The Complainant is The Proprietors of the Edinburgh Academy of Edinburgh, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by MBM Commercial LLP, UK.
The Respondent is 4M Asset Management Limited of Edinburgh, UK. 2. The Domain Name and Registrar
The disputed domain name is registered with Register.IT SPA (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2012. On December 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2012, the Registrar 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 sent an email communication to the Complainant on December 14, 2012 requesting additional information from the Complainant. On December 17, 2012 the Center sent an email communication to the Complainant inviting it to remedy a deficiency found in the Complaint. The Complainant filed an amended Complaint on December 18, 2012.
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 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2013. A formal Response was not received by the Center by the due date and on January 10, 2013 a Notification of Respondent Default was sent to the Parties.
Email communications from the Respondent were received by the Center on December 14, 17, 18, 19 and 20, 2012, and on January 10, 2013. The Center informed the Respondent that these communications would be forwarded to the Panel.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 17, 2013. 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 an independent school for children located in Edinburgh, Scotland. It has been known as the Edinburgh Academy since it was established by Royal Charter in 1824.
The Complainant is the effective owner of the following trademarks registered at the UK Intellectual Property Office:
THE EDINBURGH ACADEMY, and EDINBURGH ACADEMY, filed December 11, 2007, registered July 24, 2009 in the name of the Court of the Edinburgh Academy, registration number 2474675, classes 16, 25, 41.
The Complainant is also the owner of the website “www..uk”.
The Respondent has not responded with any significant information about itself. According to the Complainant, the proprietor of the Respondent is an individual and the Respondent or its proprietor is in the businesses of motor vehicle sales and the leasing of residential property. According to the Complainant, a state of disagreement exists between the Complainant and the Respondent. It is alleged that in consequence the Respondent has registered the disputed domain name in order to damage the Complainant. The disputed domain name is alleged to have been used to send email to the Complainant, and for the purposes of a website that has variously been redirected to the Complainant’s own website, been redirected to a pornographic website, and carried a notice threatening to post uncomplimentary information about the Complainant and some of its staff.
The disputed domain name was apparently acquired by the Respondent on November 2, 2012. 5. Parties’ Contentions A. Complainant
The Complainant has produced a copy of the Intellectual Property Office document recording the registration of the trademark EDINBURGH ACADEMY or THE EDINBURGH ACADEMY in the name of the Court of the Edinburgh Academy.
The Complainant contends that the disputed domain name is identical to the trademark in which it has rights.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is in different businesses, namely cars and residential leasing. There is no evidence that the Respondent intended to use the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and intends to divert Internet users from the Complainant's legitimate website in order to damage the Complainant's goodwill and reputation.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant has provided an outline of its version of a separate dispute with the Respondent that concerns other people (and which the Panel will treat as a private matter).
In due course the Complainant's Rector received an email from “Office@” (i.e., an email facility of the disputed domain name). It stated that the Respondent’s corresponding website would shortly be updated with confidential and sensitive information about the Complainant and its staff which, according to the Complainant’s belief, could be potentially defamatory in nature. The disputed domain name was later re-directed to the Complainant's authentic website without the Complainant’s authority, which the Complainant says constituted misrepresentation and impersonation of the Complainant. The Complainant says it informed the Scottish police, who contacted Namesco Limited, being the agent for the registrar, and on November 8, 2012, the link was removed. On the same day, the disputed domain name was found to be redirected to a pornographic website. The Complainant informed the police on the basis that children under 18 years of age who may access the disputed domain name may be shown pornography, and the police have confirmed that inquiries are ongoing.
The Complainant says that on November 9, 2012 the website of the disputed domain name was headed "IMPORTANT NEWS WILL POST SHORTLY", with references to "mistakes", "lies” and a "lawyer protecting the guilty". The Complainant contends that the Respondent intended to post injurious and defamatory content.
The Complainant says that the disputed domain name has not been registered as a legitimate protest site but is for the commission of deliberate civil and criminal wrongs designed to damage the reputation of the Complainant and to cause distress.
The Complainant requests the transfer to itself of the disputed domain name. B. Respondent
The Respondent has not submitted a formal Response.
