The Complainant is Chalmers Tekniska Högskola AB / Chalmers University of Technology, Sweden, represented by AWA Sweden AB, Sweden.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Daniel Kingswell, Malta.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 25, 2021, 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, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on October 28, 2021. On November 2, 2021, the Center sent a request for clarification to the Complainant regarding the registrar section of the Complaint. The Complainant filed a second amended Complaint on November 2, 2021.
The Center verified that the Complaint together with the amended Complaints 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 November 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2021.
On November 4, 2021, the Respondent sent an informal communication. On November 5, 2021, the Center informed the Parties of the possibility to suspend the proceedings. On November 9, 2021, the Respondent sent another informal communication. The Complainant did not request a suspension of the proceedings.
The Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed to Panel Appointment on November 24, 2021.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 10, 2021. 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 BackgroundThe Complainant is a Swedish University named after its major benefactor, William Chalmers. It focuses on education and research in the fields of technology, architecture, natural sciences, maritime, and mathematics. Within the same company group operates Stiftelsen Chalmers Innovation (“the Foundation Chalmers Innovation”), and the University also runs the “Chalmers Innovation Office”, “Management and economics of innovation, MSc”, and “Chalmers Initiative for Innovation and Sustainability Transitions”. The Complainant has its roots from an industry school for poor children who learned to read and write, known as “Chalmersska Slöjdeskolan”, which opened in 1829.
The Complainant is the owner of the CHALMERS trade mark in the European Union (“EU”) (Reg No. 003486974), Sweden (Reg No. 358861), Norway (Reg No. 298512), and the United Kingdom (Reg No. UK00903486974). The European Union, Sweden, Norway and the United Kingdom marks were registered on April 20, 2005, December 6, 2002, May 28, 2018, and April 20, 2005 respectively. The EU trade mark was registered for goods and services spanning across “computer programs”, “business organization consultancy”, “education”, “providing of training”, “scientific and industrial research”, and “conducting of conferences and seminars”, amongst others. The Complainant also owns and operates the website “www.chalmers.se”.
The Disputed Domain Name was registered by the Complainant on September 9, 1998. According to the Complainant, as shown in Annex 4, the Disputed Domain Name displayed “CHALMERS INNOVATION” logo, and resolved to a page purporting to support online casino startups.
5. Parties’ Contentions A. ComplainantThe Complainant’s primary contentions can be summarised as follows:
(a) The Disputed Domain Name is identical to the Complainant’s CHALMERS trade mark as it reproduces the Complainant’s CHALMERS mark.
(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its CHALMERS trade mark or register the Disputed Domain Name. There is also no evidence of 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. The website to which the Disputed Domain Name resolves appears to impersonate their association with the Complainant through their “University Associated Business Incubator of 2014” award, uses the Chalmers Innovation logo as used by the Complainant from 2013 and onwards (Annex 3), and offers online casino startup services, and such use of the Disputed Domain Name cannot be considered as a bona fide offering of goods or services. The Respondent was also not commonly known by the Disputed Domain Name. Therefore, the Respondent has no rights or legitimate interest in the Disputed Domain Name; and
(c) The Disputed Domain Name fully incorporates the Complainant’s CHALMERS mark even though the Respondent must have been aware of the Complainant and its CHALMERS trade mark at the time of registering the Disputed Domain Name. The Respondent’s website alludes to its purported association with the University itself, suggesting opportunistic bad faith. The Respondent’s promotion materials on online casino startups tarnishes the Complainant’s CHALMERS trade mark and damages the Complainant’s good will in this mark. As such, the Respondent has registered and is using the Disputed Domain Name in bad faith.
B. RespondentThe Respondent did not reply formally to the Complainant’s contentions.
However, on November 4, 2021, the Respondent sent the following communication:
“Hi,
How can we transfer the domain to the original owner? We are kindly looking forward to help us
with the process.
Regards,
Gianluca”.
The following day, the Respondent sent another communication:
“Hi there,
Would you have any updates on this? We are unable to create a transfer code on our own.
Regards,
Gianluca”
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure 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 Complainant 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 FindingsUnder 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;
(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 SimilarThe Panel accepts that the Complainant has rights in the CHALMERS trade mark, based on its various trade mark registrations.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In this case, the Disputed Domain Name incorporates the Complainant’s CHALMERS trade mark in its entirety with the addition of the descriptive term “innovation”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.
The mere addition of the suffix “innovation” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s CHALMERS trade mark.
As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s CHALMERS trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsOnce a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of 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. See section 2.1 of the WIPO Overview 3.0
The Panel finds that the Complainant has not authorised the Respondent to use the CHALMERS trade mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the CHALMERS trade mark. The Respondent refers to the same contact information as the Complainant used, as seen in Annexes 3 and 4, proving that the Respondent has no legitimate interests or commercial gain in regards to the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, 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 him 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;
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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.
There is no evidence to suggest that 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. The Panel agrees with the Complainant that the Respondent’s use of the Disputed Domain Name cannot be regarded as legitimate non-commercial or fair use as the Disputed Domain Name was used to impersonate an entity associated with the Complainant, and also to support online gambling start-ups. Such use of the Disputed Domain Name would very likely give a false impression that the Disputed Domain Name is related to the Complainant and is thus capable of misleading third parties and tarnishing the Complainant’s CHALMERS trade mark.
In addition, no evidence has been provided to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0.
After reviewing the supporting evidence submitted by the Complainant, the Panel agrees with the Complainant that its CHALMERS trade mark appears to be fairly established in the fields of research and education. Therefore, taking this into consideration together with the fact that the Disputed Domain Name incorporates the Complainant’s CHALMERS trade mark in its entirety with the addition of a descriptive term “innovation” and that the website to which the Disputed Domain Name resolves contains content that falsely alludes to its association with the Complainant, the Respondent must have been aware of the Complainant and its rights in the CHALMERS trade mark when registering the Disputed Domain Name.
The Respondent also incorporates the Chalmers innovation logo as used by the Complainant from 2013 and onwards. The Panel also agrees with the Complainant that, given the nature of the Complainant’s educational initiatives, the addition of the term “innovation” may even increase the possibility of Internet users being led to believe that the Disputed Domain Name is owned by or associated with the Complainant.
In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:
(i) The Respondent failed to formally respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;
(ii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name contains the Complainant’s CHALMERS mark in its entirety (with the addition of a descriptive term “innovation”) and is being used by the Respondent for supporting online gambling. Any use of the Disputed Domain Name would likely mislead third parties into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s legitimate rights; and
(iii) The Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu,WIPO Case No. D2019-0193).
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
7. DecisionFor 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
Gabriela Kennedy
Sole Panelist
Date: December 24, 2021