WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Imperial College of Science, Technology and Medicine v. Ali Kosari , Domains By Proxy, Inc Case No. D2009-1564 1. The Parties
The Complainant is Imperial College of Science, Technology and Medicine, London, United Kingdom of Great Britain and Northern Ireland represented by Dechert LLP, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Ali Kosari, Domains By Proxy, Inc, Brighton, East Sussex, United Kingdom of Great Britain and Northern Ireland and Scottsdale, Arizona, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2009. On November 23, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On December 2, 2009, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 4, 2009 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 amendment to the Complaint on December 9, 2009. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2010.
The Center appointed Dawn Osborne as the sole panelist in this matter on January 14, 2010. 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 Complainant is a teaching and research educational institution specialising in scientific and technical subjects and was established in the UK over one hundred years ago. It has registered trade marks for, inter alia, IMPERIAL COLLEGE covering the UK. The Respondent registered the Domain Names in September 2009 and has used it to point to commercial links concerning education. The Respondent told the Complainant that it had registered the Domain Names to provide an “online dictionary” of UK Colleges and Universities. 5. Parties' Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
1. The Complainant was founded in 1907 by Royal Charter of King Edward VII. The Complainant carries on very wide-ranging teaching and research activities, with a focus on scientific and technical subjects. The Complainant ranked third in UK universities in the Times Good Universities Guide 2009 and in the Independent 2009 league tables. The press and people commonly refer to the Complainant as “Imperial College”, “Imperial College London”, or, for short, just “Imperial”. In the world of higher education, these names would only be taken to refer to the Complainant and would not be associated with any other institution. The Complainant is the owner of goodwill and reputation and trade mark rights in the names IMPERIAL, IMPERIAL COLLEGE, IMPERIAL COLLEGE LONDON, IMPERIAL COLLEGE OF SCIENCE, TECHNOLOGY AND MEDICINE (the “Trade Marks”) internationally. The Complainant has also registered a portfolio of trade marks.
2. The Complainant provides information about itself and services to its staff, students and interested members of the public through its website, which is accessible at “ or .”
3. The Domain Names are identical and/or confusingly similar to the names and trade marks in which the Complainant has extensive rights. The first Domain Name () is identical to registered trade marks owned by the Complainant for the name “IMPERIAL COLLEGE” (see for example Community Trade Mark No. 272,419). The second Domain Name (www.) is also identical to registered trade marks owned by the Complainant (such as Community Trade Mark No. 272,419) with the addition of the words “of Science” which also form part of the Complainant's name. The presence of additional words alongside a well-known trade mark is not considered to be distinguishing and does not detract from confusing similarity in UDRP disputes. However, in this case, the words “of Science” from part of the Complainant's name which therefore exacerbates the confusing similarity. The second Domain Name is therefore either identical and/or confusingly similar to the trade marks and names in which the Complainant has extensive rights.
4. The Domain Names were registered in September 2009, 102 years after the Complainant was incorporated. Due to the reputation of the Complainant, it is reasonable to assume that the Respondents must have known of the Complainant at the time the Domain Names were registered. This is particularly so in the case of the First Respondent, who, in an email to the Complainant's representatives dated October 27, 2009, stated that he registered the Domain Names because he is putting together an online dictionary of universities and colleges in the UK. The Respondent chose the Domain Names because he knew that they were the well known names associated with the Complainant and as a result would draw traffic to his websites which he openly admits he has plans to use in relation to the industry in which the Complainant is most widely known.
5. The Complainant has not licensed or otherwise permitted or authorised the Respondents to use its Trade Marks or to apply for a domain name incorporating any such Trade Marks. The Respondents' names do not include “IMPERIAL” or “IMPERIAL COLLEGE” or anything similar.
6. There is no evidence of the Respondents' use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. In emails the first Respondent says that he plans to use the Domain Names to put together an online “dictionary” of colleges and universities in the UK. No evidence has been put forward to support this, even if this was how the Domain Names were being used, it would not be a bona fide offering of services as the Respondents have appropriated names in which the Complainant has significant goodwill and reputation. Furthermore, if this was how the First Respondent planned to use the Domain Names, it would be using the Complainant's Trade Marks to direct consumers to the Complainant's competitors, since an online dictionary or database of colleges and universities in the UK would inevitably include competitors of the Complainants. The website at the Domain Names currently refreshes to a holding website at the domain name . However, prior to the Complainant's representatives writing to the Respondents, the websites at the Domain Names were parked sites with click through links to other sites, all of which focussed on the education industry. On those parked pages, there were links to the Complainant. The nature of such parked sites is that an owner will usually be financially rewarded on the basis of the number of click throughs the links on its site receives. The Respondents cannot argue, under paragraph 4(c)(iii) of the Policy that they are making legitimate non-commercial or fair use of the Domain Names without the intent for commercial gain to misleadingly divert consumers or to tarnish the Trade Marks at issue. Since being contacted by the Complainant's representatives the Respondents use the Domain Names to refresh to Abbey College Domain Name which is itself a parked website. There is no legitimate non-commercial or fair use of the Domain Names taking place. In view of the goodwill in the Trade Marks, there can be no legitimate purpose for which the Domain Names could be used. The Respondents have no rights or legitimate interests in respect of the Domain Names.
