WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Laureate Education, Inc., Santa Fe University of Art and Design, NewSchool of Architecture and Design v. PrivacyProtect.org / Flora Tang, WH T Design

Case No. D2012-1610

1. The Parties

The Complainants are Laureate Education, Inc. of Maryland, United States of America (“USA”), Santa Fe University of Art and Design of New Mexico, USA and NewSchool of Architecture and Design of California, United States of America, represented by Venable, LLP, USA.

The Respondent is PrivacyProtect.org of Queensland, Australia, Flora Tang of Kowloon, Hong Kong, China and WH T Design of Kowloon, Hong Kong, China.

2. The Domain Names and Registrar

The disputed domain names <newschoolarch.org> and <santafeuniversity.info> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2012. On August 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 11, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 13, 2012 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 August 14, 2012. The Center sent an email communication to the Complainant on August 15, 2012 with regards to the mutual jurisdiction elected by the Complainant. In response, the Complainant filed a second amended Complaint on August 15, 2012.

The Center verified that the Complaint together with the amended Complaints 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2012. An email communication from the Respondent was filed with the Center on August 22, 2012. A further email communication from the Respondent was filed with the Center on September 11, 2012. The Respondent filed no formal Response. The Respondent’s email communications are described in section 5 below.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on September 25, 2012. 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 Complainants named in the dispute provide educational services and are located in USA. The second Complainant operates a website at “www.santafeuniversity.edu” and the third Complainant operates a website at “www.newschoolarch.edu“ in connection with their respective educational institutions.

The Respondent Flora Tang, WH T Design registered the two disputed domain names <santefeuniversity.info> and <newschoolarch.org > on March 8, 2012 under privacy protection.

5. Parties’ Contentions

A. Complainant

The first Complainant contends it has an international network of institutions of higher education with more than fifty accredited campus-based and online universities that offer undergraduate and graduate degree programs to over 550,000 students around the world. The second Complainant Santa Fe University of Art and Design is an affiliate of the first Complainant and NewSchool of Architecture and Design, the third Complainant, is a wholly owned subsidiary of the first Complainant. The Complainants collectively are referred to in these proceedings as “the Complainant”.

The Complainant states that its students come from twenty-one different countries covering the continents of North America, Latin America, Europe and Asia. Its institutions offer more than one hundred and thirty career focused under-graduate, master’s and doctoral degree programs in the areas of architecture, art, business, culinary arts, design, education, engineering, health science, hospitality, information technology, law and medicine. The Complainant contends that among its flagship institutions in the USA are the Santa Fe University of Art and Design in New Mexico and the NewSchool of Architecture and Design in San Diego.

The Complainant states it has registered trademark rights for SANTA FE UNIVERSITY OF ART AND DESIGN and as evidence has provided a copy of its US trademark registration certificate for the mark. The Complainant contends it has used the name New School of Architecture from 1980 and changed the name to the New School of Architecture and Design in 2001 and claims it has irrefutable common law trademark rights in the name. The Complainant argues that the Respondent has used the Complainant’s abbreviated trademark in the disputed domain name and relies on Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656, further arguing that the Respondent’s use of exact copies from the Complainant’s web pages is a deliberate attempt to attract potential students and employers.

The Complainant states that New School of Architecture and Design offers various undergraduate and masters degree programs and is one of the few accredited institutes offering architecture programs in western USA. The Complainant states that the school has featured in several awards and contests and has provided evidence to support its contentions. The Complainant states that New School of Architecture advertises through its website and with the Laureate Network and further states that a Google search for the name New School of Architecture returns over 118,000 hits.

The Complainant argues that the disputed domain name <santefeuniversity.info> is very similar to its registered trademark SANTE FE UNIVERITY OF ART AND DESIGN and to its website ”www.santefeuniversity.edu”.

The Complainant asserts that the Respondent’s websites has used exact copies of web pages from the Complainant’s websites and provides a page-to-page comparison to highlight this, arguing that it is not a co-incidence but is a deliberate intention to imitate and impersonate the Complainant. Arguing further that the Respondent has no legitimate rights over the disputed domain names, the Complainant contends that the Respondent does not use the disputed domain names in connection with a bona fide business and by copying the web pages from the Complainant’s websites it indicates prior knowledge of the Complainant’s rights. The interfaces for application and tuition, suggest possible use for fraudulently obtaining personal identity or financial information adds the Complainant. As these facts indicate the domain names were acquired and used in bad faith by the Respondent, the Complainant requests for the transfer of the disputed domain names.

B. Respondent

The Respondent did not file a formal response in the proceedings but sent two email communications to the Center. The first email is dated August 22, 2012, and in that email communication the Respondent states that the contents of the Respondent’s websites have been emptied. The Respondent then claims the rights to own the disputed domain names on the basis that there are other similar domain names that are not owned by the Complainant and are registered and owned by third parties. The Respondent provides examples of these domain names and states that the disputed domain name <santefeuinversity.org> is not owned by Sante Fe University of Art and Design and that the NewSchool of Architecture and Design does not own the domain names <newschoolarch.com> and <newschoolarch.net>.

