The Complainant is Robert Kennedy College & Co Gmbh of Zurich, Switzerland, represented internally.
The Respondent is DomainsByP of Scottsdale, Arizona, United States of America (“USA”) / djeanp7898@ of Woodridge, Illinois, USA. 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 April 8, 2013. On April 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. Also, in response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 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 the Respondent of the Complaint, and the proceedings commenced on April 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2013.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 7, 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.
On May 16, 2013, the Respondent sent an email communication to the Center and the Complainant indicating its willingness to transfer the disputed domain name. On May 22, 2013, the Administrative Panel Procedural Order No. 1 was issued to invite the Complainant to make any comment it might have regarding the Respondent’s suggestion. No communication was received from the Complainant within the specified date, and the Panel informed the parties on May 28, 2013 that it would proceed to issue the Decision. 4. Factual Background
According to information provided by the Complainant, it is the proprietor of Robert Kennedy College, and its use of the appellation “Online Campus” refers to a proprietary learning platform of the College. The Complainant is the registrant of the following trademarks:
ROBERT KENNEDY COLLEGE, Swiss Federal Institute of Intellectual Property (IGE), registration number P-507118, registered January 30, 2003, class 41: The owner of the above trademark was recorded on January 30, 2003 as Association Robert Kennedy College. On December 23, 2005, it was transferred to David Costa, a change of whose address was recorded on February 22, 2012. Dr. David Costa is named in the Complaint as the Complainant’s representative and is named on some correspondence with the Center as Dean and Collegiate Professor.
ROBERT KENNEDY COLLEGE, United States Patent and Trademark Office (USPTO), principal register, standard character mark, registration number 3335285, registered November 13, 2007, class 41: The owner of the above trademark was recorded as David Costa, c/o Robert Kennedy College at its present address.
No factual information is available about the Respondent except for the names and contact details submitted for the purpose of registration of the disputed domain name, which was created on February 6, 2013. 5. Parties’ Contentions A. Complainant
The Complaint is brief and what follows below conveys most of what the Complainant has said.
With reference to confusing similarity between the disputed domain name and the Complainant’s trademark, the Complainant says it is the rightful owner of the trademark ROBERT KENNEDY COLLEGE, and has produced copies of the trademark registration documents. The Complainant says that “Online Campus” refers to a proprietary learning platform of the College.
With reference to any Respondent rights or legitimate interests in the disputed domain name, the Complainant says only: “no right to use our trademark”.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. It says that the disputed domain name was registered with the intention to exploit users of a popular search term "Robert Kennedy College Online Campus". The website of the disputed domain name hosts copyright material taken without authority from the Complainant’s website. A screenprint of the Respondent’s website is produced in evidence. The Complainant says the Respondent’s intention is to redirect visitors to a non-authorised website in order to gather revenue through the Google Adwords system.
The Complainant requests the transfer to itself of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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.
The Registrar’s verification of registrant details stated that the disputed domain name was registered with privacy. The use of a privacy service by a registrant may be entirely legitimate, or it may be done with the intention of appearing to avoid the service of any complaint, whether under the auspices of the UDRP or otherwise. The Center notified the Complaint to the Respondent on April 12, 2013 by email sent to the Respondent’s address of record, which was delivered, and also to the postmaster at the disputed domain name and via the address provided under the privacy service, DomainsByP. The Complaint was also sent by post/courier addressed to the physical address of the Respondent in Illinois as disclosed by the Registrar, and to the physical address of DomainsByP in Arizona, both of which packages were tracked as having been signed for on delivery. The Panel is satisfied that the Center, by addressing the Complaint in accordance with such registrant contact details as were available, has fulfilled its obligations to attempt to notify the Respondent of the Complaint in accordance with paragraphs 2 and 4 of the Rules. A. Identical or Confusingly Similar
The Complainant, being Robert Kennedy College & Co Gmbh, claims to have rights in two trademarks for ROBERT KENNEDY COLLEGE as listed in section 4 above. According to the trademark registration document, the Swiss (IGE) trademark was registered to Association Robert Kennedy College and later transferred to David Costa. The USPTO trademark was registered to David Costa, c/o Robert Kennedy College. Taking into account that David Costa is Dean of the Robert Kennedy College, and is its representative in the present proceeding, and in the absence of any challenge from the Respondent in the matter, the Panel accepts, solely for the purposes of this proceeding, that the Complainant has a sufficient connection with, and rights in, the trademark ROBERT KENNEDY COLLEGE to fulfill the relevant requirement of paragraph 4(a)(i) of the Policy.
The disputed domain name commences with a clear expression of the Complainant’s name and trademark ROBERT KENNEDY COLLEGE. The remainder of the disputed domain name, “onlinecampus”, is found not to be distinguishing but to be a descriptive term that enhances confusing similarity by adding words of relevance to college activities generally in the context of on-line participation. The generic Top-Level Domain (gTLD) directory designation “.com” is not of consequence in this case in the determination of confusing similarity. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark in the terms of paragraph 4(a)(i) of the Policy and accordingly finds for the Complainant in this respect. B. Rights or Legitimate Interests
The Complainant is required to prove under paragraph 4(a)(ii) of the Policy that the Respondent does not have rights or legitimate interests in the disputed domain name. In addressing this requirement the Complainant has merely stated: “no right to use our trademark”.
