WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Imperial College of Science, Technology and Medicine v. Webweaver Media Construction and Zahid Khan (for Imperial College Management School Alumni Association - ICMSAA)

Case No. D2000-1146

 

1. The Parties

The Complainant is Imperial College of Science, Technology and Medicine, represented by Dechert of 2, Serjeantsí Inn, London EC4Y 1LT, United Kingdom.

The Respondent Registrant is Webweaver Media Construction of Suite 6, 91 St Martinís Lane, London WC2N 4AP, United Kingdom, which registered and held the domain name at issue for Zahid Khan on behalf of the Imperial College Management School Alumni Association (ICMSAA).

 

2. The Domain Name and Registrar

The domain name at issue is "imperialmba.com".

The Registrar is Network Solutions, Inc.

 

3. Procedural History

The Complaint was received by email on August 30, 2000 and in hard copy on September 4, 2000, by the WIPO Arbitration and Mediation Center [the Center]. In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules] as approved by ICANN on October 24, 1999, and the Centerís own Supplemental Rules in effect as of December 1, 1999 [the Supplemental Rules], the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by ICANN on October 24, 1999 [the Policy], the Rules and the Supplemental Rules. The Complaint was submitted in English and, both parties being located in England, the proceedings have been conducted in English. The Complainant has paid the specified fee to the Center.

The Center transmitted the requisite Registrar Verification request to Network Solutions, Inc. on September 4, 2000, and received a response on September 10, 2000, by email from Network Solutions, Inc., confirming that the Respondent Registrant, Webweaver Media Construction, is the current registrant of the domain name "imperialmba.com".

Proceedings in this case were formally commenced on September 11, 2000, when the Center sent a copy of the Complaint to the Respondent Registrant at the email address james@webweaver.uk.com recorded as the Respondent Registrantís email address in the Administrative Contact details for the domain name at issue. A hard copy of the Complaint was sent by courier to the Respondent Registrantís address on September 12, 2000.

The notification to the Respondent Registrant advised that a Response would need to be submitted to the Center no later than September 30, 2000, to be sure of being considered in these proceedings. No Response was received by the specified deadline. Consequently, on October 2, 2000, the Center issued a Notification of Respondent Default, which was duly transmitted to the Respondent Registrant by email and Courier and to the Complainantís representatives by email only.

On October 2, 2000, the Center invited Mr. Keith Gymer to serve as single Panelist in these proceedings and received his Statement of Acceptance and Declaration of Impartiality and Independence on the same day. The Center duly appointed Mr. Gymer as Panelist and notified the Respondent Registrant and the Complainantís representatives of this appointment by email also on the same day.

The Panelist subsequently received the hard copy of the Complaint, which included various supporting evidence not previously sent by email. From an initial consideration, the Panelist expressed concern that this evidence raised a number of issues and uncertainties, which the Complainant and the Respondent Registrant should have a further opportunity to address. On October 6, 2000 the Center therefore issued an Interim Order No.1 to the Parties by email, inviting them to respond to the issues raised by the Panelist and setting a deadline of October 19, 2000 for response.

The Complainantís representatives responded immediately and submitted further documentation sent by fax and post to the Center on October 6, 2000. This supporting documentation was sent by fax to the Panelist on October 17, 2000. No response was received from the Respondent Registrant by the October 19, 2000 deadline. The Panelist commenced assessing the case in the light of the submissions received.

On October 22, 2000 the Center received a fax from Mr. Zahid Khan stating that the ICMSAA was the owner of the domain name "imperialmba.com" and that notice of the Complaint had only just been received because the named Registrant, Webweaver Media Construction had ceased trading and the ICMSAAís ISP had shut down, such that email communications had not reached the ICMSAA.

After consultation with the Panelist, the Center gave Mr. Khan a period of 14 days to submit a Response to the Complaint and to the Interim Order No.1. An electronic Response was received by the Center on October 23, 2000 and a hard copy on October 25, 2000.