The Respondent argues that just as other third parties own domain names that are similar to the Complainant’s names, the Respondent likewise has the right to purchase the domain names <newschoolarch.org> and <santefeuniversity.info> for its own purposes. The Respondent concludes by stating that that the Complainant does not hold legal rights over the domain names that the Respondent has registered.

The Center replied to the Respondent’s email of August 22, 2012 indicating the due date for the Response as September 6, 2012 and enquired whether the Respondent’s email could be treated as a complete Response in the proceedings, and in the absence of any confirmation from the Respondent, whether the email could be treated as the Respondent’s Response. The Respondent did not answer the queries in the Center’s email but merely sent another email on September 11, 2012 repeating the same contents as in the previous email of August 22, 2012. The Panel therefore treats the Respondent’s email communication as its Response and proceeds to determine the case on merits.

6. Discussion and Findings

A complainant has to establish three factors under the Policy paragraph 4 (a) to obtain the remedy of transfer of a domain name. These are:

(i) The 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 domain name; and

(iii) The domain name was registered and is being used in bad faith by the respondent.

A. Identical or Confusingly Similar

The first factor under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain names are identical or confusingly similar to a trademark in which it has rights.

The Complainant has argued that there is confusing similarity of the disputed domain names to its marks as the Respondent has used the same abbreviated version of its marks that the Complainant uses for its main websites. Furthermore, as the Respondent has used exact copies of pages from the Complainant’s website to imitate and impersonate the Complainant, there is a likelihood of confusing similarity.

The Complainant has filed the copy of its trademark registration certificate for the mark SANTA FE UNIVERSITY OF ART AND DESIGN, bearing number 4004166, showing the date of registration is July 26, 2011. Trademark registration is recognized as prima facie proof of validity of rights in a trademark. See. Arla Foods amba v. Bel Arbor / Domain Admin, Privacy Protect.org, WIPO Case No. D2012-0875, discussing that the registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The Panel finds that the disputed domain name <santafeuniversity.info> has used the distinguishing part of the mark, namely “Santa Fe University”, and the omission of the generic words “of art and design”, does not impact the confusingly similarity of the disputed domain name with the trademark. For the reasons discussed, the Panel finds that the disputed domain name <santefeuniversity.info> is confusingly similar to a trademark in which the Complainant has rights.

The Complainant has claimed common law unregistered trademark rights in its name NEWSCHOOL OF ARCHITECTURE AND DESIGN.

The Complainant, in order to establish unregistered rights must demonstrate that the mark in question is being used in trade or commerce as a distinct identifier of the goods or services provided by the Complainant. The Panel finds the Complainant has provided evidence that establishes it uses the name NEWSCHOOL OF ARCHITECTURE AND DESIGN as a distinct identifier for its educational services. It has also submitted evidence of being an accredited institution offering degree courses in architecture, and that it advertises and provides information of its educational services through its website. The Panel also finds that there are numerous online references to the Complainant and that its main webpage is operated from the domain name <newschoolarch.edu>.

The Complainant’s other submission is regarding the confusing similarity arising from the Respondent’s use of the same abbreviation of its name in the disputed domain name as it uses for operating its main website. The Complainant relies on the case: Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656, where the respondent’s use of an abbreviation that was identical to the domain name used by the complainant for its own website resulted in a finding of confusing similarity, despite it not being the same as the mark in question.

The Panel finds that the disputed domain name <newschoolarch.org> is identical to the abbreviation that the Complainant uses to identify itself online, namely <newschoolarch.edu > from which it operates its main website. The Panel also recognizes that universities and educational institutions like the Complainants use their main website as a vital resource for conducting online business transactions. The Panel finds that the Complainant’s website is being used to reach potential students through advertisements, it provides information to applicants and is also used for conducting online application process including collecting fees online through the website. These facts establish that the Complainant uses the domain name <newschoolarch.edu> for commercial actives.

Based on the submissions and the evidence presented by the Complainant, there is sufficient basis to find that the Complainant offers its services under the name NewSchool of Architecture and Design and through its website at “www.newschoolarch.edu” and that the public associate the name “NewSchool of Architecture and Design” with the Complainant. This leads the Panel to conclude that the Complainant has common law rights in the name NewSchool of Architecture and Design for the purposes of this proceeding. Given the Complainant’s common law rights in the mark NEWSCHOOL OF ARCHITECTURE AND DESIGN, the Respondent’s use of the same abbreviation of the mark, in the Panel’s view, is an attempt by the Respondent to replicate the online identity of the Complainant and is likely to cause confusion to the unsuspecting Internet user. For the reasons discussed, the disputed domain name <newschoolarch.org> is found to be confusingly similar to a mark in which the Complainant has rights and is found to be identical to the abbreviation of the mark that the Complainant uses as its online identity for conducting its business, namely <newschoolarch.edu>.

