The Complainant is National Collegiate Athletic Association, United States of America (“United States”), represented by Loeb & Loeb, LLP, United States.
The Respondent is Nguyễn Văn Lư, Viet Nam.
The Disputed Domain Name <elegibilitycenter.org> is registered with April Sea Information Technology Corporation (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 6, 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 December 7, 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 December 7, 2021.
The Center sent an email communication to the Parties, in both English and Vietnamese, indicating that the Language of the Registration Agreement was Vietnamese. On December 7, 2021, the Complainant requested the Language of the Proceeding be English. No communication was received from the Respondent regarding this matter.
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 December 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2022.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on January 11, 2022. 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.
On January 19, 2022, pursuant to UDRP Rules Paragraphs 10 and 12, the Panel issued an Administrative Panel Procedural Order No. 1, requesting the Complainant to provide further evidence demonstrating the acquired distinctiveness of the trademarks ELIGIBILITY CENTER. The due date for the Complainant to reply the Procedural Order No. 1 was January 24, 2022. The Panel then granted the Respondent until January 27, 2022 to comment on the Complainant’s submission.
On January 25, 2022, the Center forwarded the Complainant’s response to the Panel. No comments were received from Respondent.
The Complainant, National Collegiate Athletic Association (“NCAA”), is a member-led organization that governs intercollegiate athletics in the United States. According to the Complainant, the Complainant consists of 1,098 colleges and universities, and 102 athletic conferences. The Complainant organizes the athletic programs of many colleges and universities in the United States and Canada. The Complainant is also the registered owner of the trademarks NCAA which are registered under some United States trademark registrations, including but not limited to the trademark registration No. 976117, registered on January 1, 1974.
The Complainant created the ELIGIBILITY CENTER program in October 2007 to provide students with information on the requirements and registration way to become a student athlete with the Complainant. The Complainant has, since then, intensively used its trademarks ELIGIBILITY CENTER and expended such use to various related products and services.
Additionally, the Complainant is the registrant of the domain name <eligibilitycenter.org> registered on February 2, 2009, which features the trademark ELIGIBILITY CENTER. The website under this domain name receives millions of visitors annually, for example, such website had over 37 million visitors in 2021 and over 37 million visitors from 240 countries around the world since 2014.
The Disputed Domain Name was registered on March 1, 2010. As of the date of this Decision, the Disputed Domain Name still resolves to a parking page containing sponsored links to various third parties’ contents, including those associated with sport or athletic programs for colleges.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
First, the Complainant claims it has common law rights in the trademark ELIGIBILITY CENTER which has become distinctive of the Complainant’s goods and services based on the Complainant’s exclusive use of the trademark for over fourteen (14) years. To prove such acquired distinctiveness of the trademark ELIGIBILITY CENTER, the Complainant submits the following main contentions in the Complaint and the Supplemental Filing:
- the wide reputation of the Complainant, namely, the Complainant was founded in 1906 and is a member-led organization that governs intercollegiate athletics in the United States;
- the history and purpose of the ELIGIBILITY CENTER program, namely, this program was created in October 2007 to provide students with information on the requirements and registration way to become a student athlete at the Complainant;
- the Complainant registered the domain name <eligibilitycenter.org> incorporating its ELIGIBILITY CENTER trademark on February 2, 2009. The website under this domain name receives millions of visitors annually. Namely, such website had over 13 million views in 2021, over 37 million visitors from 240 countries around the world since 2014. Further, there have been nearly 10 million search attempts for the term “Eligibility Center” since 2014;
- the Complainant’s brochures under the ELIGIBILITY CENTER trademark have been downloaded thousands of times each year. For example, one of the brochures under the ELIGIBILITY CENTER trademarks has been downloaded over 25,000 times in 2020;
- the Complainant regularly holds webinars bearing the ELIGIBILITY CENTER trademarks. For example, in 2020, the Complainant held 220 webinars under the ELIGIBILITY CENTER trademark with a total audience of more than 20,000 views;
- the Complainant’s ELIGIBILITY CENTER Facebook account has over 5,000 followers, the Complainant’s ELIGIBILITY CENTER Instagram page has over 7,000 followers, and the Complainant’s ELIGIBILITY CENTER Twitter page has almost 53,000 followers;
- the Complainant has invested heavily in marketing products and services under the ELIGIBILITY CENTER trademark, devoting hundreds of thousands of dollars to marketing the products and services through a variety of media, including but not limited to the Internet. For example, each year the goods and services under the ELIGIBILITY CENTER trademarks are advertised to approximately 8 million high schools students, 40,000 high schools, 5,000 non-scholastic coaches, 2,000 international entities, and 1,100 NCAA member institutions;
- the amount of sales of the Complainant’s goods and services under the ELIGIBILITY CENTER trademark are over 10 million US dollars annually, since its inception in 2007;
- the Complainant’s ELIGIBILITY CENTER program constantly receives unsolicited media coverage from prominent sports news outlets, such as, ESPN, Fox Sports, USA Today Sports, etc. Further, such program is internationally recognized by being mentioned in the websites, brochures of international entities, namely, the United States government; Australian Embassy; Education USA; Commission for Cultural, Educational and Scientific Exchange between the United States of America and Spain; and
- the fact that the Respondent is targeting the Complainant and its ELIGIBILITY CENTER trademark supports the Complainant’s assertion that its trademarks have achieved significance as a source identifier.
