The Complainant is Institut Européen d’Administration des Affaires (INSEAD), France, represented by CABINET STRATO-IP, France.
The Respondent is Contact Privacy Inc. Customer 1241304273, Canada / Vivek Pundir, United Kingdom, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2019. On June 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 June 25, 2019, 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 the same day.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2019. The Response was filed with the Center on July 17, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 31, 2019. 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 very well-known graduate business school established in France in 1957. In addition to its French establishment, it also has campuses in Singapore and United Arab Emirates as well as college partnerships with colleges in other parts of the world. One of those partnerships is with Tsinghua University in China, through which they provide the Tsinghua-Insead Executive MBA.
To gain entry to the Complainant’s courses, one must complete an application process which is known as the “Insead Assessment”. The Complainant’s website includes numerous uses of the name “INSEAD Assessment” including a page describing the “INSEAD Assessment Day” which outlines a number of matters about the admissions process and test. It also includes the exhortation:
“Preparation is strongly encouraged. The best way to prepare is to practise actual GMAT questions (focus on areas listed below) and/or working with a 3rd party to prepare. It is wise to practise in a mock testing environment, inclusive of time constraints.”
The Complaint includes evidence of numerous trademarks registered in many different countries for, or including INSEAD. For present purposes, it is sufficient to note:
(a) French Registered Trademark No. 073517082, INSEAD, which was registered on July 30, 2007, in respect of a range of goods and services in International Classes 16, 35, and 41;
(b) European Union Trademark (“EUTM”) No. 000619262, INSEAD (between two parallel lines) and with a quadrant of a globe device, which was registered on November 18, 1998, in respect of a range of goods and services in International Classes 9, 16, 35, 41, and 42; and
(c) United States of America (“United States”) Registered Trademark No. 3784897, INSEAD, which was registered on May 4, 2010, in respect of goods and services in International Classes 16, 35, and 41.
In addition, the Complainant has provided evidence of the ownership of the trademark TIEMBA in connection with the Tsinghua-Insead Executive MBA.
The disputed domain name was first registered in the Respondent’s name on April 23, 2017.
When the Complainant became aware of the Respondent’s website, amongst other things, the Complainant succeeded in having the web host take down the website. After a period, the Respondent’s website, or a revised version of it, became accessible to browsers again.
The Respondent’s website resolves to a website which is headed “Boston Education Company’s INSEADAssessment Preparation Program” (the first three and final two words being in a much smaller font than the term “INSEAD Assessment” in the top left corner in that formulation – which together appear at the top left of the Respondent’s page as one would expect for a logo). The landing page features a large picture of people sitting around a table with a superimposed dialog box which states: “Thinking about an INSEAD EMBA? Contact Us First!”. Then, after provision for entry of contact details, the statement “Boston Education Company is an independent test preparation and application consulting company, and is not endorsed by or affiliated with INSEAD”.
There are links on the page to other pages with headings such as “The INSEAD EMBA”, “The Test”, “Dates and Deadlines”, “FAQ”, “Contact” and further text under headings “The INSEAD Assessment”, “For Busy Executives” and others.
In font and color, the above text and the Respondent’s website generally take on a similar look and feel to the Complainant’s page for the INSEAD Assessment.
At the foot of the page in smaller text than the rest of the page, as one might normally expect for a footer, there is a further notice:
“COPYRIGHT © 2019 — BOSTON EDUCATION COMPANY OÜ • ALL RIGHTS RESERVED. • PRIVACY POLICY • TERMS & CONDITIONS
ALL TRADEMARKS ARE PROPERTIES OF RESPECTIVE OWNERS. BOSTON EDUCATION COMPANY OÜ IS NOT ENDORSED BY OR AFFILIATED WITH INSEAD.” 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to succeed in its case, the Complainant must demonstrate each of the following:
(i) the disputed domain name is 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of numerous registered trademarks for INSEAD alone. The Complainant has also proven ownership of numerous registered trademarks for INSEAD between two parallel lines and with a graphic element of a quadrant of the globe.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
In addition, the word INSEAD is the dominant element in the trademarks like EUTM No. 000619262. So, consistently with usual practice based on the inability to represent graphic elements in the domain naming system, the graphic elements may be disregarded for the purposes of this proceeding: e.g., WIPO Overview 3.0, section 1.10.
