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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EdFund v. Jack Benny

Case No. D2007-0805

 

1. The Parties

Complainant is EdFund of Rancho Cordova, California, United States of America, represented by Malovos & Mendoza, LLP, United States of America.

Respondent is Jack Benny of Battlefield, Missouri, United States of America.

2. The Disputed Domain Name and Registrar

The disputed domain name <edfundstudentsfirst.com>is registered with eNom. The records maintained by eNom show that the disputed domain name was first registered on April 4, 2006. The Panel notes that as of March 14, 2007, the disputed domain name was allegedly registered in the name Wangshi Jun, at an address in Rancho Cordova, CA, United States of America. Immediately after Complainant sent a notice of infringement to eNom on March 14, 2007, complaining about the activities of Wangshi Jun, the disputed domain name was allegedly transferred to Respondent Benny on March 15, 2007.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2007. On June 5, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 5, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform disputed domain name Dispute Resolution Policy (the “Policy”), the Rules for Uniform disputed domain name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform disputed 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 June 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2007.

The Center appointed Richard Allan Horning as the sole panelist in this matter on July 31, 2007. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel has independently satisfied himself that all necessary formalities have been observed and that the matter may be submitted to the Panel for Decision.

The Panel finds that it was properly constituted.

 

4. Factual Background

Complainant is a California nonprofit public benefit corporation formed to provide student loan guarantee services under the Federal Family Education Loan (FFEL) Program, a source of financial aid for postsecondary education in the United States of America. Complainant asserts that it is one of the largest guarantee servicers in the United States of America, providing students with a wide range of financial aid and debt management information while supporting schools with advanced loan processing solutions and default prevention techniques. Complainant asserts that it processes more than US$10.1 billion in student loans annually and manages a portfolio of outstanding loans valued at US$27 billion.

According to the Complaint, Complainant discovered a website using the disputed domain name at “www.edfundstudentsfirst.com” in early March 2007. Complainant asserts that this website was an exact duplicate of Complainant’s website at “www.edfund.org”, going so far as to include Complainant’s copyright and trademark notices. Complainant asserts that the only difference between its website and the website appearing at the address about which the Complaint is made, at that time, was the email address provided for contact purposes.

On March 14, 2007, Complainant sent a notice of infringement under the Digital Millennium Copyright Act to eNom. eNom had registered the disputed domain name to Wangshi Jun, located in Rancho Cucamonga, California, United States of America. The very next day – March 15, 2007 – Complainant learned that the registrant of the infringing website was changed from Wangshi Jun to Respondent Jack Benny. Complainant asserts that it then sent a cease and desist letter to Respondent Jack Benny. Neither Respondent Benny nor Mr. Jun responded to the cease and desist letters, and although there was no response to the notice of infringement the infringing website was allegedly disabled.

At some point between March 15, 2007 and prior to May 14, 2007, the disputed domain name was used in support of a website displaying an exact copy of the Alabama Student Loan Program’s website, including their copyright notices. That website included reference to trademarks belonging to Complainant. On May 14, 2007, Complainant sent another notice of infringement to eNom. On May 15, 2007, eNom responded via email that ‘[t]he domain name in question is not currently being redirected to any website.”

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the dispute domain name, and that the dispute domain name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, and a default was entered.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to a trade-mark 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. Identical or Confusingly Similar

Complainant is the owner of the following registered trademarks implicated in the present dispute:

1. EdFund STUDENTS FIRST (words and design). U.S. Trademark Registration No. 2590833, first used in interstate commerce on January 2, 1997, and registered with the PTO on July 9, 2002.

2. EdFund STUDENTS FIRST (words and design). U.S. Trademark Registration No. 2627395, first used in interstate commerce on January 2, 1997, and registered with the PTO on October 1, 2002.

3. EdFund (word and design). U.S. Trademark Registration No. 2623337, first used in interstate commerce on January 2, 1997, and registered with the PTO on September 24, 2002.