Second, the Complainant asserts that the Disputed Domain Name is confusingly similar to the ELIGIBILITY CENTER trademark owned by the Complainant since the Disputed Domain Name is a common misspelling of the Complainant’s ELIGIBILITY CENTER trademark, in that the first letter “i” was replaced by the letter “E”. Therefore, the registration of the Disputed Domain Name is a clear case of “typosquatting”.
Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.org” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
First, the Complainant submits that the Respondent is not related to, affiliated or connected with the Complainant in any way. The Complainant also has never licensed or authorized the Respondent to use its ELIGIBILITY CENTER and NCAA trademarks, or to register any domain name incorporating the ELIGIBILITY CENTER trademark. Thus, in the absence of the said license or permission from the Complainant, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.
Second, the Complainant argues that there is no evidence that the Respondent is using or preparing to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services or making a legitimate non-commercial or fair use of the Disputed Domain Name. Instead, the Respondent’s use of the Disputed Domain Name constitutes an intent, for commercial gain, to misleadingly divert internet users to its website with a gateway for links to third-party websites promoting college sports-related services (unaffiliated with the Complainant) by using the Complainant’s registered trademarks and short name NCAA and Complainant’s ELIGIBILITY CENTER trademark. Thus, the Respondent’s use of the Complainant’s trademark to redirect users cannot and does not support a claim to rights or legitimate interests.
Third, the Complainant contends that there is no evidence showing that the Respondent has been known by “Elegibility Center” since the Respondent’s name is “Khoi Nguyen” and neither the WhoIs information nor the website under the Disputed Domain Name contains any evidence that the Respondent is commonly known by “Elegibility Center”.
Finally, the Complainant contends that it has more than satisfied its burden on this element and thus, now the incumbent is shifted to the Respondent to come forward with evidence refuting the Complainant’s assertions and establishing the Respondent’s rights or interests in the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
First, the Complainant contends that the Respondent knew of the Complainant and its rights in the ELIGIBILITY CENTER trademarks prior to registration of the Disputed Domain Name due to the facts that (i) the Domain Name is a common misspelling of the Complainant’s ELIGIBILITY CENTER trademarks, and (ii) the Respondent is using the Complainant’s short name and trademark NCAA next to the Complainant’s ELIGIBILITY CENTER trademark on the website under the Disputed Domain Name.
Second, the Complainant argues 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 ELIGIBILITY CENTER trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Specifically, the Respondent is using the Disputed Domain Name to misleadingly divert and lure Internet users and prospective college student athletes to the Respondent’s website containing competing commercial pay-per-click links.
Finally, the Complainant contends that the Respondent’s use of the Disputed Domain Name confusingly similar to Complainant’s trademarks in connection with a website featuring links to services competing to those of the Complainant, constitutes use of the Disputed Domain Name in bad faith.
With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions in both the initial Complaint and the Supplemental Filings.
(i) The Respondent’s Identity
The Panel notes that at the time the Complaint was filed on December 3, 2021, the Respondent was identified as “REDACTED FOR PRIVACY”. On December 6, 2021, the Registrar revealed the underlying registrant “Nguyễn Van Lu”. The Center sent an email communication to the Complainant on December 7, 2021, in which the name of Respondent was provided as “Nguyễn Văn Lư”, and invited the Complainant to submit an amendment to the Complaint. On December 7, 2021, the Complainant filed an amended Complaint, adding the underlying registrant “Nguyễn Văn Lư” as provided by the Center.
In this regard, in consideration of this case including the Respondent’s name and address, and the previous cases in which “Nguyễn Văn Lư” is also the Respondent, and the fact that “Nguyen Van Lu” may be the version without the tone marks (under the Vietnamese language) of “Nguyễn Văn Lư”, the Panel hereby, at its discretion, views that the Respondent of this case is “Nguyễn Văn Lư”, and proceeds with the decision against this Respondent.
