The Complainant is The Broad Institute, Inc. of Cambridge, Massachusetts, United States of America (“United States”), represented by Ruberto Israel & Weiner, PC, United States.
The Respondent is Ratnesh Singh of Ottawa, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2017. On July 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2017.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 31, 2017. 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 was founded in 2004 in the United States, and has been using the BROAD INSTITUTE trade mark since 2004. The Complainant is a partner of the Massachusetts Institute of Technology (“MIT”) and Harvard University. The Complainant is a non-profit, scientific research institute. The Complainant has filed applications for the registration of the BROAD INSTITUTE trade mark in the United States on May 16, 2017, which applications are still pending.
The Respondent is an individual based in Canada, and who registered the Disputed Domain Name on August 25, 2016. The Disputed Domain Name currently resolves to a parking page displaying pay-per-click links related to the Complainant and its competitors. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant is a world-renowned non-profit research institute that is known for innovative scientific research and development. It has been featured and recognized in numerous media outlets across the globe. The Complainant is a partner of MIT and Harvard University. It has been using the BROAD INSTITUTE trade mark since 2004, and claims unregistered rights in the mark based on its extensive use for many years. The BROAD INSTITUTE has acquired distinctiveness and is recognized as being associated with the Complainant and its world-renowned scientific research capabilities. The Complainant has also filed applications for registration of the BROAD INSTITUTE trade mark in the United States, but such applications are still pending.
(b) The Respondent registered the Disputed Domain Name in August 2016, many years after the Complainant began using its BROAD INSTITUTE trade mark. The Respondent is not associated with the Complainant or MIT, and has never been known by the Broad Institute name.
(c) The Disputed Domain Name contains the Complainant’s BROAD INSTITUTE trade mark in its entirety. It is therefore confusingly similar to the Complainant’s trade mark. Internet users will be misled into believing that the Disputed Domain Name is in some way associated with the Complainant, causing (at the very least) initial interest confusion.
(d) On July 6, 2016, the Respondent applied for a position with the Complainant through a recruitment agency. On July 28, 2016, the Respondent’s application was rejected by the recruitment agency. Thereafter, the Respondent registered the Disputed Domain Name. The Respondent must have had actual knowledge of the Complainant at the time he registered the Disputed Domain Name. The Respondent has made no efforts to make a legitimate use of the Disputed Domain Name. The Respondent must have registered the Disputed Domain Name in bad faith to retaliate against the Complainant for not hiring him and/or to confuse users into believing that the Disputed Domain Name is associated with the Complainant. On May 30, 2017, the Complainant issued a letter to the Respondent stating its rights in the Disputed Domain Name and requesting the transfer of the Disputed Domain Name. The Respondent never responded to this letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Complainant contends that it has unregistered rights in the BROAD INSTITUTE trade mark based on its extensive and continuous use of the trade mark since 2004 in relation to its scientific research and development initiatives.
It is well established that the Policy protects rights in unregistered marks (see SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs,WIPO Case No. D2000-0131; Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322). Having considered the evidence submitted by the Complainant, the Panel accepts that the Complainant can claim rights in BROAD INSTITUTE trade mark as an unregistered trade mark.
The Disputed Domain Name incorporates the Complainant’s unregistered trade mark in its entirety. The only difference between the Disputed Domain Name and the Complainant’s mark is the addition of “-mit”. The addition of “-mit” does nothing to distinguish the Disputed Domain Name from the Complainant’s BROAD INSTITUTE trade mark. It may in fact reinforce the confusing similarity, as the Complainant is a partner of MIT.
Further, it is a well-established principle that in making an enquiry as to whether or not a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.org”, may be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd.,WIPO Case No. D2006-0762).
The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s mark, and the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of coming forward with allegations or evidence demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the BROAD INSTITUTE trade mark before the Disputed Domain Name was registered and has never authorised the Respondent to use its BROAD INSTITUTE trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to come forward with evidence in support of its rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is 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 trade mark or service mark at issue.
The Panel accepts that the Respondent has not provided any evidence to demonstrate that he has become commonly known by the Disputed Domain Name, or a name corresponding to it.
Further, the Disputed Domain Name currently resolves to a parking page that contains sponsored links. In this case, the Panel finds that such use does not amount to any rights or legitimate interests, as the pay-per-click links that appear on the parking page refer to the Complainant and potential competitors, thereby capitalizing on the reputation and goodwill of the Complainant’s BROAD INSTITUTE trade mark. Such use by the Respondent cannot confer any rights or legitimate interests.
Accordingly, the Panel finds paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Complainant alleges that on July 6, 2016, the Respondent applied for a position with the Complainant through a recruitment agency, which was rejected, and that soon after the Respondent registered the Disputed Domain Name on August 25, 2016. The Complainant has failed to provide any evidence to support this allegation. However, in the absence of any evidence to the contrary and the Respondent’s failure to dispute the allegation, the Panel is willing to accept that the Complainant’s assertions are true. Therefore, the Panel finds that the Respondent was aware of the Complainant and its BROAD INSTITUTE trade mark at the time he registered the Disputed Domain Name, and did so with mala fide intent as a vengeful act against the Complainant for not hiring him. The Complainant has also been using the Disputed Domain Name for commercial gain (i.e., to earn pay-per-click revenue) by misleading users into believing that the Disputed Domain Name is connected with the Complainant.
The Panel therefore finds paragraph 4(a)(iii) of the Policy is satisfied. 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.
Gabriela Kennedy
Sole Panelist
Date: September 14, 2017
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