The Complainant is uni-assist e.V. (Arbeits- und Servicestelle für internationale Studienbewerbungen) of Berlin, Germany, represented by Chadha & Chadha, India.
The Respondent is WhoIsGuard, Inc. of Panama City, Panama / Uni Assist of Würzburg, Germany, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2018. On October 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2018, 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. The Center sent an email communication to the Complainant on October 26, 2018 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 October 31, 2018.
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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 1, 2018. In accordance with paragraph 5 of the Rules, the due date for Response was November 21, 2018. The Center received informal email communications from the Respondent and a third party. However, the Respondent did not submit any formal response. Accordingly, the Center notified the Parties on November 22, 2018 that it would proceed to the Panel appointment.
The Center appointed Brigitte Joppich as the sole panelist in this matter on December 5, 2018. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is a non-profit private organization founded in 2003 and registered under the laws of Germany as an association of 41 German universities, evaluating international university applications for 180 German universities.
The Complainant is the owner of the German device mark registration number 302016224204
(the “UNI ASSIST Mark”) in classes 35, 41, and 42, registered on October 19, 2016 and with a priority of August 25, 2016. The Complainant also owns the domain name , first registered on December 6, 2003.
The disputed domain name was first registered on December 4, 2013. The website at the disputed domain name reveals pictures and text identified as a “place holder” or “dummy copy”. 5. Parties’ Contentions A. Complainant
With regard to the three elements specified in paragraph 4(a) of the Policy, the Complainant contends that each of the three conditions is given in the present case.
(i) The Complainant alleges that it enjoys exclusive rights in the name and mark UNI ASSIST and that the disputed domain name is not only identical with or confusingly similar to its previously used name and the Uni Assist Mark but also a blatant imitation thereof.
(ii) The Respondent allegedly has no rights or legitimate interests in respect of the disputed domain name since the Complainant has not licensed or otherwise authorized the Respondent to use or commercially exploit the UNI ASSIST Mark in any manner, since the disputed domain name has clearly been adopted in bad faith to mislead the public, since there is only the dummy website and no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services, since the Respondent is not commonly known by the name “uni-assist”, and since the Respondent, by creating a dummy website under the disputed domain name in respect of university education, is only trying to divert Internet traffic and has no legitimate interest in the disputed domain name but rather registered the disputed domain name for cybersquatting and earning illegal profits.
(iii) The Complainant alleges that the disputed domain name was registered and is being used in bad faith. As to bad faith registration, it is upheld that the Respondent was fully aware of the Complainant’s existence while registering the disputed domain name as there is no plausible explanation for the adoption of a domain name comprising the Complainant’s highly distinctive mark. The Complainant further claims that the website at its domain name , prominently displaying its UNI ASSIST Mark, has gained immense popularity since its launch in 2005, that the Complainant was the first to conceive, adopt, use and promote the name and mark UNI ASSIST, which, due to its long and extensive usage by the Complainant, identifies only the Complainant, that the UNI ASSIST Mark was widely known long before the registration of the disputed domain name, that the Complainant has invested substantial time, money and effort to promote the name “uni-assist”, that the reputation and goodwill of such name is associated exclusively with the Complainant, and that the use of the word “uni-assist” on any leading search engine automatically reflects the webpage of the Complainant among the leading hits. As to bad faith use, the Complainant claims that the Respondent prevents the Complainant from registering its UNI ASSIST Mark in a domain name with the extension .org (and intends to sell the disputed domain name to the Complainant later on at an unreasonable price), takes advantage of the Complainant’s substantial reputation and its prominent presence on the Internet, confuses the public by creating an impression of association with the Complainant, and tarnishes the reputation and goodwill of the Complainant. The Respondent supposedly aims at making illegal profits by giving an indication of being an educational organization or an organization associated with the Complainant. The Complainant submits that it will suffer incalculable harm and injury to its goodwill, reputation and business in general if the Respondent is allowed to maintain its website at the disputed domain and that innocent students who shall have no reason to believe that a nearly identical domain name with the extension “.org” does not belong to the Complainant may also come to harm. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. In an email addressed to the Center dated November 5, 2018, the Respondent asked to resolve the issue about the disputed domain name as soon as possible. It went on that, allegedly, such domain name was unique and all claims by the complainant were baseless. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; 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 in bad faith. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the UNI ASSIST Mark as it consists of the two most prominent word elements of such word and device mark (“uni” and “assist”), merely adding a dash between the two words. It is the consensus view that trademark registrations with design elements prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity (cf. section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Complainant satisfied the requirements of paragraph 4(a)(i) of the Policy with regard to the UNI ASSIST Mark.