Disregarding the “.com” gTLD, therefore, the only difference between the Complainant’s trademarks and the disputed domain name is the addition of the word “assessment”. The addition of a descriptive word of this kind does not avoid a finding of confusing similarity as the trademark is plainly recognisable within the disputed domain name. See e.g., WIPO Overview 3.0, section 1.8.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests / Registered and Used in Bad Faith
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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 in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with the Complainant. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
These matters taken together are sufficient here to raise a prima facie case.
It is not disputed that the Respondent offers coaching for candidates that wish to take the admission test for the Complainant’s courses. The Respondent says he could have used names such as “Insead Admission Test” or “Insead Executive MBA Admission Test” or “some such [variation], however, no plausible options would address the core issue of having to use the Complainant’s name in order to refer to the Complainant”. While neither party appears to be a United States resident, the Respondent also refers in this respect to the United States Lanham Act provision dealing with fair/descriptive uses of a third-party mark. According to the Respondent, in conjunction with its coaching services the Respondent offers for sale a book, “The INSEAD Assessment – The Unofficial Guide to INSEAD’s Executive MBA Admission Test”.
The Complainant contends that the disputed domain name and the way in which it is used give the (false) impression that the educational services offered by the Respondent are in some way associated with the Complainant – which constitutes bad faith under the Policy. The Complainant does not appear to contend that the Complainant itself provides coaching services for those wishing to take its admissions test. Rather, the Complainant cites in support of this position President and Fellows of Harvard College v. Yousuf Shakeel and Shakeel Ahmad,WIPO Case No. D2013-1816 (“Shakeel / Ahmad case”) and Educational Testing Service v. Domains by Proxy Inc. / Zhao Zhihui / Chen keqing,WIPO Case No. D2008-0993 (“Zhihui / keqing case”).
In the Shakeel / Ahmad case, the respondents claimed entitlement to the name “Harvard Case Studies” through a business name. The only evidence of the adoption or use of the domain name, however, was a reference on one of the respondents’ websites that the respondents had a business or branch by that name. There was no evidence of when that name was adopted or even if it was actually in use. The respondents also claimed to have a registered trademark for the name, but provided no evidence to support that claim. In those circumstances, the UDRP panel rejected the claim to rights or legitimate interests.
In the Zhihui / keqing case, the respondents claimed to be providing a coaching service for people wishing to take the TOEFL or GRE tests offered by the complainant. Both TOEFL and GRE were trademarks registered by the complainant. The UDRP panel took the view that there must be a multitude of names by which the respondents could identify their services without using the complainant’s trademark.
On the other hand, the Respondent relies on cases such as Educational Testing Service (ETS) v. Morrison Media LLC,WIPO Case No. D2006-1010 and Educational Testing Service v. Hackers Language Institute / David Cho, Ph.D.,WIPO Case No. D2006-1089 (“Hackers Language Institute case”). In those cases, the complaints were denied. Both offered books or guides to passing the tests run by the complainant. In the Hackers Language Institute case, there was also evidence that the respondent had been operating the business for some seven years.
The Panel considers it appropriate to approach the Respondent’s case as effectively a claim along the lines of nominative fair use. The Complainant apparently does not provide training or coaching services for its admissions test, but instead it encourages potential candidates to seek coaching from third parties.
Contrary to the Complainant’s submission, the fact that the Respondent charges for the services offered does not per se preclude a finding of rights or legitimate interests under the Policy.
So far as can be ascertained from the materials before the Panel, it appears that the Respondent offers only coaching services related to the Complainant’s courses from this particular website. The Panel notes however that several of the links on the Respondent’s webpage at the disputed domain name – including one using the Complainant’s other “TIEMBA” mark – lead to various pages under the domain name which according to the Panel’s search of the applicable WHOIS register appears to be registered by the Respondent; on the site at that separate domain name, there are numerous links to what appear to be third-party MBA courses, inter alia those of Cambridge, Duke, HEC, and Oxford.
