The Complainant is Technion-Israel Institute of Technology of Haifa, Israel, represented by Rachel Ben Ari - Adam Fish & Co., Israel.
The Respondent is Anonymous / Whois Privacy Protection Service, Inc. / Technionteams Whistleblower of Bellevue, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2011. On May 24, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On May 26, 2011, GoD, Inc. 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 June 9, 2011, 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 June 12, 2011. 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 June 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2011. The Response was filed with the Center on June 23, 2011.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 30, 2011. 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 operates a well-known technological institute in Israel. The Complainant’s full name is Technion – Israel Institute of Technology, but it has commonly become known as “Technion”. The Complainant provides services to exchange students from around the world. The Complainant also operates an international program with American and Canadian students studying at Technion Medical schools under the name “TeAMS”.
The Complainant owns a registration in Israel for the trademark TECHNION – ISRAEL INSTITUTE OF TECHNOLOGY, with design, and has used the common law trademarks TECHNION and TeAMS for a number of years.
The Respondent registered the domain name on April 6, 2010. The disputed domain name currently reverts to a website that contains critical articles, comments and blogs about the Complainant and its programs. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant owns Israeli Trademark Registration No. 91882, filed on March 24, 1994, for the mark TECHNION – ISRAEL INSTITUTE OF TECHNOLOGY, with design. The Complainant has common law rights in the trademarks TECHNION and TeAMS in association with its use of the TeAMS program in North America. The Complainant contends that the domain name is merely a combination of the Complainant’s TECHNION and TEAMS trademarks. Accordingly, the Respondent’s domain name is confusingly similar to the Complainant’s trademarks. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name TECHNION or TEAMS, and was never authorized or licensed by the Complainant to use the Complainant’s TECHNION and TEAMS trademarks. Furthermore, the Respondent is not making a bona fide use of the disputed domain name, but rather is using the disputed domain name in association with a website with the sole purpose of defaming the Complainant. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent has registered and is using a confusingly similar domain name for the sole purpose of defaming the Complainant’s trademark and reputation. Furthermore, the Complainant contends that the Respondent is interfering with the Complainant’s business by diverting Internet users looking for the Complainant to the Respondent’s website. B. Respondent
The Respondent claims that it lawfully registered the disputed domain name and is using the disputed domain in good faith. The Respondent claims that it is entitled to use the disputed domain name in association with a website that contains criticisms and information about the Complainant’s programs, relying on grounds of freedom of speech. The Respondent denies all claims of bad faith and defamation by the Complainant. 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 the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
As a preliminary point, the Panel notes that the Complainant’s primary contention, as stated repeatedly in the Complaint, is that the Respondent “…is defaming and libeling the Technion and TeAMS,” through the content published on the Respondent’s website, located at the disputed domain name. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights in the mark TECHNION by virtue of Israeli Trademark Registration No. 91882, and common law trademark rights acquired by usage of the name. Furthermore, the Panel is prepared to find that the Complainant also has common law trademark rights in the TeAMS trademark in association with its exchange student programs in North America.
The Panel is prepared to find that the disputed domain name is virtually identical to the Complainant’s trademarks TECHNION and TEAMS, and therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In light of the findings with respect to bad faith, set out below, the Panel makes no finding on this issue. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, non-exhaustively, the circumstances that may, “in particular but without limitation, be evidence of the registration and use of a domain name in bad faith.” These are:
“(i) circumstances indicating the [Respondent] ha[s] registered or 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 [the Respondent has] engaged in a pattern of such conduct;
(iii) [The Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, internet users to [its] website 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 [the Respondent’s] website or location or of a product or service on your website or location.”
The Panel agrees with the decision in Sutherland Institute v. Continuative LLC,WIPO Case No. D2009-0693, in that, “Those expressly enumerated criteria of bad faith reflect the Policy’s principal concern with conduct that takes unfair advantage of trademark owners for purposes of commercial advantage.” It is noted that allegedly defamatory content, per se, is not acknowledged among the criteria for bad faith, although this is ultimately the foundation for Complainant’s objections to the use of the disputed domain name.
There is no evidence to suggest that Respondent registered the disputed domain name for the purposes of selling it to the Complainant or a third-party.
While Respondent may have possibly registered the disputed domain name to prevent Complainant from registering this combination as a domain name, there is no evidence of record here that Respondent has engaged in a pattern or practice of this nature.
It is clear that the Respondent is not a competitor of Complainant, so the situation set out in Section 4(b)(iii) does not apply.
Upon review of the evidence filed in these proceedings, the Panel finds absolutely no evidence of commercial activity on the Respondent’s website. There is no offering of goods and services of any kind. The website does not include any advertising links, or links to any other parties that are either competitors or non-competitors of the Complainant. Furthermore, the Panel does not see any evidence that the Respondent is seeking payment or financial support of any kind for the comments, blogs or criticisms posted. As such, the content of the website may be fairly viewed as noncommercial critical commentary, which falls outside the conduct described in Section 4(b)(iv).
The Panel notes that there are no other indicia of deception on the Respondent’s website, such as copying of the format, content, or colours related to Complainant’s business or its website, which would tend to confuse visitors in any significant way. In fact, Respondent’s website makes it clear through page headings and content that its goal is to “expose” the alleged failings of the Complainant’s organization. The Panel does not find any evidence that the Respondent’s website is interfering with the Complainant’s business with a predatory commercial intent. The Respondent’s website does not claim to be associated with the Complainant, but rather makes it clear to Internet users that it is a website dedicated to commenting on and criticizing the Complainant and the programs it provides. Whether the comments posted on this website are defamatory, it is not within the Panel’s power to decide.
Accordingly, under the scope of the Policy, the Panel finds that the Complainant has not met its burden to establish use and registration in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Dated: July 15, 2011
Full & Egal Universal Law Academy