The Complainant is The Chancellor, Master and Fellows of the University of Cambridge, Faculty of Divinity, Cambridge, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Mills & Reeve LLP, United Kingdom.
The Respondent is Contact Privacy Inc. of Toronto, Ontario, Canada; No Faith in Blair, N/A of London, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names , and (together “the Domain Names”) are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2013. On April 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 22, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 29, 2013.
The Center verified that the Complaint together with the amended 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 May 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2013.
The Center appointed Dawn Osborne as the sole panelist in this matter on June 6, 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 one of the world's oldest universities and was founded in 1209. It has since that time been known by the trade marks “Cambridge”, “University of Cambridge” and “Cambridge University” (“the University Marks”). The University offers a wide range of academic courses. Divinity has been taught since the first half of the 13th century. The Complainant owns a UK registered trade mark for CAMBRIDGE filed on September 1997 and registered on 12 March 1999 for educational related goods and services. The Complainant is also the owner of a Community Trade Mark for UNIVERSITY OF CAMBRIDGE for, inter alia, educational services.
The domain names and were registered on September 13, 2008 and the domain name was registered on December 8, 2008. They have been used for a web site criticising a programme of the Complainant’s called the Cambridge Inter-faith Programme (“the Programme Name”). 5. Parties’ Contentions A. Complainant
The Complainant’s submissions can be summarised as follows:
The domain names and were registered on September 13, 2008 and the domain name was registered on December 8, 2008.
The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant is one of the world's oldest universities and was founded in 1209. It has for centuries been known by the trade marks "Cambridge", "University of Cambridge" and "Cambridge University" ("the University Marks"). The University offers a wide range of academic courses. Divinity has been taught since the first half of the 13th Century.
The Complainant promoted and continues to promote its activities and its business under and by reference to the University Marks across a wide range of media, both globally and in the UK. By the time the Domain Names were registered in 2008 the Complainant had acquired a substantial reputation and goodwill in the UK and internationally in the University Marks including for the provision of education and in particular inter-faith studies such as to found rights in the UK under the law of Passing Off.
The Complainant established its Cambridge Inter-faith Programme (“the Programme”) in 2002 since which time it has provided research and teaching activities and academic courses and organised conferences attended by high profile figures. By the time the Domain Names were registered in 2008 the Complainant had acquired a substantial reputation and goodwill in the Programme Name such as to found rights under the law of Passing Off.
The Complainant owns a UK registered trade mark for CAMBRIDGE filed on September 1997 and registered on March 12, 1999 for educational related goods and services. The Complainant is also the owner of a Community Trade Mark for UNIVERSITY OF CAMBRIDGE for, inter alia, educational services.
The dominant and distinctive element of each of the Domain Names is the word “Cambridge” (the words inter-faith programme being merely descriptive). As such the Domain Names are identical or confusingly similar to the University Marks, the Programme Name, and the Complainant's UK and Community trade marks. The omission of the hyphen is immaterial.
Mr. Al Hussaini of the Respondent stated that the Domain Names were owned by him in correspondence and in the same correspondence said the Domain Names were not for sale. The Respondent has not been authorised by the Complainant to register or use the Domain Names. The content attached to the Domain Names (“the Website”) has never been used in relation to the bona fide offering of goods and services, but to attack the Programme. The Respondent has never been commonly known by the Programme Name or the Domain Names. No non-commercial or fair use is being made of the Domain Names without intent for commercial gain. The clear purpose of the Website is misleadingly to divert Internet users to the Websites and tarnish the Programme and the Programme Name. Accordingly the Respondent has no rights or legitimate interests in respect of any of the Domain Names.
The Websites make false statements about the Programme. The manner in which the Website features a heading in bold red font with the Programme Name and appears in Internet search results is likely to cause confusion in the minds of the relevant public that the Website is associated or connected with the Complainant. The Disclaimer it is “independent of control of the Cambridge Inter-faith Programme” is given less prominence and is not likely to be noticed.
The Domain Names were registered to prevent the Complainant from reflecting the Programme Name in a corresponding domain name. Registering the three Domain Names and another domain name not the subject of this complaint in this manner constitutes a pattern of conduct. The Domain Names were registered to damage the reputation of the Programme and to disrupt the Complainant's business.
The Domain Names have been used in an intentional attempt to attract Internet users to the Websites by creating a likelihood of confusion with the Complainant’s marks as to the source, affiliation or endorsement of the Website.
The registration of the Domain Names in the name of “No Faith in Blair” is not a proper name and contrary to Fasthost's terms of service. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith. A. Identical or confusing similarity
The Domain Names are confusingly similar to the Complainant’s CAMBRIDGE registered trade mark, consisting of the Complainant’s CAMBRIDGE trademark and the generic text “interfaithprogramme” reflecting the exact name of educational services that the Complainant offers. The distinctive part of the Domain Name is the CAMBRIDGE name. As such the addition of the non distinctive words “interfaithprogramme” does nothing to prevent the confusing similarity of the Domain Names with the Complainant’s CAMBRIDGE registered trademark. The Complainant's University marks are famous and well known and the Complainant also owns goodwill in the Programme Name. As such the Domain Names are confusingly similar to the CAMBRIDGE registered trade mark in which the Complainant has rights and are identical for the purposes of the Policy to the Programme Name in which the Complainant also owns unregistered trade mark rights. B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interests in the Domain Names. Despite the prominent heading in red “Cambridge Inter-faith Programme” and “Who we are and our friends” which the Panel finds is confusing and suggests the official site of the Cambridge Inter-faith Programme, the Respondent does not commonly appear to be known by the Domain Names and has no consent from the Complainant to use its CAMBRIDGE mark or the Programme Name. In view of the confusing nature of the Website, and the use of the CAMBRIDGE trade mark and the Programme Name, the exact name of one of the Complainant's educational programmes in the Domain Names, the Panel finds that the second element of the Policy has been established. The right to criticise does not extend to registration and use of domain names that are identical or confusingly similar to trade marks in which the Complainant has rights. C. Registered and Used in Bad Faith
The Respondent has not provided any explanation why it would be entitled to register Domain Names equivalent to the Complainant’s CAMBRIDGE trade mark with only a generic and related term added and the identical name to one of the Complainant’s educational programmes then make statements not connected with the Complainant using the Domain Names and the CAMBRIDGE mark and the Programme Name. The headings in red “Cambridge Inter-faith Programme” and “Who we are and our friends” taken together are confusing and give the impression that the Website attached to the Domain Names is the official site of the Cambridge Inter-Faith Programme. In the absence of a Response from the Respondent, and considering the material attached to the Domain Names the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Names in bad faith with an intent, followed by actual use of the Domain Names, to attempt to attract Internet users to its Website by creating a likelihood of confusion that its Website is connected to the Complainant and its trade marks. The content of the Website is politically charged and could well and appears to be designed to tarnish the Complainant’s commercial trade marks both registered and unregistered by the linking of inappropriate information to the Complainant's CAMBRIDGE registered mark and the Programme Name. Accordingly whilst the usage does not fit cleanly into the non exhaustive examples given by the Policy of activities amounting to bad faith, under its general discretion, having considered the registration and confusing use of the Domain Names the Panel determines that the Respondent has registered and is using the Domain Names in bad faith. 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 Names, , and be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Date: June 13, 2013
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