The Complainant has not raised any objection to the claimed interest of Mr. Khan and the ICMSAA as beneficial owner of the domain name at issue and to the submission of a Response to the Complaint on that basis.

 

4. Factual Background

The Complainant is Imperial College of Science, Technology and Medicine, an educational college, originally established by the merger of the former Royal College of Science, the Royal School of Mines and the City and Guilds College in 1907, it is presently part of the University of London. It runs a Management School which awards MBA degrees. The College operates a website at www.ic.ac.uk, and the Management School website is at www.ms.ic.ac.uk.

The Complainant claims to have a number of relevant trademark registrations and applications, including the words "IMPERIAL COLLEGE", in various jurisdictions and submitted a privately compiled schedule of such registrations and applications. For reasons explained below, for the purposes of these proceedings, the Panelist is only prepared to consider UK registrations 1572164 (Class 16), 1544894 (Class 36), 1544895 (Class 41) and 1544896 (Class 42) for IMPERIAL COLLEGE as a word mark.

The Respondent Registrant registered the domain name imperialmba.com on October 18, 1999, as shown in the Network Solutions WHOIS record for this domain name.

The Respondent ICMSAA was established (evidently as an unincorporated association) in 1990 as a volunteer body of graduates from the Imperial College Management School. Mr. Zahid Khan is acknowledged as the President of ICMSAA.

Otherwise, the Complainant has made a number of further contentions by way of a Statement of Case in the Complaint (originally directed at the Respondent Registrant) and the Respondent ICMSAA has submitted various answers to the points raised in the Complaint. These are summarized below.

 

5. Partiesí Contentions

A. Complainant

The Complainant claims that it is the owner of goodwill and reputation in the marks, IMPERIAL and IMPERIAL COLLEGE, and that the Complainant is commonly known as "the IMPERIAL" [sic].

The domain name "imperialmba.com" is alleged to be identical or confusingly similar to the name by which the Complainant is commonly known and the trademarks in which the Complainant has legitimate rights.

At the date of the Complaint, the domain name is stated as not actively being used by the Respondent (Registrant), but the Complainant submitted print-outs reportedly taken from www.imperialmba.com on 31 July 2000, which show that it was apparently being used in connection with an unofficial Imperial College Management School, Alumni Association [i.e. the Respondent ICMSAA].

The Complainant nonetheless goes on to assert that the Respondent "personally" did not appear to have any legitimate interest in the marks, IMPERIAL COLLEGE and/or IMPERIAL; that the Respondent did not appear to have previously conducted any commercial enterprise or non-commercial activity under the name, IMPERIAL COLLEGE and/or IMPERIAL; that the Respondent personally is not known by the name IMPERIAL COLLEGE; and, more pertinently, that the Complainant had not licensed or otherwise permitted or authorized the Respondent personally to use its trademark or to apply for any domain name incorporating any such mark.

Accordingly the Complainant submits that the registration of the domain name in the personal name of the Respondent (Registrant) was made in bad faith and that the previous use and the current non-use of the domain name amounts to and is indicative of bad faith use.

The Complainant further alleges that the Respondent (Registrant) appears to have some connection with an unauthorized association, Imperial College Management School Alumni Association ("ICMSAA"). The Complaint alleges that the Complainant had instructed Solicitors to write to the Respondent (Registrant) requiring the ICMSAA to cease using the names Imperial College Management School Alumni Association and Imperial MBA and any address, map, e-mail, logo, letter-head or any other representation which suggests expressly or impliedly any authorized connection with or approval by Imperial College. A copy of the letter was attached as Annex D to the complaint. [ The Panelist notes that this letter was not written to the Respondent Registrant (or to Mr. Bruce as administrative contact for the domain name in dispute), nor was it even copied to the Respondent Registrant. In fact it was written to Mr. Zahid Khan at a different address, and copied to "The Director, Imperial MBA Limited" at the Respondent Registrant's address. No evidence was produced to show that the Respondent Registrant (or Mr. Bruce) was "The Director" (indeed to the contrary, evidence subsequently provided showed this not to be the case), or that the Respondent Registrant had ever seen the letter before the present Complaint was sent.]

