The Complainant is The Institute of Electrical and Electronics Engineers, Incorporated (“IEEE”) of Piscataway, New Jersey, United States of America, represented by Dorsey & Whitney LLP, United States of America (the “US”).
The Respondent is Ganesan K of Salem, Tamil Nadu, India. 2. The Domain Name and Registrar
The disputed domain name (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 November 23, 2011. On November 23, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On the same date, GoD, Inc. 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” 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 November 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2011. The Respondent transmitted to the Center several email communications after the commencement of the proceedings but did not submit any formal response. The Center notified the Parties of the Commencement of the Panel Appointment Process on December 19, 2011. On December 23, 2011, the Complainant transmitted to the Center by email a Supplemental Filing.
The Center appointed Michael D. Cover as the sole panelist in this matter on January 4, 2012. 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 the Institute of Electrical and Electronics Engineers, Inc. or “IEEE” for short. The “IEEE” is the world’s largest professional association dedicated to advancing technological innovation and excellence for the benefit of humanity. The Complainant is the world’s largest technical professional society, with around 400,000 members, and can trace its roots back into the 19th Century. It runs publications, web services and conferences throughout the world.
The Complainant is the proprietor of numerous registered trade marks in the US and around the world, including in India, for the trade mark IEEE. The Complainant is the proprietor of a registered trade mark for the IEEE trade mark in India which is dated March 21, 2005.
The Complainant also owns the domain names and . The Complainant has used the IEEE trade mark since 1963, which was when two predecessor organizations merged to form the IEEE.
The Respondent is Ganesan K of Salem, Tamil Nadu, India.
The Disputed Domain Name, registered on September 29, 2011, resolves to a website that appears, at first sight, to be a blog. 5. Parties’ Contentions A. Complainant
The Complainant submits that, because of its long and prominent use of its IEEE trade mark, the IEEE trade mark has acquired worldwide recognition as identifying exclusively its products and services and that the vast and valuable goodwill connected thereto is the property of the Complainant. The Complainant contends that the Disputed Domain Name is identical or confusingly similar to the IEEE trade mark in which it has rights.
The Complainant further submits that the Disputed Domain Name is identical or confusingly similar to the IEEE trade mark and that the Disputed Domain Name incorporates the IEEE trade mark in full. The Complainant further notes that the addition of the geographic descriptor “Chicago” to its well-known trade mark suggests that the Disputed Domain Name is being used by the trade mark owner or on its behalf at that location. The Complainant states that the Disputed Domain Name also includes the top-level domain name “.org” but that this does nothing to distinguish the Disputed Domain Name from the Complainant’s trade mark IEEE.
The Complainant next addresses the element of the UDRP in paragraph 4(a)(ii), namely that the Respondent has no rights or legitimate interests in the Disputed Domain Name. It notes that previous panels have found that the complainant’s burden in this regard is a light one. The Complainant also states that it has never consented to the Respondent’s use of the IEEE trade mark.
The Complainant notes that the Respondent has not made use of or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services and that the Respondent has not been commonly known by the Disputed Domain Name. The Complainant notes that the Respondent was not making legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to divert customers misleadingly or to tarnish the trade mark at issue.
The Complainant goes on to submit that the website to which the Disputed Domain Name resolves is a deceptive website, designed at first to be an innocuous blog offering objective advice regarding consumer products and services. It also submits that the Respondent is using the website to which the Disputed Domain Name resolves as part of a “black hat” search optimization scheme. This involves, so the Complainant submits, using this website to provide link outs to commercial sites, designed to improve such sites’ rankings amongst search engines.
The Complainant submits that the Disputed Domain Name has, as covered by the Policy, paragraph 4(a)(iii), been registered and is being used in bad faith. Having submitted that its IEEE trade mark is well-known, the Complainant submits that it is unlikely that the Respondent would have selected and registered the Disputed Domain Name without knowing of the reputation of the IEEE trade mark. The Complainant also maintains that the Respondent is using the Disputed Domain Name in bad faith. It mentions the Respondent’s attempt to sell the Disputed Domain Name for valuable consideration in excess of its documented out of pocket expenses directly-related to the Disputed Domain Name and also the use of the Disputed Domain Name in linking already mentioned in this Decision.
