Complainant is Imperial College of Science, Technology and Medicine of London, United Kingdom of Great Britain and Northern Ireland represented by Decher LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Saurabh Chaturvedi, Bhavanagraphicad, of New Delhi, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2010. On September 15, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On September 22, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact information. A Complaint deficiency notification regarding contact information for the Registrar was sent to Complainant on September 22, 2010. Complainant filed an amended Complaint on September 27, 2010.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 28, 2010. Complainant requested a suspension of the proceedings on October 12, 2010, and the proceedings were suspended on October 13, 2010. On October 28, 2010, the proceedings were reinstituted. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 4, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 9, 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
Complainant maintains a substantial portfolio of trademark and service mark (hereinafter “trademark”) registrations for the term IMPERIAL COLLEGE in the European Union, the United Kingdom, India and third countries. In this proceeding it specifically relies on word Community Trade Mark (CTM), Registration Number 000272419, dated January 19, 2001, in International Classes (ICs) 9,16, 38, 41 and 42, covering, inter alia, university educational services and computer software; word CTM, registration number 006326656, dated January 23, 2009, in ICs 35, 36, 39, 42 and 44, covering, inter alia, scientific and technological services and research, and advertising services provided via the Internet; word trademark registration with the United Kingdom Intellectual Property Office (UKIPO), registration number 1572164, dated February 2, 1996, in IC 16, covering, inter alia, magazines and textbooks; word trademark registration with the UKIPO, registration number 1544896, dated December 8, 1995, in ICs 36, 41 and 42, covering, inter alia, university educational services; registration on the trademarks registry of the Government of India, registration number 1288991, dated September 6, 2004, in IC 9 covering, inter alia, computer software and teaching apparatus, and; registration on the trademarks registry of the Government of India, registration number 1288990, dated June 9, 2004, in IC 16, covering, inter alia, books and teaching materials.
Complainant is an educational and research institution founded in 1907 and based in London, United Kingdom. Complainant engages in commercial activities through a technology transfer business under the name Imperial Innovations Group plc. Complainant operates a website at “/”. Complainant has provided evidence from independent sources that it is a well-known educational and research institution in the United Kingdom, and that its reputation extends to other countries.
Complainant has provided a copy of an order of summary judgment from the UK High Court of Justice, Chancery Division, Intellectual Property, HC09C01809, dated December 3, 2009, resolving an action brought by Complainant against, among others, “Imperial Academy Limited”, that directed the defendants in a trademark infringement action to change the name of the institution so that it does not include the term IMPERIAL.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on December 20, 2009.
The use made by Respondent of the disputed domain name to date is to direct Internet users to a webpage headed “Redesigning... Coming soon!”, that shows a representation of colored building blocks arranged in a unique manner, and business and contact information for Respondent.
In April 2010, Complainant was in contact with Respondent by e-mail, and received on May 7, 2010 the following correspondence from Respondent:
“Dear Sirs
I do hereby acknowledge receipt of mail. I am forwarding the same to the concern party M/s
Imperial School of Management & Technology through Mr. KK Sharma for appropriate and
necessary action.
Kind regards.
Saurabh Chaturvedi”
As of the initiation of this administrative proceeding, Complainant had received no further correspondence from Respondent, notwithstanding transmittal of a reminder.
The registration agreement in effect between Respondent and Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant asserts that it owns rights in the trademark IMPERIAL COLLEGE in the European Union, the United Kingdom, and India, as evidenced by registration and use in commerce.
Complainant argues that the disputed domain name is confusingly similar to its IMPERIAL COLLEGE trademark. Complainant contends that IMPERIAL is the dominant and distinctive term of its trademark, and that the combination term SCHOOL is descriptive. Complainant argues that Internet users would associate a domain name using the substantially similar descriptive term ACADEMY attached to the dominant part of Complainant’s mark with Complainant and its products and services.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent has not been licensed or otherwise authorized to use its trademark, that Respondent has not been commonly known by the disputed domain name, and that Respondent has not made use of, or demonstrably prepared to use, the disputed domain name in a manner that might establish rights or legitimate interests. Complainant further asserts that Respondent must have known of Complainant’s well-known trademark when it registered the disputed domain name, and that Respondent had no obvious reason for selecting that domain name, suggesting that Respondent intended to take advantage of Complainant’s goodwill.
Complainant has alleged that Respondent registered and is used the disputed domain name in bad faith. Complainant argues that in the absence of rights or legitimate interests, Respondent’s registration using Complainant’s well-known trademark cannot have been in good faith. Complainant further contends that Respondent registered the disputed domain name to take unfair advantage of Complainant's rights in its trademark. Complainant finally refers to Respondent’s “passive holding” of the disputed domain name as evidencing bad faith, in particular because Complainant's trademark has a strong reputation and Respondent has not provided any evidence of actual or intended good faith use. Complainant further notes that Respondent has not substantively responded to its correspondence. Complainant notes that its trademark is registered in India, the country where Respondent is based.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings by courier and email. The records of the courier service show delivery of the documents to the physical address of Respondent shown on the record of registration of the disputed domain name, and there is no indication of difficulties in transmission of email to Respondent. The Panel is satisfied that the Center took the steps specified in the Rules to provide adequate notice to Respondent, and that Respondent was afforded a reasonable opportunity to respond in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the trademark IMPERIAL COLLEGE as a CTM, on the register of the UKIPO, and on the trademarks registry of the Government of India. Complainant has also provided substantial evidence of use in commerce of the trademark. Respondent has not contested Complainant’s assertion of rights in the trademark.