The Complainant also claims to enjoy rights in a highly distinctive (word) mark UNI ASSIST that has allegedly gained immense popularity since its first use in 2005. If such rights existed, the disputed domain name would also be confusingly similar to such mark.
To establish unregistered or common law trademark rights for purposes of the UDRP, the Complainant must show that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning (cf. section 1.3 of the WIPO Overview 3.0).
The Complainant provided printouts of the Complainant’s own and third-party websites, promotional material and search engine results (Annexes E, F, and G), all however dating only from 2018. On the record of the case file, there is no further evidence pertaining to a secondary meaning of the mark UNI ASSIST prior to 2018. In the view of the Panel, rights of the Complainant in such common law trademark can probably not be assumed on the basis of the evidence provided, especially since the term “uni-assist” consists only of the two English dictionary words “uni” (colloquial abbreviation for “university”) and “assist” and is therefore not inherently distinctive at least not on the evidence put to the Panel.
However, with a view to the findings at C. below, the Panel does not need to come to a decision on whether the Complainant enjoys unregistered trademark rights for purposes of the UDRP in the mark “uni-assist”. B. Rights or Legitimate Interests
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panels that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, once a prima facie case is made, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the burden of production has been shifted to the Respondent.
The Respondent did not deny these assertions in any way and therefore failed to come forward with any allegations or evidence demonstrating any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. The Respondent is using the disputed domain name for a dummy website, which, as such, does not convey any rights to the Respondent.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
The UNI ASSIST Mark was first registered in 2016, while the disputed domain name was registered in 2013. Given this timeline, and in the absence of further relevant evidence in the case file as to the Complainant’s reputation before 2013, it is in the view of the Panel, not possible to determine that the disputed domain name was registered with knowledge of the Complainant’s rights in the UNI ASSIST Mark.
Regarding the alleged rights of the Complainant in a (word) mark UNI ASSIST first used in 2005, the Complainant provided evidence dating only from 2018 and thus not supporting any secondary meaning acquired prior to the registration of the disputed domain name in 2013. Again, given the timeline, it is not possible to determine that the disputed domain name was registered with knowledge of rights in a common law (word) mark UNI ASSIST (to the extent such rights exist prior to 2013).
However, paragraph 4(b)(iv) of the Policy can provide an evidentiary presumption of bad faith registration where there is evidence of a certain kind of bad faith use (Pixers Ltd. v. Whois Privacy Corp.,WIPO Case No. D2015-1171): circumstances where a respondent’s behavior reflects an intentional attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website, are considered evidence of registration and use in bad faith.
Bad faith registration stems from the motivation of the respondent and might, as a subjective element, in cases of paragraph 4(b)(iv) of the Policy be indicated by the respondent’s later behavior (bad faith use). In other words, as with the second element of the Policy, it seems conceivable under certain circumstances also with regard to bad faith registration as part of the third element to require the complainant to establish a prima facie case. As a result, once a prima facie case would have been established, the burden of coming forward with evidence against bad faith registration would then shift to the respondent.
The disputed domain name is used in relation to educational services, i.e., in the Complainant’s field of business, which might be considered as bad faith use under paragraph 4(b)(iv) of the Policy.
The Complainant has actively used its domain name since 2005, which means for almost a decade before the disputed domain name was registered. The clear absence of rights or legitimate interests of the Respondent, the apparently fraudulent contact details for the Respondent (the written notification of the Complaint could not be delivered to the address supplied for the Respondent), and the failure to submit a formal response cast doubts on the Respondent’s good faith.
On the other hand, the Panel notes that it took the Respondent more than four years to use the disputed domain name, which weakens the argument that the Respondent deliberately registered the disputed domain name in bad faith to target the Complainant as set out in Paragraph 4(b)(iv) of the Policy. Moreover, the current use of the disputed domain name might just as well stem from its descriptive nature. It is in all events for the Complainant to prove its case here.
On the balance of probabilities, the Panel comes to the conclusion that bad faith registration and use under paragraph 4(b)(iv) of the Policy have not been established in the present case, the Complainant did not make out a prima facie case of bad faith registration. In particular, the lack of distinctiveness of the two word elements of the disputed domain name (i.e., “uni” and “assist”) tip the scales in favor of the Respondent.
Accordingly, the Panel finds that the Complainant could not establish that the disputed domain name was registered and used in bad faith.
This finding is without prejudice to the Complainant’s rights to seek relief elsewhere, e.g., in a national court or through the registrar. 7. Decision
For the foregoing reasons, the Complaint is denied.
Brigitte Joppich
Sole Panelist
Date: January 9, 2019
Full & Egal Universal Law Academy