7. The Domain Names were registered and are being used in bad faith because:
a. the Domain Names were registered more than a century after the Complainant was incorporated and started trading under the Trade Marks and the Complainant has substantial goodwill and reputation in the Trade Marks.
b. the Respondents appear to have registered the Domain Names not for any particular use (other than as parked websites), but for the purpose of selling them. The websites feature the following wording “Want to buy this domain? Let us help you get it!”.
c. the Respondents operated the Domain Names intentionally to attract for commercial gain internet users to its websites or other on-line locations by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of its websites of a product or service on its websites. Given that the Complainant is an internationally renowned educational establishment and that the Complainant has significant goodwill and reputation in the Trade Marks, it is inevitable that internet users will be confused into believing that any web site at the Domain Names is registered to, operated or authorised by the Complainant. The links that appeared at the websites at the Domain Names offered services in competition with those of the Complainant and, moreover, links to the Complainant were also included on the websites at the Domain Names. A user accessing the website at the Domain Names may have decided to visit some of these websites through the links instead of searching further for the Complainant's services. It is reasonable to assume that this would result in revenue for the Respondents. Even if a user accessing the website at the Domain Names may promptly conclude that it is not what they were looking for and leaves the website at the Domain Names, the Respondents had already succeeded in their purpose of using the Complainant's trade mark to attract the user with a view to commercial gain.
d. the Domain Names are now being passively held, UDRP panels have consistently held that passive trading of domain names can be considered bad faith use of the domain name (in particular see Telstra Corporation Limited –v-Nuclear Marshmallows, WIPO Case No. D2000-0003 and Polaroid Corporation –v- Jay Strommen, WIPO Case No. D2005-1005). Indeed, in the Telstra case there were four particular circumstances of the case which led the Panel to its conclusion. Three of those, namely:
i. the Complainant's trade marks have a strong reputation and are widely known;
ii. the Respondents have provided no evidence whatsoever of any actual or contemplated good faith use by them of the Domain Names; and
iii. the first Respondent has taken active steps to conceal its true identity;
are all present in this case. As a result, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Names by the Respondents that would not be illegitimate, such as by passing off, an infringement of consumer protection legislation or an infringement of the Complainant's rights under trade mark law and as such we submit this equates to further evidence that the Domain Names were registered, and are being used, in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(1) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) The 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 A. Identical or Confusingly Similar
Apart from the “.com” suffix which is not taken into account for the purposes of the Policy, the domain name consists of the Complainant's IMPERIAL COLLEGE registered mark and the domain name consists of the Complainant's IMPERIAL COLLEGE registered mark and the words “of science”, part of the Complainant's name and referring to subjects it teaches. The addition of the words “of science” do not serve to distinguish this domain name from the Complainant's mark, but indeed compounds the likelihood of confusion because of the use of the Complainant's name and field of activity. The Panel finds that the domain name is identical to the Complainant's Trade Mark for the purposes of the Policy and the domain name is confusingly similar to the Complainant's registered trade mark for the purposes of the Policy. B. Rights or Legitimate Interests
The Respondent has not filed a Response (i.e., it has not shown any circumstances under the Policy paragraph 4(c) which may apply in its favour) is not presently using the Domain Names and does not appear to have any rights or legitimate interests in the Domain Names having merely linked them for a period of time to a link farm web page. The Complainant has indicated that it has not endorsed the use of it trademark in the disputed domain namethe Respondent in any way. As such the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The reference to an “online dictionary” of UK colleges and universities by the Respondent shows that the Respondent is aware of the Complainant and its field of activity and by registering the name and intending to use it for commercial purposes the Respondent is seeking to take advantage of the Complainant's trade mark.
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including “circumstances indicating that [the Respondent has] registered or [has] 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 [its] documented out-of-pocket costs directly related to the domain name;” (paragraph 4(b)(i)) and “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on [its] web site or location.” (paragraph 4(b)(iv)).
The Domain Names have been used to link to sites competing with the Complainant. Accordingly, it appears that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site, by creating confusion as to the source, sponsorship, affiliation or endorsement of products or services on its web site. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy.
Additionally, it appears that the Domain Names were also offered for sale. As such the Panel, therefore, finds that bad faith has also been demonstrated under section 4(b)(i) of the Policy.
Having established that the Respondent's activities fall squarely within two express provisions of the Policy covering bad faith there is no need to further consider the Complainant's submissions on passive holding and constructive knowledge. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names and be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Dated: January 20, 2010
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