The Complainant is President and Fellows of Harvard College of Cambridge, Massachusetts, United States of America, represented by Steptoe & Johnson LLP, United States of America.
The Respondents are Yousuf Shakeel and Shakeel Ahmad of Karachi, Pakistan, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba .
The disputed domain name is registered with GoD, LLC. The disputed domain names are collectively referred to as the “Domain Names”, and Key-Systems GmbH dba and GoD, LLC are collectively referred to as the “Registrars”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2013. On October 24, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On October 24 and 25, the Registrars transmitted by email to the Center their verification response confirming that the Respondents are listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 7, 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 Respondents of the Complaint, and the proceedings commenced on November 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2013. The Response was filed with the Center on November 30, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on December 12, 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 the President and Fellows of Harvard College, a corporation organized and existing under the laws of the Commonwealth of Massachusetts, United States. Founded in 1636, the Complainant is the oldest institution of higher education in the United States. It enjoys a world-class reputation throughout the United States and the world as a pre-eminent learning institution.
The Complainant owns numerous trade marks containing the word “Harvard” including the word mark HARVARD (the “HARVARD Mark”) which it registered in the United States on July 31, 1990. In addition, the Complainant owns numerous domain name registrations that incorporate the HARVARD marks in whole or in part. The Complainant owns the following domain names: , , , , , , , , , , , , , and .
The Domain Name was registered on March 29, 2013. It currently resolves to a website (“Respondents’ Website”) that offers case studies and case solutions. It makes no reference to Harvard other than a disclaimer on the front page. However, prior to the commencement of this proceeding the Respondents’ Website was titled “Harvard Solution”, contained no disclaimer, and contained on the opening page, the logo of the Harvard Business School.
The Domain Name was registered on December 20, 2012. It is currently inactive, however prior to the commencement of the proceeding resolved to a website (“Respondents’ Former Website”) that offered case studies and case solutions. It bore the title “Harvard Case Studies Solutions”. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s HARVARD Mark;
(ii) that the Respondents have no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the HARVARD Mark. It owns trade marks for the HARVARD Mark in the United States and enjoys significant worldwide reputation in those marks.
The Domain Names consist of the HARVARD Mark in its entirety with the addition of the words “solution” and “case studies”. The Domain Names are confusingly similar to the HARVARD Mark in terms of appearance, sound, impression and meaning.
There are no rights or legitimate interests held by the Respondents in respect of the Domain Names. The Respondents are not commonly known as the Domain Names, nor do the Respondents have any authorization from the Complainant to register the Domain Names. The Respondents are using the Domain Names to redirect Internet users to websites that offer services related to the Complainant’s goods and services. Numerous other UDRP decisions confirm that respondent’s use of a domain name to divert Internet traffic in this way is not considered to be in connection with a bona fide offering of goods or services pursuant to the Policy, or a legitimate noncommercial or fair use pursuant to the Policy. The Respondents’ use does not grant the Respondents rights or legitimate interests in the Domain Names.
The Domain Names were registered and are being used in bad faith. The Domain Names were registered when the Respondents had actual or constructive notice of the Complainant’s rights in the mark by virtue of the Complainant’s United States trademark and service mark registrations and its international reputation. There is no plausible explanation for the Respondents registering and using the Domain Names other than to divert Internet traffic to their website to derive commercial gain. Use of the Domain Names by the Respondents “will inevitably be associated with the [products of] Complainant and this must have been known to or foreseen by the Respondent.” Ford Motor Company and Land Rover LTD. v. Institution,WIPO Case No. DBIZ2001-00045. By registering Domain Names that infringe the HARVARD Mark and using the Domain Names to redirect Internet users to the Respondents’ commercial websites, the Respondents both registered and used the Domain Names in bad faith pursuant to the Policy. B. Respondent
The Domain Names do not refer to Harvard University or any other trademarks of the Complainant. The reference to “Harvard” in the Domain Names refer to Balochi (a regional language spoken in Pakistan) word “Harvard” or “Harward” which means difficult to solve, or difficult to answer.
The Domain Names resolve to websites that provide solutions to business case studies. The Domain Names do not provide any such services or products which could cause confusion with the trademark or products or services offered by the Complainant.
The Respondents are a registered company and own trademark in Pakistan for “HARVARDCASESTUDIES”.
The Respondents are in no way using the Domain Names to attempt to attract, for commercial gain, Internet users to their web sites 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 their web sites or location or of a product or service on their websites or location. The Respondents’ products and services are very different. There is no way Internet users could be confused. Furthermore the Respondents have now included a disclaimer that they are in no way related to the Complainant. 6. Discussion and Findings A. Consolidation of Proceedings
The named registrant of is Yousuf Shakeel. The named registrant of is Shakeel Ahmad. UDRP proceedings are normally brought against a single Respondent. However, as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16, it is permissible to consolidate a proceeding against more than one named Respondent if (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against Yousuf Shakeel and Shakeel Ahmad. Both Domain Names have similar contact information, maintain similar websites with identical contact information on those sites and are clearly subject to common control. In addition, the Respondents have filed a single response in which they address the Complaint against both Domain Names. It is clear from the Response that the Domain Names are subject to common control. Given that both parties appear to have consented to the consolidation, the Panel finds that the consolidation would be fair and equitable to all parties. B. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the HARVARD Mark, having registrations for HARVARD as a trade mark in the United States.
