Complainant is President and Fellows of Harvard College of Cambridge, Massachusetts, United States of America, represented by Steptoe & Johnson LLP, United States of America.
Respondent is World Capital Market, Ming Xu of Temple City, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (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 November 21, 2013 concerning the domain names and . On November 21, 2013, the Center transmitted by email to the concerned registrars, a request for registrar verification in connection with the respective domain names. On November 22 and November 25, 2013, the concerned registrars transmitted by email to the Center their verification responses, disclosing two distinct registrants and contact information for the domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 26, 2013, providing the registrant and contact information disclosed by the registrars to Complainant. The Center noted that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) do not contemplate the filing of a single Complaint against more than one domain name holder when the registrants of the domain names are different. The Center therefore requested that Complainant either file a separate Complaint for one of the domain names and file a short amendment to drop the separately-filed domain name from the current Complaint, or file an amendment to the Complaint to omit or remove the additional domain name from the Complaint. The Center further noted that if Complainant chose to file a separate Complaint concerning one or the other domain name, corresponding fees would need to be submitted for such Complaint.
On November 26, 2013, Complainant submitted the first amendment to the Complaint to drop the domain name from the Complaint. On November 27, 2013, the Center invited Complainant to submit a further amendment to include the underlying registrant of the Disputed Domain Name . Complainant then submitted the second amendment to the Complaint to include the underlying registrant for .1 The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the 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 November 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 20, 2013.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 30, 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
Complainant is the oldest institution of higher learning in the United States and enjoys a world-class reputation throughout the United States and the world as a preeminent learning institution. Since 1638, Complainant has used the HARVARD trademark and has subsequently used trademarks incorporating the HARVARD trademark (the “HARVARD Marks”) in interstate commerce in the United States in connection with the promotion and sale of goods and services, including educational services, publishing services and related products. Examples of the HARVARD Marks include HARVARD UNIVERSITY, HARVARD COLLEGE, HARVARD GLOBAL HEALTH INSTITUTE, HARVARD WORLDWIDE, HARVARD LIBRARY, HARVARD BUSINESS SCHOOL and HARVARD YARD. As a result, the HARVARD Marks have become among the world’s most famous and well-known trademarks.
Complainant owns, among others, United States trademark registrations for the HARVARD Marks, all of which are in full force and effect and validly registered on the Principal Register of the United States Patent and Trademark Office.2 Complainant also owns numerous registrations for the HARVARD Marks throughout the world.
Complainant also owns numerous domain name registrations that incorporate the HARVARD Marks, including, among others, , , , , and .
The Disputed Domain Name was created on August 31, 2011. At the time of drafting of this Decision, the Disputed Domain Name was not pointed to any active website. According to screenshots submitted by Complainant and not contested by Respondent, however, the Disputed Domain Name was previously resolved to a website using the HARVARD Marks and promoting educational services. 5. Parties’ Contentions A. Complainant
Complainant contends that its HARVARD Marks have been continuously and exclusively used in the United States in connection with educational services and related goods for over 370 years. As a result, Complainant contends, the consuming public has come to recognize the Harvard Marks as identifying a single source of high quality services and goods.
Complainant claims that the Disputed Domain Name is confusingly similar to its HARVARD Marks because incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark under the Policy. Further, Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name as Complainant has never licensed or otherwise authorized Respondent to use the HARVARD Marks or to register a domain name incorporating the trademarks. Finally, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because Respondent had actual or constructive knowledge of Complainant’s HARVARD Marks and Respondent has been using the Disputed Domain Name to redirect Internet users to Respondent’s website, which was set up as one competing with Complainant’s business. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order for Complainant to prevail and have the Disputed Domain Name transferred to Complainant, Complainant must prove the following (Policy, paragraph 4(a)(i)-(iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does Complainant have rights in a relevant trademark, and second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that Complainant has established rights in the HARVARD Marks based on both longstanding use as well as its numerous United States and foreign trademark registrations for the HARVARD Marks. The Disputed Domain Name consists of the HARVARD trademark plus the descriptive letters “gi”, which are presumed to be an abbreviation of “global institute”, followed by the generic top-level domain (“gTLD”) “.org”. “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Numerous UDRP panel decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. See also Hoffman-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923 (The addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America, Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434 (same); Weight Watchers International Inc. v. Kevin Anthony,WIPO Case No. D2011-2067 (same).
Finally, the addition of a gTLD such as “.org” after a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Respondent’s lack of reply notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant, that Respondent is now or was ever known by the Disputed Domain Name, or that Respondent had any authority, license or permission to use Complainant’s trademark. Moreover, Respondent’s use of the Disputed Domain Name could not be considered a bona fide offering of services under this element. Nor was Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather, the Panel concludes that Respondent was using the Disputed Domain Name for commercial gain.
Accordingly, the second element of paragraph 4(a) has been met by Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 its website or location.
This Panel finds that based on the record, Complainant has demonstrated the existence of Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, Respondent registered and used the Disputed Domain Names in bad faith because Respondent was attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s HARVARD Marks as to the source, sponsorship or affiliation or endorsement of Respondent’s website. Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use was done for the specific purpose of trading on the name and reputation of Complainant and its HARVARD Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”).
Second, Respondent’s action of registering the Disputed Domain Name and using it to direct Internet traffic to its website promoting competing services evidences a clear intent to disrupt Complainant’s business, deceive customers and trade off Complainant’s goodwill by creating an unauthorized association between Respondent and Complainant’s HARVARD Marks. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552.
Finally, Respondent knew or should have known of Complainant’s rights in its trademarks when registering the Disputed Domain Name and creating a website that appeared to be a legitimate website belonging to Complainant. Complainant’s HARVARD Marks are extremely well known and widely used. Most significantly, some of the HARVARD Marks have been in use by Complainant for over three centuries. Thus, it strains credulity to believe that Respondent had not known of Complainant or its HARVARD Marks when registering the Disputed Domain Name or creating its website. The Panel finds that, when a domain name contains a well-known trademark, no other action, aside from registering the domain name, is generally required for a finding of bad faith. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).
Therefore, the Panel concludes that Respondent registered and is using the Disputed Domain Name in bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by Complainant. 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 Complainant.
Lynda M. Braun
Sole Panelist
Date: January 2, 2014
1 The Panel finds that the registrant of the Disputed Domain Name is Ming Xu, World Capital Market, and therefore is the sole Respondent in this case.
2 The registrations are too numerous to mention here. Some of Complainant’s registrations of the HARVARD Marks include:
- HARVARD UNIVERSITY Registration Number: 1,578,190 Registration Date: January 16, 1990
- HARVARD Registration Number: 1,608,533 Registration Date: July 31, 1990
- HARVARD COLLEGE Registration Number: 2,498,203 Registration Date: October 16, 2001
Full & Egal Universal Law Academy