Regarding the Complainant’s contentions that its website content has been copied by the Respondent and is a reason for finding confusing similarity, it is generally acknowledged that website content is not considered relevant for the analysis, See Red Bull GmbH v. Bartkus/DomainsByProxy.com, WIPO Case No. D2012-0465¹. The touchstone principle of confusing similarity stems from the test of an unsuspecting user who encounters the disputed domain name and is likely to be confused by the domain name per se, even before proceeding to the website. Therefore the analysis of confusing similarity in domain name disputes is generally confined to finding confusing similarly between the disputed domain name and the mark in question. In the circumstances described in the present case, the Panel finds that such confusing similarity exists between the disputed domain names registered by the Respondent and the Complainant’s marks in which it has proven rights.

The Complainant has accordingly satisfied the first requirement of paragraph 4 (a) of the Policy.

B. Rights or Legitimate Interests

The second factor under paragraph 4(a) of the Policy requires the Complainant to show that the Respondent lacks rights or legitimate interests in the disputed domain names. It is sufficient for the Complainant to make a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. See paragraph 2.1 of WIPO Overview of WIPO Of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”).

The Complainant has argued that the Respondent does not use the disputed domain names in connection with a bona fide offering of goods and services. Further, the fact that the Respondent has copied pages of the Complainant’s websites is evidence that the Respondent has no legitimate interests in the disputed domain names.

The Respondent in these proceedings had the opportunity to show that it has rights or legitimate interests in the disputed domain names according to the provisions mentioned under paragraph 4(c) of the Policy. The Panel finds that the Respondent has not made any submissions that establish it has any rights or legitimate interests, or provided any evidence that shows it has rights or legitimate interests in the disputed domain names.

The core argument offered by the Respondent is that other third parties have registered similar domain names under different generic top-level domains and therefore the Respondent claims it has rights to the disputed domain names. The use of the name or the mark by other third parties is however not a valid defense for the Respondent’s case, as observed in The Open University v. Net School Limited, WIPO Case No. D2001-0459, where it was found that if the term or mark in question has been used by other entitles, it does not entitle the respondent rights in the domain name especially if the respondent has not been able to show any connection with the words used in the disputed domain name. Further, the other third parties could have some connection with the complainant that the respondent may not be aware of.

The Respondent has also argued that it has registered the disputed domain names for its “own purposes”, but has failed to specify what these purposes are and the Respondent has not presented any supporting evidence that indicate that these “purposes” are likely to establish any rights or legitimate interests in its favor. In the absence of any details or evidence from the Respondent to demonstrate rights or legitimate interests, the Panel finds that the evidence provided by the Complainant validates the arguments that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services and has no rights or legitimate interests in the disputed domain names.

Based on an assessment of the material on record and the parties’ submissions, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names which the Respondent has not successfully rebutted.

The Complainant has satisfied the second requirement of paragraph 4 (a) of the Policy.

C. Registered and Used in Bad Faith

The third factor under paragraph 4 (a) of the Policy requires the Complainant to establish that the disputed domain names were registered in bad faith and are being used in bad faith.

The Complainant has argued that the abbreviations of its marks are used in the disputed domain names to imitate and impersonate the Complainant and that the web pages copied by the Respondent indicate prior knowledge of Complainant’s rights and this is indicative of the Respondent’s bad faith. The Complainant has also submitted that the Respondent has placed interfaces such as application and tuition on its website, and argues there is a possibility of fraudulent misuse by the Respondent for obtaining personal identity information and financial information.

The Respondent has not offered any valid explanation for registration of the disputed domain names or why the same abbreviations of the Complainant’s marks are used in the disputed domain names. The Respondent’s case is not convincing and the Respondent’s action of removing the contents of the websites after being put on notice of the Complaint by no means strengthens the Respondent’s case. On balance, given the facts and circumstances at hand, it can be inferred that the Respondent has registered and uses the two disputed domain names for the purpose of diverting persons looking for information about the Complainant’s universities and such use is deemed to be use in bad faith . See University of Alaska v. Domains for Life and Mike Kane, WIPO Case No. D2004-0564 (trying to capture Internet users looking for university information and redirecting them to respondent’s site is bad faith use of a domain name).

Given the Complainant’s prior rights and the circumstances discussed, in the Panel’s view, it can be inferred that the disputed domain names were registered by the Respondent with an intention to derive false affiliation or endorsement with the Complainant and its marks. This is considered bad faith registration and use as described under paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy that the Respondent has registered the disputed domain names in bad faith and uses the disputed domain names in bad faith.

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 names <newschoolarch.org> and <santafeuniversity.info> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Dated: October 9, 2012

¹ Red Bull GmbH v. Bartkus/DomainsByProxy.com, WIPO Case No. D2012-0465: Where it was discussed that the content of the website corresponding to the disputed domain name is not relevant in such analysis, and the mere incorporation of a famous trademark in a domain name is sufficient to create confusion for the public and to disrupt the business of the complainant by diverting its potential consumers to websites unrelated to it .