fee under a confusingly similar name to that of the Complainant’s well-known trademarks (using both a confusingly similar variant of its full name and its abbreviated form).

The Respondent comments that the “educated community” will know the difference between the Parties but supports this statement with no evidence and does not provide any definition of what it means by the term “educated community”. In any event, the Respondent’s statement constitutes a tacit acceptance that there will be confusing similarity between the two names to some degree, excepting the undefined “educated community”. In the Panel’s opinion, the likely effect of confusion in the present case must be viewed more objectively than through the eyes of any discrete (and undefined) community. When the disputed domain name and the Respondent’s alleged institution name are viewed in such objective terms, it is clear to the Panel that the Respondent’s use of the disputed domain name does not entitle it to rely upon any of the safe harbors available in paragraph 4(c) of the Policy, nor can it otherwise demonstrate rights and legitimate interests in the disputed domain name.

In all of the above circumstances, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case, finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore determines that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As a preliminary matter on this topic, it should be noted that the Respondent does not mount any substantive challenge to the Complainant’s case on registration and use in bad faith. The Response is informal in nature, is not supported by evidence, and is not procedurally compliant, in that it lacks the certification of accuracy and completeness required by paragraph 5(c)(viii) of the Rules. Consequently, the limited submissions which the Respondent does make require to be treated with some caution in the weighing of the Parties’ respective cases. As noted in the preceding section, the Panel is not prepared to accept the Respondent’s contention that the undefined “educated community” will be able to tell the difference between the Parties’ offerings or that, in any event, said “educated community” is the standard by which the likelihood of confusion should be determined in the present case.

Importantly, the Respondent does not address in any way the Complainant’s submissions regarding the “Thirtyone Ventures” materials, despite these appearing to contradict the Respondent’s assertion that it is operating a “think tank for peace research and development”, that its website content was uploaded by mistake, and that it has made no awards. The Respondent’s proposed changes to its website content are not specified and the Panel can reach no conclusion on these, other than that any such changes would come after the fact, and therefore are not determinative of this proceeding. In any event, the Panel doubts, given the similarity of the Respondent’s company name and the disputed domain name to the Complainant’s marks, that changes to the website content, however extensive, would cure the likelihood of confusion in the future, particularly as the disputed domain name itself would continue to be used for the Respondent’s alleged educational institution and would presumably continue to be promoted in the “Thirtyone Ventures” materials.

The record shows that the Respondent registered the disputed domain name with knowledge of the Complainant’s rights. The Respondent effectively admitted as much in its comments to the Florida Department of Agriculture and Consumer Services. In any event, given that the Respondent professes to be in the business of higher education, has founded a corporation in the United States, and plans to have its institution formally accredited as a university in the same territory by 2030, any denial on its part of prior knowledge of the Complainant’s well-known marks would simply not have been credible.

The Complainant has shown to the Panel’s satisfaction that the Respondent appears to be engaged in the operation of distance learning courses for a fee and that it is using a name and relative abbreviation (both in the disputed domain name and otherwise) which is confusingly similar to the Complainant’s marks. It is using the disputed domain name to advertise its services in association with the “Thirtyone Ventures” materials. The Respondent has published a website at the disputed domain name claiming accreditations which it has not been prepared to evidence, despite these being challenged by the Complainant, and has prominently reproduced a seal which corresponds closely with the Complainant’s University seal. This does not appear to be “dummy content” or to have been published as the result of a mistake, and it cannot be regarded as a good faith use of the disputed domain name in the circumstances of the present case. As far as the Panel is concerned, the Complainant has demonstrated that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of said site in terms of paragraph 4(b)(iv) of the Policy.

In all of the above circumstances, the Panel finds that the disputed domain name was registered and has been used in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have been 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 <gwuop.org> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: May 3, 2021