Emails received by the Center from the Respondent have been forwarded to the Panel. These arose ultimately out of paragraph 3(b)(xi) of the Rules, which requires the Complainant to “Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint”. The Complaint had stated at paragraph 16 that “No other legal proceedings have been commenced or terminated in connection with or relating to the domain name that is the subject of the Complaint”: but had also then stated, “As hereinbefore condescended upon, criminal investigations are ongoing and are being carried out by Lothian and Borders Police”. On request from the Center, the Complainant clarified that police investigations were ongoing but that actual proceedings had not been raised. This correspondence was copied to the Respondent and the Respondent’s emails of December 14, 17, 18, 19 and 20, 2012, and January 10, 2013, were essentially interventions contending that criminal proceedings against the proprietor of the Respondent were live. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Procedural Matters i. Identity of the Respondent
The Complaint initially nominated the Respondent to be 4M Asset Management Limited and an individual. Paragraph 1 of the Rules defines a Respondent as “the holder of a domain-name registration against which a complaint is initiated”. The Panel interprets “the holder of a domain name registration” as meaning in this case the registrant of record, which is solely 4M Asset Management Limited. The intituling has been amended accordingly.
The Center has produced courier tracking documents confirming that the formal notification of the Complaint and of the commencement of proceedings sent on December 20, 2012 to the physical address of 4M Asset Management Limited and also to the physical address of the proprietor of the Respondent were both signed for as received at the respective addresses on December 21, 2012. The Respondent used different email addresses at different times. It is evident from emails provided by the Center that two-way email communication between the Respondent’s proprietor and the Center existed until at least as late as January 10, 2013, being later than the due date for a Response. The Panel is satisfied that the Center fulfilled its obligations by sending notifications to the Respondent’s last known physical and electronic addresses. ii. Court Proceedings
The Complainant, having initially asserted that criminal proceedings were in existence in relation to the Complaint, later clarified that the inquiries were ongoing but that proceedings as such had not commenced. The Respondent has asserted in several emails that criminal proceedings have in fact commenced against its proprietor.
In an email of January 10, 2013, referring to any possible criminal proceedings against the proprietor of the Respondent, the Respondent concluded: “As such any further action / comment may prejudice a fair trial”. It is not clear whether by that comment the Respondent meant to imply that the present proceeding under the UDRP could prejudice a fair trial in any criminal prosecution.
Paragraph 18(a) of the Rules defines the Panel’s discretion in the event that either party engages in court action, as follows:
“Effect of Court Proceedings
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The present proceeding under the UDRP is a civil dispute concerned with whether the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, whether the Respondent has rights in the disputed domain name, and whether the disputed domain name was registered and is being used in bad faith. These are not essentially criminal matters in and of themselves. The possible prosecution of the Respondent or of the proprietor of the Respondent would appear not to be a “domain-name dispute” within the meaning of paragraph 18(a) of the Rules. In any event the Panel does not consider it realistic that any of its findings in the present dispute under the Policy would be of relevance to potential criminal proceedings, which in any case have not been formulated.
Paragraph 18(a) of the Rules, and also paragraph 4(k) of the Policy, are primarily intended to apply where a Party takes a civil dispute under the Policy to court. In that event, Panels have often proceeded to a decision rather than terminating or suspending the proceeding (BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight,WIPO Case No. D2009-0958: “The Panel’s view is that the Policy generally obliges a Panel to make a decision on a complaint”). The Panel sees no reason not to proceed to a decision in this case. B. Identical or Confusingly Similar
The Complainant has produced satisfactory evidence of its rights in the trademark EDINGURGH ACADEMY. For the purposes of a determination of confusing similarity under the Policy, punctuation spaces and the presence of the generic top level directory “.org” are of no consequence. The Panel finds the disputed domain name to be confusingly similar and identical to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Since the Complainant’s task of proving that the Respondent does not have rights or legitimate interests in the disputed domain name requires the proving of a negative, it is conventional for the Complainant to state a prima facie case and for the Respondent to have the opportunity to assert its rights or legitimate interests in the terms of paragraph 4(c) of the Policy or otherwise to the satisfaction of the Panel.
