Westcoastuniversity.online

The timeline behind westcoastuniversity.online

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION WEST COAST UNIVERSITY, INC. v. JASON TAN / International Taekwondo Confederation Claim Number: FA2211002018701 PARTIES Complainant is WEST COAST UNIVERSITY, INC. (“Complainant”), represented by Michelle Hon Donovan of Duane Morris, LLP, California, USA. Respondent is JASON TAN / International Taekwondo Confederation (“Respondent”), Malaysia. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <westcoastuniversity.online>, registered with GoDaddy.com, LLC. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. James Bridgeman SC as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on November 2, 2022; Forum received payment on November 2, 2022. On November 3, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <westcoastuniversity.online> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On November 8, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@westcoastuniversity.online. Also on November 8, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. On December 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the disputed domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant submits that the disputed domain name <westcoastuniversity.online> is almost identical to Complainant’s WEST COAST UNIVERSITY registered service mark arguing that it contains the mark in its entirety and that the addition of the generic or descriptive term “online” after Complainant’s mark does not distinguish the disputed domain name from Complainant’s service mark because it is a term commonly added to service marks that describes a university with an online education program. See Lilly ICOS LLC v Joe Pestrak, FA464558 (Forum May 31, 2005) (finding that the mere addition of a generic or descriptive abbreviation “dr” for “doctor” to a registered mark did not negate the confusing similarity of the domain name). Complainant adds that confusion is particularly likely because Complainant does, in fact, offer online programs at its website at <https://westcoastuniversity.edu/online-programs> as shown in the screen capture annexed to the Complaint. Therefore, rather than distinguishing Respondent’s domain name, the addition of the term “online” creates a false impression that Respondent is associated or affiliated with Complainant and its online education programs. Further, because spaces are not allowed in domain names the addition of the generic Top Level Domain (“gTLD”) extension is required, and so its presence or absence is inconsequential to a Policy ¶ 4(a)(i) analysis. See Circuit City Stores, Inc. v. Richard Leeds d/b/a Neongecko Inc., FA0212000139662 (Forum Feb. 2, 2003) citing Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Complainant next alleges that Respondent has no rights or legitimate interest in the disputed domain name arguing that Respondent does not go by the name “WEST COAST UNIVERSITY” and that Respondent has no trademarks or service marks for WEST COAST UNIVERSITY. Conversely, Complainant argues that it owns four federally registered service marks described below and has common law trademark rights to its name “WEST COAST UNIVERSITY” dating back 100 years. Complainant adds that it has not licensed or otherwise authorized Respondent to use its service mark or the disputed domain name. See Lockheed Martin Corporation v. Randy Roberson, FA0409000323762 (Forum Oct. 19, 2004) (finding no legitimate rights or interest where respondent was not licensed or authorized to register or use domain names that incorporated complainant’s mark and was not an owner or beneficiary of a trademark or service mark that is identical to the domain name). Complainant contends that Respondent’s use of the disputed domain name can be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, D2000-0847 (WIPO May 28, 2001) (finding that “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services.”) A screen capture of the webpage to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, shows that the disputed domain name is being used to direct Internet users to the Registrar’s placeholder site, which it is submitted is similar in character to a “coming soon” webpage, and which constitutes neither a genuine use of the disputed domain name, nor a bona fide offering of goods and services. Complainant argues that 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. See Circuit City Stores, Inc. v. Richard Leeds d/b/a Neongecko Inc., FA0212000139662 (Forum Feb. 2, 2003) (finding that use of a domain name for the calculated purpose of attracting mistaken users by copying complainant’s trademark is evidence of lack of legal interest). Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that Respondent’s primary purpose in registering the disputed domain name was to sell it to the trademark owner or one of its competitors for a price in excess of out-of-pocket expenses related to the disputed domain name, which the Policy holds constitutes bad faith registration. See Policy paragraph 4(b)(i). See State Farm Mutual Automobile Insurance Company v. Federico Olivares Velasco, FA 2208002007776 (Forum Sept. 1, 2022) (Respondent was not making any active use of the domain name at issue and failed to provide any explanation of this fact. The panel inferred that the respondent registered the domain name at issue in bad faith because it intended to use it in a manner calculated to create and exploit confusion, most likely by selling the domain name.) Referring to screen capture of the web page to which the disputed domain name currently resolves which is exhibited in an annex to the Complaint, Complainant submits that the exhibit shows that the disputed domain name is currently parked, courtesy of the Registrar. Complainant argues that from the inception of the Policy, panelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Think Mutual Bank v. JESUS RIESCO MILLA, FA2208002008470, (Forum Sept. 23, 2022). Complainant argues that the factors that are typically considered when determining bad faith under the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealment of his//her/their identity or use of false contact details; and (iv) the implausibility of any good faith use to which the domain name at issue may be put. See Guess? IP Holder L.P. & Guess?, Inc. v. Louis Klarevas / Web Development LLC, FA 1739474 (Forum Aug. 24, 2017) (reciting factors listed in WIPO Overview relevant to inference of bad faith from passive holding of a domain name). Complainant contends that in this proceeding its WEST COAST UNIVERSITY mark has a high degree of reputation in the education community and has been in use for over 100 years. Additionally, Complainant claims that was ranked #4 in the 2022 rankings for Best Nursing Schools in California by Nursing Schools Almanac as shown in a ranking table exhibited in an annex to the Complaint. Complainant adds that evidence shows that Respondent is concealing his identity by way of a proxy service, and furthermore argues that it is entirely implausible that the disputed domain name could be used in any way that would constitute good faith, because use of the disputed domain name for an online educational institute called “West Coast University”, would undoubtedly be infringing use, which can never be good faith use. Given the high degree of reputation of the WEST COAST UNIVERSITY mark, the lack of legitimate use of the disputed domain name, Respondent concealing his identity by way of a proxy service, and the implausibility of any good faith use of the domain name, it may be assumed that the registration and use of Complainant’s mark in the disputed domain name could only be for the purposes of selling it for profit to Complainant for use with its online programs or to Complainant’s competitors. Respondent’s attempt to hide its true identity on the published WHOIS by availing of a proxy service further demonstrates bad faith. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding bath faith where respondent took “deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made.”). B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS Complainant is a provider of educational services and is the owner of the WEST COAST UNIVERSITY service mark for which it owns the following United States of America federal registrations: · United States registered service mark WEST COAST UNIVERSITY, registration number 3,232,786, registered on the Principal Register on April 24, 2007 for services in international class 41; · United States registered service mark WEST COAST UNIVERSITY (and Design), registration number 3,239,193, registered on the Principal Register on May 8, 2007 services in international class 41; · United States registered service mark WEST COAST UNIVERSITY (and Design), registration number 3,744,516, registered on the Principal Register on February 2010 for services in international class 41; · United States registered service mark WEST COAST UNIVERSITY (and Design), registration number 3,744,530, registered on the Principal Register on February 2, 2010 for services in international class 41. Complainant has established Internet presence and maintains a website to which its eponymous domain name <westcoastuniversity.edu> resolves. The disputed domain name <westcoastuniversity.online> was registered on July 23, 2022 and is inactive resolving to a parked page maintained by the registrar which contains links to education-related sites in the screen capture exhibited in the Complaint. There is no information available about Respondent except that which is provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name. The Registrar has confirmed that the Respondent, who availed itself of a privacy service to conceal his/her/their identity on the published WHOIS, is the registrant of the disputed domain name. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”). Identical and/or Confusingly Similar Complainant has provided convincing, uncontested evidence that it has rights in the WEST COAST UNIVERSITY service mark established by the ownership of the portfolio of United States of America federal service mark registrations described above and the extensive use of the mark for over a hundred years including now and its website offering and providing its online education services as illustrated in the screen captures of Complainant’s own website. The evidence shows that Complainant’s reputation has been enhanced by ranking #4 among the Best Nursing Schools in California in 2022. The disputed domain name consists of Complainant’s WEST COAST UNIVERSITY in its entirety, with no other element except the gTLD <.online> extension, which may, for the purposes of comparison and making a determination in respect of confusing similarity in this proceeding, be ignored because Internet users will be aware that a gTLD extension is a necessary technical element for a domain name. This Panel finds therefore that the disputed domain name is identical to the WEST COAST UNIVERSITY service mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that · Respondent is not commonly known by the name “WEST COAST UNIVERSITY”; · Respondent does not own the trademark or service mark WEST COAST UNIVERSITY; · conversely, Complainant has rights in the WEST COAST UNIVERSITY mark established by its four federal service mark registrations described above and common law trademark rights dating back 100 years; · Complainant has not licensed or otherwise authorized Respondent to use its service mark or the disputed domain name; · Respondent’s use of the disputed domain name can be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv), as screen capture of the Registrar’s webpage to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, shows that the Registrar’s webpage is merely a placeholder site, similar in character to a “coming soon” webpage and constitutes neither a genuine use of the disputed domain name, nor a bona fide offering of goods and services. It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests. Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii). Registration and Use in Bad Faith The disputed domain name was registered on July 23, 2022 long after Complainant first acquired its registered rights in the WEST COAST UNIVERSITY mark and one hundred years after it commenced trading using the mark. The disputed domain name is identical to Complainant’s eponymous WEST COAST UNIVERSITY service mark and Complainant’s own domain name which it uses as the address of its website to offer services including “online“ courses. This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s mark in mind, intending to take predatory advantage of Complainant’s goodwill and reputation in the WEST COAST UNIVERSITY service mark. The uncontested evidence adduced by Complainant also shows that the disputed domain name is inactive, being passively held and based on the evidence adduced and the circumstances shown in the record, this Panel finds that on the balance of probabilities it may be inferred that the disputed domain name was registered and is being held by Respondent for the purposes of sale to Complainant, or a third-party wishing to take predatory advantage of Complainant’s goodwill and reputation in the WEST COAST UNIVERSITY mark. The uncontested evidence therefore discloses circumstances indicating that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring it to Complainant who is the owner of the WEST COAST UNIVERSITY service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name which is expressly stated and constitutes bad faith registration and use pursuant to the Policy. In making this decision this Panel has considered and accepts Complainant’s submissions that the degree of distinctiveness or reputation of the Complainant’s mark, Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good faith use, Respondent’s concealment of his identity on the published WHOIS, and the implausibility of any good faith use to which the disputed domain name may be put, are all factors which taken together prove on the balance of probabilities that Respondent’s passive holding of the disputed domain name constitutes registration and use in bad faith. As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third and final element of the test Policy paragraph 4(a)(iii) and is entitled to the relief sought. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <westcoastuniversity.online> domain name be TRANSFERRED from Respondent to Complainant. ____________________________________ James Bridgeman SC Panelist Dated: December 7, 2022 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.