Paragraph 4(c) of the Policy provides for the Respondent to rebut the Complainant’s prima facie case in any way satisfactory to the Panel, of which the following are illustrative examples:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not obliged to respond, and the onus remains upon the Complainant to prove its case. There is no provision under the Policy for a decision by default for the Complainant in the event that the Respondent does not reply. In endeavouring to add some substance to its statement that the Respondent had “no right to use our trademark”, the Complainant could have made sufficient enquiries to satisfy the Panel, at least prima facie, that the Respondent did not apparently have rights or legitimate interests in the disputed domain name by virtue of any provision of paragraph 4(c) of the Policy or otherwise.
The Panel does not undertake independent enquiries on behalf of either the Complainant or the Respondent. In the exercise of its power, however, whilst acting neutrally, to undertake limited enquiries of matters of public record (paragraph 4.5, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)), the Panel has viewed the Complainant’s own website and has noted a connection between Robert Kennedy College and specific tertiary educational institutions. Nothing indicates any relationship between the Complainant and the Respondent. Taking into account the Complainant’s assertion, certified to the best of the Complainant's knowledge to be complete and accurate, and all available evidence, and in the absence of any contrary submissions on the Respondent’s behalf, the Panel finds it more probable than not that the Respondent is without rights or legitimate interests in the disputed domain name. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The onus is upon the Complainant to 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 on grounds otherwise satisfactory to the Panel.
The Complainant has produced a screen print showing the content on April 7, 2013, of the website to which the disputed domain name resolved. The dates are of some relevance. The Complainant certifies having sent the original Complaint to the Respondent and to the Registrar on April 6, 2013. Thus the Respondent may reasonably be expected to have heard of the Complaint on or shortly after April 6, 2013. The screen print was not annexed to the original Complaint dated April 6, 2013, but was attached to the amendment to the Complaint dated April 11, 2013. Evidently the screen print was made in the period from April 7, 2013, to April 11, 2013, by which time the Respondent’s website had been taken down and only the cached copy of April 7, 2013 was available.
In the terms of paragraph 4(b) of the Policy, above, there is no evidence that the disputed domain name is or has been offered for sale (paragraph 4(b)(i) of the Policy), and no evidence that the Respondent has been engaged in a pattern of making blocking registrations (paragraph 4(b)(ii) of the Policy). The Respondent’s website does not project the appearance of an embryonic tribute or criticism website such as may come, among other things, within the intentions of paragraph 4(b)(iii) of the Policy, and the Respondent has not attempted to justify any such use.
The Complaint is by inference directed towards the provisions of paragraph 4(b)(iv) of the Policy. The Complainant says that the disputed domain name was registered with intent to exploit Internet users searching for "Robert Kennedy College Online Campus". The cached Yahoo screen print is skeletal and apparently lacking some graphics originally present. The remaining script, although short, projects to the Panel an appearance of excessive repetition of the phrase “Robert Kennedy College Online” and variants, in a manner that may have been intended to assist search engine rankings for related search terms and thereby to aid the attraction of visitors.
The Complainant also says that the Respondent’s intention in attracting Internet visitors to the website is in order to receive revenue through the Google Adwords system. The Panel notes that in this system, a website operator attracts fees in return for the passive hosting of advertisements and links that are commonly targeted towards the geographic and Internet usage profile of each visitor to the website. Such a business operation, known as pay-per-click because the website owner is paid fees after its visitors click on links to other websites, may be entirely legitimate and is often a source of subsidy for news and other public information websites, or as a stand-alone search and referral website. The financial success of a pay-per-click operation depends, however, on the attraction of visitors. The use of another’s trademark, without authority, cannot be accepted as a legitimate means of attracting visitors to a website.
The skeletal screen print does not in fact display any direct evidence of links to advertisers. There is, however, a search box, such as is sometimes used to provide searchers with a limited range of options that may be predominantly revenue-earning pay-per-click links, and a box of a type that may reserve space for targeted advertisements.
The totality of the evidence, including the Respondent’s appropriation without permission of the distinctive trademark ROBERT KENNEDY COLLEGE and the conjunction of that trademark with the evocative term “online campus”, leads the Panel to conclude that the Respondent has intended to attract Internet users by creating a confusing belief, at least initially, that the website of the disputed domain name has the endorsement of the Complainant.
The Panel can conceive of no realistic purpose for the Respondent’s production of a website bearing the Complainant’s name and trademark that would not be intended to produce a benefit for the Respondent. On the evidence and submissions, the Panel finds it more probable than not that the disputed domain name was registered, and has received at least rudimentary use, with the intention of attracting Internet users by confusion for the purposes of exposure to advertising and referral, for commercial gain, within the meaning of paragraph 4(b)(iv) of the Policy. The Panel therefore finds the disputed domain name to have been registered and is being used in bad faith in the terms of paragraph 4(a)(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: May 24, 2013
Full & Egal Universal Law Academy