The provisions of paragraph 4(c) of the Policy, which are without limitation, are as follows:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The Complainant has asserted that the Respondent is in businesses unrelated to the Edinburgh Academy. It says there is no evidence the Respondent has used the disputed domain name in connection with a legitimate business and there is no evidence the Respondent has been generally known as the Edinburgh Academy. The Respondent has not contested the Complainant’s assertions and has made no formal reply.
The absence of a formal Response does not lead to a summary or default decision under the Policy. The Panel must consider possible defences the Respondent may have, and whether the Complainant has succeeded in proving its case on the balance of probabilities. In this instance the Respondent evidently has some grievance with the Complainant and the evidence indicates that the disputed domain name is intended to be used to air certain views about the Complainant. Websites on which an entity means to express views about another can be legitimate and are known as tribute or criticism sites, such as might come within the ambit of paragraph 4(c)(iii) of the Policy.
In general terms, the Respondent is free to express its views. Its freedom to do so is constrained by the civil sanction of potential action for damage caused, and is constrained by the bounds set by criminal law as to what may be said or displayed to the public. The Panel in this case knows nothing about, and cannot be concerned with, perceptions of truth that may lie at the heart of any disagreement between the Complainant and the Respondent’s guiding mind. The Panel’s concern is whether the Respondent’s choice of a domain name containing the Complainant’s trademark for the purposes of a criticism website may be founded upon a legitimate interest.
Whilst decisions under the Policy are non-precedential, panels generally strive for reasonable uniformity. Some dichotomy may be found in the history of criticism website decisions, however, as to whether the implied limited licence to use another’s trademark, for instance to review or sell something, extends to the use of the actual trademark as a part of a domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”) at paragraph 2.4). The clear consensus is that even if might do so in particular circumstances, then it must be immediately plain to any intending visitor that the domain name or website is not that of the trademark owner. Any use of the domain name for email must make plain that the originator is not the Complainant.
In the present case it is not necessary for the Panel to consider whether there could have been hypothetical circumstances in which the trademark EDINBURGH ACADEMY might have been incorporated into a domain name by the Respondent without the Complainant’s authority. It is sufficient to observe that the disputed domain name is as confusingly similar to the Complainant’s trademark as is technically possible, comprising solely the trademark EDINBURGH ACADEMY and the gTLD “.org”. The disputed domain name is also virtually identical to the Complainant’s authentic domain name and Internet presence “www..uk”. In the Panel’s finding, any intending viewer of the website corresponding to the disputed domain name and any recipient of an email from the corresponding address would be highly likely to believe, at least initially, from the structure of the disputed domain name, that it originated from the Complainant when in fact it originated from the Respondent. The Respondent’s usage of the disputed domain name is found not to qualify as fair within the contemplation of paragraph 4(c)(iii) of the Policy. The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
The Complainant is must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a Respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found alternatively.
On the evidence, the Respondent has registered and used the disputed domain name comprising solely the trademark of a long-established school and has used the website to which it resolves with intent to redirect Internet users to a pornographic website. The Respondent’s website has also been used to display to viewers a notice headed “IMPORTANT NEWS WILL POST SHORTLY”. The notice makes reference to children and in all the context it may reasonably be inferred that it refers to the Edinburgh Academy. The notice uses words including “mistakes”, “lies” and “cover ups”. The Panel has decided in paragraph 6C above that the Respondent does not have rights or legitimate interests in the disputed domain name on the basis of it being an intended criticism site or for any other reason. Paragraph 4(b)(iii) of the Policy provides for a finding of bad faith where the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. The definition of a competitor in the context is wide (Mission KwaSizabantu v. Benjamin Rost,WIPO Case No. D2000-0279: “The natural meaning of the word “competitor” is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor”). On the balance of probabilities, the Panel finds the disputed domain name to have been registered and used by the Respondent in bad faith for the purpose of disrupting the business of the Complainant within the general provisions of paragraph 4(a)(iii) of the Policy and specifically in the terms of paragraph 4(b)(iii) of the Policy. 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 disputed domain name be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Date: January 31, 2013
Full & Egal Universal Law Academy