The Panel determines that Complainant has rights in the trademark IMPERIAL COLLEGE in the European Union, the United Kingdom and India.
The disputed domain name uses the term IMPERIAL in combination with the term “school”. The term COLLEGE that is combined with the term IMPERIAL to form Complainant’s trademark and the term “school” that is combined with the term IMPERIAL to form the disputed domain name are largely synonymous. Each refers to an educational institution. The visual impression of IMPERIAL COLLEGE and “IMPERIAL school” are substantially similar based on the first and more distinctive term. The meaning is largely synonymous. The sound of the first term is identical, although the sound of the second term is different. Based on the similarity in visual impression and meaning, the terms are likely to be confused by Internet users. The Panel determines that IMPERIAL COLLEGE and the disputed domain name, , are substantially similar.1
The Panel determines that Complainant has rights in the trademark IMPERIAL COLLEGE and that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] have acquired no trademark or service mark rights; or
(iii) [the respondent is] 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.” (Policy, paragraph 4(c))
Complainant has argued that Respondent has failed to establish rights or legitimate interests in the disputed domain name because Respondent has not been authorized or licensed to use Complainant’s trademark, Respondent was not commonly known by the disputed domain name, Respondent has not used the disputed domain name for a bona fide offering of goods or services, and that Respondent has not made legitimate noncommercial or fair use of the disputed domain name. Complainant has contended that Respondent had no obvious reason for the selection of the terms used in the disputed domain name, suggesting that it was intending to take unfair advantage of Complainant’s well-known trademark. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has made some use of the disputed domain name: namely, to direct Internet users to a website showing a representation of colored building blocks organized in a unique manner, along with Respondent’s contact information, and with a statement that a redesigned website is coming soon.
Respondent has not attempted to rebut Complainant’s prima facie showing. Respondent’s business name, according to the registration of the disputed domain name, is “Bhavanagraphicad” and; according to the website addressed by the disputed domain name, “BHAVANA GRAPHICAD”.2 There is no obvious correlation between is Respondent’s business name and the disputed domain name. They appear to be entirely distinct. There is nothing on the record of this proceeding to suggest that Respondent registered the disputed domain name as some form of descriptive or generic term for its business. Respondent sent an e-mail to Complainant referring to an institution in India with a name similar to that of Complainant’s, but has provided no substantiation regarding any association between Respondent and that Indian institution.3 It is not for the Panel to infer an interest that has not been put forward by Respondent when such inference would depend on the facts of a business relationship.
While the term IMPERIAL has a common descriptive meaning, it is not one that is most commonly associated with an educational or research institution. The terms used by Respondent in the disputed domain name, “imperial school”, cannot be considered generic or commonly descriptive such that it must remain freely available for use by the public. Respondent does not have rights or legitimate interests on that basis.
Respondent has failed to rebut Complainant's showing of lack of rights or legitimate interests in the disputed domain name. The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include:
"(i) circumstances indicating that [the respondent has] registered or [the respondent 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 [the respondent's] documented out-of-pocket costs directly related to the domain name;
(ii) [the respondent has] 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 [respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Respondent registered the disputed domain name that is confusingly similar to Complainant’s trademark registered in India where Respondent does business. There is no apparent connection between Respondent and the terms used in the disputed domain name. Respondent has directed Internet users to a website where it provides its business contact information along with a graphical design representation. Respondent appears to be using the disputed domain name for commercial gain to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to affiliation with Respondent’s website. Since there appear to be businesses in India with names similar to that of Complainant, Respondent may also have intended to offer to sell the disputed domain name to one of those businesses for valuable consideration in excess of its costs of registration, or alternatively to sell it to Complainant. Complainant has rights in its trademark in India.
The Panel determines the foregoing factors establish that Respondent registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
The Panel will direct the Registrar to transfer the disputed domain name to Complainant. 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 name, , be transferred to Complainant.
Frederick M Abbott
Sole Panelist
Dated: November 29, 2010
1 Under circumstances such as those in this proceeding, the generic top-level domain “.org” is not relevant to an assessment of confusing similarity for purposes of the Policy.
2 A Google search of the term “bhavana” suggests its use in India as a form of Buddhist meditation and as a personal name. Panel search of November 29, 2010.
3 The Panel has determined through a Google search that there appear to be educational institutions in India using the term IMPERIAL in their names and that do not appear associated with Complainant (Panel search of November 29, 2010). The fact that there may be an educational institution or institutions in India using the term IMPERIAL in their names does not establish rights or legitimate interests for Respondent. Whether Complainant may have rights vis-à-vis those institutions based on its trademark registration in India is not at issue in this administrative proceeding.
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