(ii) Language of the Proceeding
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement is Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated December 7, 2021, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) submit the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding by December 10, 2021.
On December 7, 2021, the Complainant submitted a request that English be the language of the proceeding.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties' level of comfortability with each language, the expenses to be incurred, and the possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).
In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:
(i) the fact that the Complainant, an American entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;
(ii) the English language is quite popular in Viet Nam, where the Respondent appears to be located, and the Disputed Domain Name and the website thereunder contain English contents; these suggest that the Respondent has knowledge of the English language and would be able to communicate in English;
(iii) the Respondent did not object for English to be the language of the proceeding, and did not submit a Response in neither English nor Vietnamese.
Therefore, for the purpose of easy comprehension of the Complainant (ultimately, the party solely taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.
(iii) Delay in bringing the Complaint
The Panel finds that the Disputed Domain Name was registered in 2010, but the Complaint was filed with the Center in 2021. The Panel is of the same view as those in previous UDRP decisions mentioned in section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which held that “panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits”. However, similar to previous decisions, the Panel has taken into account this delay when considering the second and third elements requiring the Complainant to establish that the Respondent lacks rights or legitimate interests and that the Respondent has registered and used the Disputed Domain Name in bad faith (see, e.g., CeltonManx Limited v. Pham Dinh Nhut, WIPO Case No. D2014-0109).
(iv) The Respondent’s Default / Failure to Respond
The Respondent’s failure to file a Response or Supplemental Filing does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
The Complainant is required to establish the two following elements: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.
In the present case, the Complainant did not furnish the Panel with evidence that the Complainant possesses a valid trademark registration of ELIGIBILITY CENTER in any jurisdiction. Instead, the Complainant claims it has common law rights in the trademark ELIGIBILITY CENTER, which has become distinctive of the Complainant’s goods and services via the Complainant’s exclusive and lengthy use of the trademark.
The Panel views that the phrase “ELIGIBILITY CENTER” itself is, to a certain superficial extent, prima facie descriptive of the Complainant’s services, namely providing information on the requirements and way to register to become a student athlete at the Complainant’s organization. Thus, the Complainant has burden to present evidence that the trademarks ELIGIBILITY CENTER have acquired distinctiveness/secondary meaning, see paragraph 4 section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In this regard, the Panel takes into consideration the following factors:
(i) the Complainant, a member-led organization, consists of 1,098 colleges and universities, and 102 athletic conferences that has wide reputation. This supports the distinctiveness of the trademarks ELIGIBILITY CENTER;
(ii) in the Panel’s view, the Complainant’s evidence of use of the trademarks “ELIGIBILITY CENTER” (as stated in the Section 5.A (i) above) does suffice to prove that the trademarks “ELIGIBILITY CENTER” have obtained distinctiveness and served as a source identifier, at least in the sector of the athlete students and students wishing to play college sports in America and Canada. In this matter, the Panel notes that the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP, see Paragraph 5 section 1.3 of the WIPO Overview 3.0;
(iii) the Respondent’s use of the Disputed Domain Name (a parked page contains some PPC links referring to college sports-related services of the Complainant’s competitors as well as the phrase “NCAA Eligibility Center” including the Complainant’s short name, registered trademarks NCAA and the trademark ELIGIBILITY CENTER”) shows that the Respondent has been targeting the Complainant and its trademark ELIGIBILITY CENTER. This supports the Complainant’s assertion that its trademarks ELIGIBILITY CENTER have achieved significance as a source identifier, see Paragraph 7 section 1.3 of the WIPO Overview 3.0;
(iv) the Respondent has not challenged the Complainant’s evidence or its claim to unregistered trade mark rights.
Accordingly, the Panel finds that the Complainant has sufficiently evidenced that it has rights in and to the trademark ELIGIBILITY CENTER, which has acquired distinctiveness/secondary meaning through its intensive use.
Additionally, the Disputed Domain Name almost comprises the Complainant’s ELIGIBILITY CENTER trademark in its entirety, in which the Complainant has rights. The only difference between the Disputed Domain Name and the ELIGIBILITY CENTER trademarks is the replacement of the first letter “i” in the ELIGIBILITY CENTER trademarks with the letter “e” in the Disputed Domain Name. In this regard, in accordance with paragraph 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element. Thus, the replacement of the letter “i” with the letter “e” does not prevent a finding of confusing similarity between the Disputed Domain Name and the ELIGIBILITY CENTER trademarks. In the Panel’s view, the Disputed Domain Name is confusingly similar to the Complainant’s ELIGIBILITY CENTER trademarks.
