The Complainant is Yale University of New Haven, Connecticut, United States of America, represented by Venable, LLP, United States of America.
The Respondent is Seo Talk of New Delhi, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2013. On February 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the disputed domain name.
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 March 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2013.
The Center appointed Alistair Payne as the sole panelist in this matter on April 3, 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 owns various trade mark registrations for its YALE mark including registration number 721176 in India for the word mark YALE and registration number 7348251 in the United States. The first registrant of the disputed domain name was the “Yale Parenting Center” up until the expiry of this registration on June 16, 2011. The Respondent registered the disputed domain name following the expiry of its registration on August 5, 2011. 5. Parties’ Contentions A. Complainant
The Complainant submits that its YALE name and mark is famous and is extremely well known worldwide, in particular in India where the Complainant undertakes various educational programmes including by bringing Indian nationals to Yale University for courses of study. It also asserts that it owns registered trade marks in the YALE word mark as noted above.
The Complainant submits that the disputed domain name is confusingly similar to its YALE mark on the basis that because of the fame attributable to its mark this element is the most distinctive element of the disputed domain name and the additional element, the expression “parenting center” is a commonly used and generic expression in the English language. It also says that the disputed domain is identical to the name or mark “Yale Parenting Center” which it owns.
It further says that the Respondent has no rights or legitimate interests in the disputed domain name and nor does it have any rights in the mark YALE in any country.
The Complainant asserts that it owned the disputed domain name and used it to resolve to a web page for the “Yale Parenting Center” up until its expiry on June 16, 2011, and that following expiry the Respondent in bad faith took advantage of the opportunity to register the disputed domain name for its own purposes, to confuse Internet users and make them believe that it or its child rearing services were somehow affiliated with or sponsored by the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel accepts the Complainant’s evidence that it owns various trade mark registrations for its YALE mark including registration number 721176 in India and registration number 7348251 in the United States for the word mark YALE. The Panel also accepts that the YALE name and mark, is so well known in relation to the Complainant both in the United States and elsewhere as to fall into the category of marks that are well known. However the Panel does not find that there is sufficient evidence before it to make out the Complainant’s case that it owns common law or unregistered trade mark rights in the combined expression “Yale Parenting Center”, although in the circumstances nothing turns on this.
The disputed domain name is comprised of the YALE mark followed by the expression “parenting center”. This latter expression is, as the Complainant submits, a common expression in the English language which the Panel finds to be non-distinctive. Considering the degree of renown and fame attaching to the YALE mark and its dominance and distinctiveness in the disputed domain name, the Panel finds that the YALE mark is the dominant and distinctive element of the disputed domain name and accordingly that it is confusingly similar to the Complainant’s YALE trade mark. This approach is consistent with the general approach of other UDRP panels to confusingly similarity in this situation. See for example paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
As a result the Panel finds for the Complainant in relation to the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent has no rights or legitimate interests in the disputed domain name and neither does it have any rights in the mark YALE in any country. For the reasons set out below under the third element, the Panel finds that on balance the Complainant has established a prima facie showing that the Respondent’s registration and use of the disputed domain name was not legitimate and that there is accordingly no evidence to rebut the Complainant’s claim under this head.
As a consequence the Panel finds that the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant submits that it owned and used the disputed domain name for its parenting centre website prior to the expiry of the registration on June 16, 2011, and immediately before the Respondent registered the disputed domain name. The publicly-available WhoIs record for the disputed domain name indicates that it was originally owned by the “Yale Parenting Center” and the Complainant submits that it owned and operated the Center for some 30 years. Although there is nothing otherwise before the Panel in relation to the ownership or legal status of the “Yale Parenting Center”, it is apparent from the copies website previously located at the disputed domain name and operated by the Complainant, which featured the Complainant’s logo that it was run as one of the diverse activities of the university and the Panel therefore accepts the Complainant’s submission in this regard. The Panel further notes that the “Yale Parenting Center” appears to have attracted some degree of renown in its own right based on the material submitted by the Complainant.
In view of the renown attaching to the YALE mark, the Yale Parenting Center’s prior operations, the reputation attaching to its activities and its previous website at the disputed domain name, the Respondent’s conduct in registering the disputed domain name upon its expiry was, in the Panel’s view, most probably motivated by a desire to trade off the reputation and goodwill attaching to the Complainant’s mark and to the “Yale Parenting Center” itself, by confusing and diverting Internet users to Respondent’s website.
This inference is reinforced by the renown attaching to the YALE mark in the United States, India and elsewhere, which in the Panel’s view, implies that the Respondent was almost certainly well aware of the Complainant’s tertiary education activities. It is further reinforced by the Respondent’s development of a website at the disputed domain name which ostensibly provides information on baby care but also contains links to providers of various commercial websites both related and un-related to parenting, for example a United Kingdom-based baby gift website, a website for pole dancing classes in Miami, and a website advertising video games. It also appears to contain separate space that is intended for commercial advertising. This usage goes beyond any kind of noncommercial fair or legitimate use and points to the commercial intent of the Respondent.
As a result the Panel finds that under paragraph 4b(iv) of the Policy, the Respondent 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.
Accordingly the Panel finds that the disputed domain name was both registered and used in bad faith and that the Complaint succeeds under the third element 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.
Alistair Payne
Sole Panelist
Date: April 8, 2013
Full & Egal Universal Law Academy