While the Respondent relies on the disclaimer mentioned above,1 the Respondent’s website in its totality creates a strong potential for a visitor to mistakenly think they were dealing with the Complainant. For one thing, this is because of the heavy use of INSEAD on the site and the extensive and prominent use of bands or headings in a green colour and font which appears to be the same or very close to the green colour and font used in a similar way throughout the Complainant’s website – thus pointing to a deliberate effort to associate with the Complainant. For another thing, links from the homepage redirect the user to separate “external” pages, as mentioned above such as those titled “INSEAD Global Executive MBA”, which are written in a form that suggests the website is in fact the Complainant’s. For example, the box “A Unique Focus on Leadership” states “Our Leadership Development Programme is one-of-a-kind. ….” (emphasis supplied) The box “Learning Through Diversity” states “…. This has enabled us to turn diversity … into a powerful learning tool”. (emphasis supplied) These statements, and others, refer to the programs offered by the Complainant, not the services offered by the Respondent. Contrary to what the Respondent contends is the fact, therefore, that these statements convey the impression that the operator of the website is the same person providing the Complainant’s programs. That is not the case. That impression is reinforced by the colour, font and style used on the website which, as mentioned above, appears closely similar to the Complainant’s own online presence.
The disputed domain name consists of the Complainant’s trademark plus a descriptive term. The Panel considers, however, that use of the term “INSEAD Assessment” in the disputed domain name is different in nature to a directly descriptive expression. Unlike expressions such as “INSEAD Admission Coaching” or “INSEAD Admission Training” or “Boston Education Company’s INSEADAssessment Preparation Programme”, however, the expression “INSEAD Assessment” is the name of the Complainant’s admissions process.
The Panel finds that Respondent’s selection of the disputed domain name and the clearly associative way in which the Respondent provides information at his website travels too far beyond what is a permissible descriptive use under the Policy to establish the Respondent’s claim to rights or legitimate interests under the Policy. As noted above, the disputed domain name conveys a misleading impression of association with the Complainant which is reinforced by the use the Respondent has made of it.
In these circumstances, therefore, the Panel finds that the Complainant has established the Respondent does not have rights or legitimate interests in the disputed domain name.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take impermissible advantage of its significance as a trademark owned by (usually) the complainant.
It is clear that the Respondent registered the disputed domain name to focus on the Complainant and its trademark. The above-noted disclaimer notwithstanding, the use of the Complainant’s name and the totality of the associated website is, for the reasons outlined above, likely to misrepresent an (untrue) association with the Complainant. That is an impermissible attempt to take advantage of the Complainant’s trademark. Accordingly, it does not qualify as use in good faith under the Policy.
Based on all of its above considerations, the Panel finds that the registration and use of the disputed domain name involve unfairly taking advantage of the Complainant’s rights in the name of its admissions test.
Accordingly, the Complainant has established all three requirements under 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 disputed domain name be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: August 14, 2019
1 The Complainant contends that annex 6 to the Complaint contains print outs of the Respondent’s website before it was taken down. Those print outs do not appear to include the disclaimers mentioned above, apart from the copyright notice at the foot of the homepage. The Respondent contends that these print outs are some form of compressed version resulting from scrolling down the page. The Panel is not sure how this could happen. However, the Panel notes that the print out of what appears to be the homepage consists of nine pages, all of which appear to be blank apart from a header (“INSEAD Executive MBA Admission Test – INSEAD Assessment”), a title “INSEAD Assessment”, and on page 1 “Thinking about an executive MBA? Contact Us” – the Panel notes there is a small arrow on the print out indicating a drop-down or something similar, and that on the Respondent’s actual webpage which the Panel visited, the word “First!” appears after the “Contact Us” portion (therefore comprising: “Contact Us First!”), and the copyright notice on page 9. The nine essentially blank pages do not have any counterpart to the landing page as seen in a browser. The other pages in the annex appear to be screenshots taken from a computer screen and do not display the whole page. At least some of the partial screenshots appear to be consistent with the Respondent’s website as it appears in a browser.
Full & Egal Universal Law Academy