Complainant is Yale University of New Haven, Connecticut, United States of America, represented by Venable, LLP, United States of America.
Respondent is Whois Agent, Whois Privacy Protection Service, Inc. / john chow, imapa of Bellevue, Washington, United States of America and Timur, Indonesia, respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with N 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 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 28, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 4, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 11, 2013.
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 Respondent of the Complaint, and the proceedings commenced on March 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 4, 2013.
The Center appointed Clive L. Elliott as the sole panelist in this matter on April 11, 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 Domain Name was registered with the Registrar on December 24, 2012. 5. Parties’ Contentions A. Complainant
Complainant states that it’s YALE and YALE UNIVERSITY trademarks in the field of educational services, medical services, child development services, and licensed collateral goods such as clothing, sporting equipment, and other typical licensed goods, are world famous, and registered in numerous countries, including the United States. Complainant also states that it uses its YALE mark in connection with child development studies and clinics, and has operated the YALE Parenting Center and Child Conduct Clinic for over thirty years.
Complainant objects to Respondent's registration of the Domain Name because it is likely to be confused with Complainant's distinctive trademarks YALE and YALE PARENTING CENTER. Complainant contends that its rights in these marks are expansive and predate Respondent's registration of the Domain Name. Complainant asserts that Yale University is a leading university whose worldwide fame and reputation are beyond dispute, was founded in 1701, and has been known as Yale College or Yale University since the early 1700's. Complainant also asserts that many distinguished leaders in government, academia, science and business are Yale Graduates, including three of the past four United States presidents.
Complainant submits that there is clear similarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; and that as the Domain Name contains the YALE trademark together with the generic term, "parenting center" and it contends that this is sufficient to be considered as "confusingly similar" to that trademark.
Complainant asserts that the Domain Name is also identical to its strong common law rights in YALE PARENTING CENTER, as this name appears prominently on Yale's website and has been in use for many years.
Complainant states that it had previously registered a similar domain name , but that domain name had since lapsed. It alleges that Respondent has registered a similar domain name in an attempt to impersonate Complainant.
Complainant asserts that it uses its YALE mark on its website, and on collateral goods such as t-shirts, mugs, golf balls, and other promotional items, and that the Internet is a significant vehicle for Complainant, especially as its websites are an important part of its ability to provide information to alumni, applicants, students and employees. Complainant suggests that Respondent's Domain Name and websites are deliberately designed to, and will, confuse customers and cause them to believe mistakenly that the Domain Name and website are sponsored by Yale.
Complainant submits that Respondent is using the Domain Name to provide child-rearing advice services but without providing evidence as to how the Domain Name is actually used. Complainant asserts that Respondent has no rights or legitimate interests in respect of the Domain Name and that to the best of Complainant's knowledge, Respondent has no rights to any trademark consisting of the term “Yale” in any country.
Complainant believes the Domain Name was acquired and is being used in bad faith and contends that Respondent acquired this Domain Name for the purposes of commercial gain, with knowledge that Complainant held rights in and to its YALE marks. Complainant suggests that Respondent is impersonating it in a calculated and deliberate scheme to confuse consumers as to the association of YALE with Respondent's child-rearing advice services, which is clear evidence of bad faith intent to profit.
Complainant also submits that Respondent is using the blue-and white color scheme widely used by Yale, on the website at the Domain Name in a further effort to suggest a connection with the University. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant provides clear evidence that it has been known as Yale College or Yale University since the early 1700's and has used and registered its YALE trademark (hereinafter referred to as the “YALE Trademark”) in the United States for many years. Complainant also provides evidence that it has been using the common-law trademark YALE PARENTING CENTER, as this name appears prominently on its website and has been doing so for many years.
Complainant establishes that the YALE Trademark and YALE PARENTING CENTER common-law trademark (hereinafter together the "YALE Marks") are exclusively associated with Complainant. It is clear that by virtue of its use of and the repute in the YALE Marks that an unrelated entity or person using a similar domain name is likely to lead to members of the public to being confused and deceived.
Complainant argues that the Domain Name is confusingly similar to the YALE Marks in that it incorporates Complainant's YALE Trademark together with the generic term, "parenting center" and contends that this is sufficient to be considered as "confusingly similar" to the YALE Trademark. The overall impression must be that the Domain Name is necessarily connected in some way to Complainant and/or its YALE Marks.
On this basis the Panel finds:
a) Complainant has rights in respect of the YALE Marks.
b) The Domain Name is confusingly similar to the YALE Marks.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
As noted above, Complainant contends that Respondent is providing various child-rearing advice services in relation to a website to which the Domain Name resolves. It is not difficult to infer, in the absence of any denial by Respondent, that through these activities Respondent is using a deliberately similar version of Complainant’s YALE Marks and Complainant’s significant goodwill and reputation to attract Internet traffic.
The Panel concludes that the Domain Name has been or is likely to be employed as a means of improperly diverting Internet customers. In these circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate and thus permissible.
On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
Having reached the view that Respondent has intentionally attempted to attract for commercial gain Internet users to its websites thereby creating a likelihood of confusion with Complainant and/or the YALE Marks, in the absence of any explanation from Respondent, the Panel finds that it registered and used the Domain Name in bad faith. That is, so as to take bad faith advantage of Internet users who may wish to make contact with or otherwise communicate with Complainant.
Further, the Panel is satisfied that the finding of bad faith registration is supported by the fact that Complainant’s YALE Marks and particularly the YALE Trademark significantly pre-date Respondent’s registration of the Domain Name and in light of the long-established use and widespread protection of the YALE Trademark in particular that Respondent knew or ought to have known of Complainant’s prior rights.
The Panel thus has no difficulty in concluding that the third element of the Policy has been met. 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 Complainant.
Clive L. Elliott
Sole Panelist
Date: April 25, 2013
Full & Egal Universal Law Academy