The Domain Names consist of the HARVARD Mark in its entirety with the addition of the words “solution” and “case studies”. The addition of these words does not prevent a finding of confusing similarity between the HARVARD Mark and the Domain Names. An individual viewing the Domain Names may be confused into thinking that the Domain Names would refer to case studies offered by the Complainant or solutions to problems posed by the Complainant.
The Respondents’ have argued that no confusion exists because the websites at the Domain Names do not provide any such services or products which could cause confusion with the Complainant. The content of a website (whether it is similar to or different from the business of a trademark holder) is normally not relevant in determining the confusing similarity under the first element of the Policy. The Panel finds that the Domain Name is confusingly similar to the Complainant’s HARVARD Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.” (Policy, paragraph 4(c))
The Respondents are not affiliated with the Complainant in any way. They have not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the HARVARD Mark or a mark similar to the HARVARD Mark. There is no evidence that the Respondents are commonly known by the Domain Names or any similar name. It is clear from the Response that the Respondents are not making a noncommercial use of the Domain Names. Rather it appears from the evidence that the Respondents were using the Domain Names to operate websites that, without the permission of the Complainant:
(a) made reference to the Complainant’s HARVARD Mark, including reproducing its Harvard Business School logo, potentially indicating that the Respondents are in some way connected with the Complainant or offer its services; and
(b) appeared to offer educational services, or at least services that are associated with the Complainant, from which the Respondents are likely to receive some revenue.
Such use is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondents lack rights or legitimate interests in the Domain Names.
The Respondents have asserted that they are known by the business name “Harvard Case Studies” and have registered a trade mark for HARVARDCASESTUDIES. There is no evidence of any sort that the Respondents hold a registered trade mark for HARVARDCASESTUDIES. The proof that the Respondents have a business name is a link to a Pakistani website that appears to record Yousuf Shakeel’s income taxation records and makes reference to Mr Shakeel having a business or branch name for “Harvard Case Studies”.
Even in the event that the Respondents have registered a business name in Pakistan for “Harvard Case Studies”, the Panel finds that is insufficient to establish that they have rights or legitimate interests in the Domain Names. There is no evidence of when the business name was registered or whether there is any examination process for the purpose of registering business names. If the mere registration of a business name (as opposed to an examined trade mark) was sufficient to show rights or legitimate interests it would be possible for a professional cybersquatter to defeat any UDRP case merely by obtaining an unexamined business name registration upon the commencement of a claim against it.
The Panel finds that the Respondents, by registering the Domain Names, have generated commercial gain for themselves by intentionally and misleadingly diverting Internet users to their own websites through the use of the Complainant’s HARVARD Mark. Such use does not give rise to any rights or legitimate interests. The Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name’ registration to the complainant who is the owners of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondents were aware of the Complainant and its reputation in the HARVARD Mark at the time the Domain Names were registered. The Complainant has a world-wide reputation in its HARVARD Mark. Furthermore the Respondents’ Website has in the past reproduced the Harvard Business School Logo, indicating an awareness of the Complainant at the time of registering the Domain Names.
The Panel cannot conceive of a reason to register the Domain Names other than to benefit from any confusion arising from the reputation of the Complainant. The Respondents have argued that the reason for the registration of the Domain Names was as a reference to the Balochi word “Harvard” or “Harward” which means “difficult to solve”, or “difficult to answer”. To this Panel, this explanation is implausible. The Domain Names and the Respondents’ Websites are in English. The Respondents have provided no evidence (such as a dictionary extract) of the existence of the word “Harvard” in the Balochi language. It is also inconsistent with the fact that the Respondents’ Website has displayed the Harvard Business School Logo, evidencing a clear intention to capitalise on any confusion between the Complainant and the Respondents.
The registration of the Domain Names in awareness of the HARVARD Mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith.
The Respondents are using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s HARVARD Mark as to the source, sponsorship, affiliation or endorsement of their websites. The Respondents’ Website and the Respondents’ Former Website are commercial operations that appear to be selling case summaries and business case solutions. There is no logical reason to use the word “Harvard” in connection with the Respondents’ business other than to benefit from any association or confusion between the Complainant and the Respondent. The Panel finds that such use amounts to use in bad faith.
The Panel is not persuaded by the Respondents’ arguments that the Respondents’ products and services are different from the Complainant’s products and services. Firstly, both entities are offering educational services, and services that are arguably complementary. Secondly, by reason of the Respondents’ past inclusion of the Harvard Business School Logo there is evidence of a clear intention to benefit from any association or confusion that exists between the Complainant and the Respondents. The recent inclusion of a disclaimer on the Respondents’ Website does not change this. The WIPO Overview 2.0, paragraph 3.5, notes that “The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by UDRP panels with reference to the probability of Internet user “initial interest confusion” - by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved.”
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under 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 Domain Names and be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: December 20, 2013
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