This letter is presented as evidence that the Complainant is in dispute with the ICMSAA (of which Mr. Khan is the President) concerning the use of the Complainantís trademarks. Consequently, it was inferred that the Respondent (Registrant) (either personally or through the ICMSAA) had acquired the domain name imperialmba.com primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant (including the unauthorized ICMSAA) for valuable consideration in excess of the Respondent (Registrant)ís out-of-pocket costs of registration. These acts are also alleged to be sufficient to constitute bad faith registration and bad faith use of the domain name.

By registering the domain name the Respondent (Registrant) was also alleged to be preventing the Complainant from reflecting is trade mark in all possible corresponding domain names and in particular the most popular top level generic domain.

It is claimed that consumers and Internet users who type "imperialmba.com" as an attempt to view the Complainantís web-site are likely to be confused by any web-site that appears at the domain name. By creating a likelihood of confusion between the domain name and the Complainantís trademarks, consumers and Internet users are likely to conclude that the web-site is in some way associated with the Complainant, contrary to the fact, particularly if the web-site purports to be for the confusingly similar but unauthorized ICMSAA.

The Complainant concludes that the Respondent (Registrant) had registered the domain name with a view to disrupting the Complainantís business and/or that any realistic use of the domain name to link to the web-site for ICMSAA would only be done intentionally to attempt to attract internet users for commercial gain. Again, this is asserted to be sufficient to constitute bad faith registration and bad faith use of the domain name.

Subsequently, in response to the request for supplementary submissions from the parties on certain specific issues identified by the Panelist in Interim Order No.1, the Complainant provided copies of further correspondence between Mr. Khan and the Complainantís solicitors regarding companies registered with the names "Imperial College Limited" and "Imperial MBA Limited" and use of the domain name imperialmba.com in relation to the activities of the ICMSAA.

On the basis of its evidence and assertions, and "[i]n accordance with Paragraph 4(b)(i) of the Policy" [sic] the Complainant requests that the domain name imperialmba.com should be transferred to the Complainant. [Note: Paragraph 4(b)(i) of the Policy refers to certain circumstances which are evidence of the registration and use of a domain name in bad faith - the Panelist assumes the Complainant actually meant to refer to Paragraph 3(b)(i) of the Rules which is relevant to submission for a decision.]

B. Respondent

No Responses to either the Complaint or to Interim Order No.1 were received from the Respondent Registrant. The Respondent ICMSAA submitted a number of specific answers to the claims made by the Complainant.

The Respondent ICMSAA asserts that the Complainant supported the ICMSAA and part funded it until January 2000 when ICMSAA officially launched its websites. During this time the Complainantís marks and insignia endorsed publications of the ICMSAA as Ďofficialí.

The ICMSAA was established to provide a forum for networking for graduates of the Complainant's Management School and associated services. Implicit in this was that the good name of the Complainant was imperative to maintain, as it was a reflection on ICMSAA membersí good name and vice-versa.

Lack of sufficient support (by way of facilities and services) accorded to foreign alumni prompted the ICMSAA strategy of ĎGlobal Reachí with the intention of breaking down cultural and ethnic barriers and bringing MS Alumni closer together for the purposes of networking and career progression.

Global Reach did this by hosting its first event (Global Reach phase 1 Asia) on January 25th 2000. This was also the date on which the websites "imperialcollege.com" and "imperialmba.com" were officially launched. The two websites always pointed to the same web address and have therefore always displayed identical content. The aim was to establish "imperialmba.com" as sub-site that catered to the distinct cohort within ICMSAA for MBA graduates from imperial. At the time the Complainant did not provide on-line services to MBA graduates from their Management School.

The domain name "imperialmba.com" was chosen for a number of reasons:

The MBA is a common business qualification and it was the aim of the ICMSAA to appeal to these kinds of alumni to promote the strategy of Global Reach.

Imperial MBAís were distinct cohorts of the ICMSAA which ICMSAA felt needed their own sub-identity within ICMSAA Alumni. They needed separate services from the rest of the Alumni.

