The Complainant is Stichting Hanzehogeschool Groningen of Groningen, The Netherlands, represented by Vereenigde, The Netherlands.
The Respondent is RegistrarAds, Inc. of Vancouver, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with DSTR Acquisition VII, LLC d/b/a D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2011. On July 5, 2011, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a D a request for registrar verification in connection with the Domain Name. On July 5, 2011, DSTR Acquisition VII, LLC d/b/a D transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2011.
The Center appointed Alan L. Limbury as the sole panelist in this matter on August 1, 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.
The language of the proceedings is English. 4. Factual Background (undisputed facts)
The Complainant is an educational institution in The Netherlands which has been offering educational courses for more than 200 years. Its courses cater for foreign students and include courses in international business administration. It has registered in The Benelux the trademarks HANZEHOGESCHOOL, No. 0810189 and HANZEHOGESCHOOL GRONINGEN (device), No. 0811021, both registered on January 5, 2007, upon applications filed on October 13, 2006; and HANZE UNIVERSITY GRONINGEN. TURNING AMBITION INTO SUCCESS, No. 0844643, registered on May 29, 2008, upon application filed on May 23, 2008.
Hanze Hogeschool means Hanze University in English.
The Domain Name was registered on May 16, 2006. It resolves to a “free” SEDO website featuring advertising links to educational institutions and a notice stating that the Domain Name may be for sale. 5. Parties’ Contentions A. Complainant
The Complainant says that, in translation, the Domain Name is practically identical to its trademark and that the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says worldwide searches revealed no similar trademark registration in the name of the Respondent, no activity by the Respondent in the field of education, and no use by the Respondent of the name “Hanze University” other than in the Domain Name. There thus appear to be no demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services and it cannot be concluded that the Respondent is known by that name. Further, no question of noncommercial use arises, given the content of the Respondent’s website, including the offer to sell the Domain Name.
As to bad faith, the Complainant says there must have been bad faith at the moment of registration because the Respondent has never had any interest in the field of education. The fact that the language of the Respondent’s website is Dutch, the official language of the Complainant, makes the Respondent’s bad faith clear and may be seen as an invitation or provocation to the Complainant to buy the Domain Name. Further, clicking on the links reveals no underlying content, so the empty site should be seen as an advertisement for the sale of the Domain Name. Sale to the Complainant or a competitor for valuable consideration exceeding out-of-pocket costs should be taken as the primary purpose of the Domain Name registration.
The Respondent has violated the Policy before (ICDAS Steel, Energy, Shipbuilding and Transport Industries Co. v. Domain Admin, RegistrarAds, Inc,WIPO Case No. D2008-1272) and should be taken to have registered the Domain Name in order to prevent the Complainant from reflecting the mark in its own domain name and primarily for the purpose of disrupting the Complainant’s business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman,WIPO Case No. D2000-1080 and AltaVista Company v. Grandtotal Finances Limited et. al.,WIPO Case No. D2000-0848. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy does not require the Complainant’s trademark rights to have arisen before the Domain Name was registered: see Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin,WIPO Case No. D2005-0038 and the cases there cited.
The test of confusing similarity under the Policy is confined to a comparison of the Domain Name and the trademark alone, independent of any products or services for which the Domain Name is used or other marketing and use factors usually considered in trademark infringement cases: Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. 2001-0110.
Ignoring, as is appropriate, the generic Top-Level Domain “.com” (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429), the Domain Name comprises the words “Hanze University”, being the distinctive part of the Complainant’s HANZE UNIVERSITY GRONINGEN. TURNING AMBITION INTO SUCCESS trademark. The Panel finds the Domain Name to be confusingly similar to that mark.
The Domain Name also comprises the English translation of the Complainant’s HANZEHOGESCHOOL trademark. Although there is no phonetic similarity between the Domain Name and that mark, a semantic similarity between a trademark and a domain name can exist where both contain word elements of different languages and a considerable part of the public understands the meaning of the translation: Compagnie Generale Des Etablissements Michelin - Michelin & Cie. v. Graeme Foster,WIPO Case No. D2004-0279; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085.
On the undisputed basis that the Complainant has operated for more than 200 years and offers educational courses to international students, the Panel is prepared to accept that, in this instance, a considerable part of the public understands the meaning of the translation. Accordingly, the Panel finds the Domain Name to be confusingly similar to the Complainant’s HANZEHOGESCHOOL trademark. It is also confusingly similar to the Complainant’s HANZEHOGESCHOOL GRONINGEN trademark, in which the distinctive element is the word “Hanzehogeschool”.
The Complainant has established this element. B. Rights or Legitimate Interests
The Panel finds that the HANZEHOGESCHOOL mark is distinctive and well known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant has established this element. C. Registered and Used in Bad Faith
Under this heading must be shown bad faith targeted at the Complainant. This requires the Respondent to have actual knowledge of the existence of the Complainant, the trade mark owner: The Way International, Inc. v. Diamond Peters,WIPO Case No. D2003-0264.
Generally speaking, although a trademark can form a basis for a UDRP proceeding under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. However, In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 3.1 (omitting citations).
Here the Complainant did not apply to register a trademark until after the Respondent registered the Domain Name. The Complainant has not sought to establish that, through use, it had acquired unregistered trademark rights prior to the registration of the Domain Name. However, the Respondent has not denied that the Complainant has been operating for more than 200 years. Under these circumstances, and taking into account the inherently distinctive nature of the name “Hanze University”, the Panel infers that the Respondent indeed had the Complainant in mind when registering the Domain Name.
The advertising links on the Respondent’s website are of the kind from which pay-per-click revenue is generated. When accessed by this Panelist on August 3, 2011, from Sydney, the language of the website was English and there was educational content underlying the advertising links. The Panel accordingly finds that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or of the services offered on its web site. Pursuant to paragraph 4(b)(iv) of the Policy these circumstances are evidence of both the registration and use of the Domain Name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
There being no countervailing evidence of registration in good faith, the Panel finds that the Domain Name was registered and is being used in bad faith.
The Complainant has established this element. 7. Decision
For 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 the Complainant.
Alan L. Limbury
Sole Panelist
Dated: August 3, 2011
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