In its “Additional Submission Regarding New Evidence of Respondent’s Bad Faith”, the Complainant pointed out that the Respondent was attempting to sell the Disputed Domain Name for an amount that was in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name and submitted that this, together with the statement that the Respondent used the Disputed Domain Name for a “link building service”, was additional evidence of bad faith. 1
The Complainant requests that the Panel issue a Decision that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not file a formal Response to the Complainant’s contentions. However, the Respondent did, in post-commencement correspondence with the Center, state that he was a student and that he bought the Disputed Domain Name in a GoD auction. The Respondent, in an email to the Center, requested “compensation” of “$1500 - $2000” for the Disputed Domain Name and stated that he was ready to transfer the Disputed Domain Name to the Complainant. The Respondent also stated that he used the Dispute Domain Name for a “link building service”. 6. Discussion and Findings
In this proceeding, the Respondent has not filed a formal Response, although there has, as noted, been some post-commencement correspondence between the Respondent and the Center. As the Respondent has not filed a formal Response and dealt formally and in detail with the submissions of the Complainant, the Panel has approached this Decision adopting the normal burden of proof that is to be satisfied by the Complainant, that is on the balance of probabilities, but proceeding with caution.
The onus is on the Complainant to make out its case and must show all three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant must first establish that there is a trade mark or service mark in which it has rights.
The Disputed Domain Name includes the whole of the Complainant’s trade mark IEEE. The Complainant has registered rights in that trade mark and the Panel also accepts, on the balance of probabilities, that the Complainant has unregistered rights in that trade mark.
The Disputed Domain Name is not identical to the Complainant’s trade mark IEEE. Successive panels have found that the addition of non-distinctive elements, such as geographic descriptors, such as “Chicago” in the present case, and top-level domains, such as “.org” does nothing substantive to distinguish the domain name in question from the trade mark of the complainant. The letters “ieee” are clearly the dominant component of the Disputed Domain Name. The mere addition of the generic, descriptive and geographical elements is insufficient to avoid a finding of confusingly similarity (see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434).
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the trade mark IEEE of the Complainant and in which the Complainant has rights. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. It is well-established that it is sufficient for the Complainant to make out a prima facie case in this regard, with the burden of production then shifting to the Respondent.
The Panel notes that the Complainant has not consented to the use of the IEEE trade mark by the Respondent. The Panel also notes that the Respondent has not commonly been known by the Disputed Domain Name and is of the opinion that the Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name.
As already noted, the Disputed Domain Name resolves to what appears to be a blog website but the Panel finds, on the balance of probabilities, that this is part of a linking programme to improve the search engine ranking of other websites.
The Complainant has accordingly made out its case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Complainant must show on the balance of probabilities that the Disputed Domain Name was registered and is being used in bad faith (see for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Paragraph 4(b) of the Policy provides a non-exhaustive list of factors which will demonstrate bad faith.
In this case, the Panel finds that the trade mark IEEE of the Complainant is well-known and is even registered in India, the home country of the Respondent. The Panel also finds that the Respondent was likely to have had knowledge of the IEEE trade mark of the Complainant. The Panel finds, on the balance of probability, that the Respondent registered the trade mark for the purpose of selling the Disputed Domain Name to the Complainant as the owner of the IEEE trade mark. The consideration requested was in excess of the Respondent’s documented out of pocket expenses directly-related to the Disputed Domain Name. See paragraph 4(b)(i) of the Policy.
The Panel also finds that the Respondent has used the Disputed Domain Name in bad faith. The Panel finds, on the balance of probabilities, that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the Disputed Domain Name resolves by creating a likelihood of confusion with the Complainant’s trade mark IEEE as to the source or the like of that website. The attraction of the IEEE trade mark would have been its power to influence search engine performance through the resulting links.
The Panel therefore finds that the Disputed Domain Name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Dated: January 18, 2012
1 The Panel will not determine the admissibility of the Complainant’s supplemental filing as its admission would have no dispositive effect.
Full & Egal Universal Law Academy