If ICMSAA need to enlist the help of Imperial MBA graduates, a site at "imperialmba.com" was seen as the easiest way of interacting with them.

The website at "imperialmba.com" was on-line for several months before and after the January 25th 2000 event publicizing the first Global Reach event.

At all times the Respondent intended to launch the websites "imperialcollege.com" and "imperialmba.com" and to offer services to ICMSAA members. (Respondent's emphasis).

The domain name was purchased for use and on behalf of the Imperial College Management School Alumni Association.

The Respondent Zahid Khan is an alumnus of the Complainant, having graduated from the Management School with a Masters Degree in Management. The ICMSAA was set up with the full backing and knowledge of the Complainant and the Complainant supported the activities of the ICMSAA. ICMSAA (Zahid Khan) had several meetings with the Director of the Imperial College Management School, Professor David Norburn, articulating the Global Reach Strategy and the launch of the websites "imperialcollege.com" and "imperialmba.com". At a meeting held on January 17th 2000 at the Management School Boardroom in South Kensington, UK. Professor David Norburn indicated that he wished to buy the domain name "imperialcollege.com" and later also "imperialmba.com" from the ICMSAA and asked that the domain names should be transferred to the Complainant. The ICMSAA (Zahid Khan) notified him that neither was up for sale.

The ICMSAA asserts that as official academic websites are hosted with the suffix ".ac", there can be no real confusion with a ".com" website. The domain name "imperialmba.com" is not confusingly similar to the name by which the Complainant is known. There are many ĎImperial Collegesí throughout the world and there are many domain names associated with these colleges bearing the words ĎImperialí. (The Respondent attached a list of domain names apparently including the words "imperial college"). There has been an active website at the address "imperialmba.com" and it has been used to advertise official events of the ICMSAA including the Global Reach event. The site was taken down by the Respondentís service provider because of the stance that the Complainant was taking and their hostility towards the ICMSAA. The Respondent Registrant acquired the domain name on behalf of the ICMSAA for the legitimate purposes of promoting the interests of the ICMSAA. It was active in promoting the legitimate interests of the ICMSAA. Moreover it clearly differentiated itself as belonging to the ICMSAA and even gave a link to the Complainants main site at "ic.ac.uk".

The ICMSAA has conducted non-commercial activity under the name Imperial College (Management School Alumni Association). The ICMSAA has used trademarks by consent of the Complainant. Copy for publications was passed through the Complainantís Management School Administrator, but now that the ICMSAA is Ďunauthorisedí ICMSAA has pledged that it will not use such trademarks in future. The ICMSAA notes however that no valid reason has been given by the Complainant as to how and why the ICMSAA became Ďunauthorisedí.

The ICMSAA alleges that the reason why the ICMSAA became Ďunauthorizedí was that the ICMSAA REFUSED to sell back the domain names "imperialcollege.com" and "imperialmba.com". The ICMSAA claims that the Complainant is using ĎReverse Domain Name Hijackingí, as the Complainant knows that the ICMSAA launched their websites with official services offered by the ICMSAA.

The Respondent has received notification that the ICMSAA should not use trademarks of the Complainant. The ICMSAA acknowledges this fact and will not use the trademarks of the Complainant. There is no dispute as to trademarks as far as ICMSAA is concerned. It is true that the ICMSAA did use trademarks under consent of the Complainant in the past. ICMSAA however is keen to now develop its own identity and has no wish to use the Complainantís trademarks whatsoever. ICMSAA hereby undertakes not to use any trademarks of the Complainant unless by specific written prior consent.

Neither the Respondent nor any of the other officers of the ICMSAA have purchased domain names for the purposes of Ďcybersquattingí i.e. purchasing domain names for financial gain by selling back to those that have a legitimate interest in them. Such a practice would be extremely foolish bearing in mind the Respondent's [Mr. Khan's] (and other officers of ICMSAAís) line of work. Moreover neither the Respondent nor any other officers of the ICMSAA has ever approached the Complainant for the purpose of selling back the domain name. In-fact the ICMSAA have refused to enter into any negotiation regarding the sale of the domain name. It was purchased to promote the legitimate interests of the ICMSAA.