4. EdFund (word and design). U.S. Trademark Registration No. 2665549, first used in interstate commerce on January 2, 1997, and registered with the PTO on December 24, 2002.

5. EdFund (word). U.S. Trademark Registration No. 2608901, first used in interstate commerce on January 2, 1997, and registered with the PTO on August 20, 2002.

6. EdFund (word and design). U.S. Trademark Registration No. 2682524, first used in interstate commerce on January 2, 1997, and registered with the PTO on February 4, 2003.

7. EdFund (word and design). U.S. Trademark Registration No. 2612162 first used in interstate commerce on January 2, 1997, and registered with the PTO on August 27, 2002.

The Panel notes that these trademarks were in use by Complainant long before the disputed domain name was registered on April 4, 2006.

The Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s trademarks. Respondent has used the Complainant’s registered mark, “EdFund Students First” and “.com”

The sole difference between the trademarks at issue and the disputed domain name is the addition of the “.com” suffix, making them identical for purposes of this dispute. While the disputed domain name <edfundstudentsfirst.com> has no spaces or upper case lettering, the elimination of space “are differences without legal significance from the standpoint of comparing” the disputed domain name to the registered trademarks of the Complainant. E.g., The Frozfruit Company v. Maui Bound Media Group, WIPO Case No. D2000-0851; Brookfield Communications v. West Coast Entertainment (9th Cir. 1999)174 F.3d 1036, 1055.

The Panel finds that the disputed domain name is identical to the Complainant’s registered marks, and that Respondent intentionally adopted and used the disputed domain name to create confusion.

B. Rights or Legitimate Interests

Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. As noted above, Complainant’s trademarks long predate the Respondent’s registration of its domain name. The record indicates that there is no relationship between Complainant and Respondent giving rise to any license, permission or authorization of the disputed domain name. Respondent failed to respond to the Complaint.

The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy in that that the Respondent has no rights or legitimate interests in the disputed domain name. E.g., Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095.

It is clear from the evidence that the sole purpose of Respondent’s use of the disputed domain name was and is to divert Internet traffic intended for the Complainant to the Respondent’s own website for illegal purposes – scamming students and others and creating opportunities for identity theft.

C. Registered and Used in Bad Faith

The disputed domain name is virtually identical and confusingly similar to the Complainant’s trademarks. A likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site. In this regard, prior WIPO UDRP decisions have established that attracting Internet traffic by using a domain name identical or confusingly similar is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See e.g., Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319.

Respondent appears to be engaged in a game of “cat and mouse” for the sole purpose of obtaining personal information from unsuspecting borrowers which could be used for identity theft. The websites mounted by Respondent, when compared to Complainant’s website, changed only the email contact. These websites targeted entities that routinely receive personal information including social security numbers and financial information from borrowers. This website was set up to capture that information.

While the Respondent’s prior use of the disputed domain name was clearly infringing and done in bad faith, the continued passive holding of the domain name even after the website has been removed is an act of bad faith requiring transfer of the disputed domain name to the Complainant. In this regard the present matter is governed by Panelist Andrew Christie’s of-noted decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, as there,

(1) Complainant’s trademarks were in widespread and substantial use in support of a consumer service associated with the marks.

(2) Respondent failed to provide any evidence of any actual or contemplated good faith use of the dispute domain name.

(3) Respondent took active steps to conceal its true identity, by transferring the domain name when confronted with the infringing activity, providing misleading and incorrect address and contact information with the registrar, and operating under a name that is not a registered business name.

(4) Respondent has actively provided, and failed to correct, false contact details, breached applicable copyright and trademark laws, and breached of its registration agreement.

(5) the use of the domain name by Respondent is clearly illegitimate and probably part of an illegal scheme of identity theft.

The Panel finds that Respondent’s prior use of the disputed domain name and the current passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by Respondent.

7. Decision

For all the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <edfundstudentsfirst.com> be transferred to Complainant.


Richard Allan Horning
Sole Panelist

Dated: August 13, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0805.html

 

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