This is a typical case of a deliberate misspelling of a trademark (so-called “typosquatting”), by omitting, adding, or substituting the order of letters of a trademark, where numerous UDRP panels in the past have found confusing similarity to be present, see, inter alia, Airlinen Ltd v. Deyan Dimitrov, Laundryheap, VenturePoint Ltd, WIPO Case No. D2019-2542; Mirova v. WhoisGuard Protected, WhoisGuard, Inc. / Brian Tranter, WIPO Case No. D2020-0142.
Finally, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.org” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A. v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ELIGIBILITY CENTER trademark, and paragraph 4(a)(i) of the Policy is established.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:
“(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 Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions.
The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the Complainant, once a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the Disputed Domain Name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted providing arguments or evidence to the contrary.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission, or authorization of any kind to use the Complainant’s trademarks has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction related to “ELIGIBILITY CENTER”.
The Complainant has submitted relevant evidence showing that the Disputed Domain Name resolves to a parked page with pay-per-click (“PPC”) links that redirect Internet users to other online locations. In this regard, section 2.9 of the WIPO Overview 3.0 holds that “the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.
In this present case, the Panel finds that some of the PPC links on the website under the Disputed Domain Name refer to college sports-related services of the Complainant’s competitors. Hence, in light of foregoing viewpoint and similarly to a number of well-established prior UDRP decisions, the Panel upholds that operating PPC parking page using a trademark and providing connection to goods and/or services competitive with the trademark owner, does not establish a bona fide offering of goods or services (see, e.g., Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302; Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363).
Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name despite the long period of time since its registration. This finding is substantiated by the fact that there is no evidence showing that the Respondent operates any bona fide business or organization under the Disputed Domain Name. Therefore, it is not evidenced that the Respondent is identified by “ELEGIBILITY CENTER” or that the Respondent has any rights in it.
Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:
“(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 website 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.”
The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively.
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and therefore, did not refute the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s ELIGIBILITY CENTER trademarks have been used intensively from 2007 and gained certain reputation in the sector of college sports-related services. The use of Complainant’s ELIGIBILITY CENTER trademarks and its registration of the domain name <eligibilitycenter.org> all predate the registration of the Disputed Domain Name.
The Disputed Domain Name almost comprises the ELIGIBILITY CENTER trademarks in its entirety, the only difference between them is the replacement of the first letter “i” with the letter “e” in “eligibility”. The Disputed Domain Name is also almost identical with the Complainant’s domain name <eligibilitycenter.org>, including the gTLD suffix “.org”. Given the extensive use of the ELIGIBILITY CENTER trademarks for college sports-related services by the Complainant, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Further, in consideration of the use of the Disputed Domain Name (a parked page contains some PPC links referring to college sports-related services of the Complainant’s competitors as well as the phrase “NCAA Eligibility Center” including the Complainant’s short name, registered trademarks NCAA and the trademarks ELIGIBILITY CENTER), the Panel is of the view that the Respondent obviously knew of the Complainant and its ELIGIBILITY CENTER trademark before the registration of the Disputed Domain Name. Thus, the Panel considers such registration is an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
In Section 6.C. above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In the Panel’s view, registration of a domain name, in which a respondent has no rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, may be considered as bad faith.
On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is still resolving to PPC parking page, where some of the PPC links are also referring to the college sports-related services of the Complainant’s competitors. With all these facts and findings, the Panel finds that by using the Disputed Domain Name in this manner, the Respondent has intentionally attempted to attract Internet users to his website and generate income from such PPC links by creating a likelihood of confusion with the Complainant’s ELIGIBILITY CENTER trademark as to the source, sponsorship, affiliation or endorsement of his website, for commercial gain.
In addition, the Panel finds that the Respondent, Nguyễn Văn Lư, was involved in a pattern of several cybersquatting cases of domain name disputes, namely, Thi Factory S.A. v. Vietnam Domain Privacy Services, Nguyễn Văn Lư, WIPO Case No. D2019-2596; Squarespace, Inc. v. April Sea Information Technology Company Ltd. / Nguyễn Văn Lư, WIPO Case No. D2019-3064; Skyscanner Limited v. Nguyễn Văn Lư, WIPO Case No. D2020-0672; xHamster IP Holdings Ltd v. Nguyễn Văn Lu, WIPO Case No. D2020-3163; CenterPoint Energy, Inc. v. Nguyễn Văn Lư, WIPO Case No. D2020-3300; Hillsong Church Inc. v. Nguyễn Văn Lư, WIPO Case No. D2021-0368.
Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b) of the Policy, and the third element under paragraph 4(a) of the Policy is established.
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 <elegibilitycenter.org> be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: February 1, 2022