The domain name was not used and will not be used in any way that can possibly show bad faith. The aims of the ICMSAA are to promote the good name (albeit indirectly) of the Complainant by emphasizing the good standing of the Complainantís Graduates in the business community.

The domain name by which the Complainant is commonly known and which all common Internet search engines will report is the Complainantís main site at "ic.ac.uk". The Complainant cannot have a monopoly on all names that bear the words Imperial and College; the words are just far too generic.

The ICMSAA is at pains to differentiate itself from the Complainant as much as the Complainant is intent on differentiating itself from the ICMSAA. The Respondent attests that if anything, the ICMSAA site would properly serve to identify and route intended visitors to the Complainantís site rather than mislead them. ICMSAA is after all an organization of professionals who exist to serve their own interests and beliefs and not those of the Complainant.

ICMSAA executive members who are responsible for the domain name "imperialcolmba.com" will do everything reasonable in their power to ensure that the good name of the Complainant is not tarnished. Furthermore the executive members of ICMSAA have still not decided if the organization will be commercial entity or a charity. Commercial gain was not even considered when ICMSAA were registering their domain name "imperialmba.com".

The ICMSAA has stated that it wishes to work with the Complainant to provide services for its members. It has no wish to infringe any trademarks of the Complainant and has no desire to indulge in any kind of activity that would harm the Complainant. The Complainant has chosen however not to indulge in any kind of meaningful dialogue with the ICMSAA and has decided to threaten actions through their solicitors. To this date the Complainant has not even requested a meeting with the ICMSAA to talk. The ICMSAA is willing to talk with the Complainant if the Complainant indicates its willingness to do so.

The Respondent accordingly requests that the domain name "imperialmba.com" remain with the Respondent.

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that

(i) the contested 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

In this case, the Panelist considers that the submissions initially made on behalf of the Complainant, their accuracy and evidential inadequacies (see below), and the Complainantís omission in making no attempt to conduct the Respondent Registrant before filing the Complaint leave much to be desired. In particular, it seems eminently possible in this case that had the Complainantís representatives contacted the Respondent Registrant directly (in the person of Mr. Bruce) they might well have been able to confirm the ICMSAAís direct interest earlier and avoided the extended delays in the present proceedings.

As it is, the Complainantís failure to contact the Respondent Registrant before filing the Complaint was a deciding factor in the Panelistís initial decision to provide the Parties a further opportunity to make representations in response to Interim Order No.1. This, of course, had the consequence of delaying a decision and involving additional work for all concerned, which might have been avoided had the Complainant contacted the Respondent directly before filing the Complaint. As it is, the delay did have the advantage of giving time for the Respondent ICMSAA to become properly aware of the filing of the Complaint and to be able to submit a Response.

The Complainantís representative has noted that the UDRP does not require a prospective Complainant to contact a prospective Respondent (Registrant) prior to initiating a Complaint. This may be strictly true (and in the Panelistís view is an omission which ought to be corrected if Complaints are regularly being filed without the Respondent Registrant having any chance to clarify circumstances or to attempt to resolve a dispute beforehand) but, as any adverse decision in these proceedings would require a Court action in the UK to reverse, it would seem reasonable to expect a Complainant in the UK to comply with the relevant Civil Procedure Rules (CPR) before committing the Respondent to a procedure from which it can only escape by Court action. In particular, in a case like this which is not covered by a formal pre-action protocol, the relevant CPR Practice Direction states: "Öthe court will expect the parties [Ö] to act reasonably in exchanging information and documents relevant to the claim and generally in trying to avoid the necessity for the start of proceedings." (emphasis added). Consequently, if the Respondent were now obliged to have recourse to Court action, the Complainantís omission surely incurs a significant risk of a Court imposing a costs penalty on the Complainant.

The Panelist would therefore suggest that in the absence of clear evidence that a Respondent would actively seek to avoid application of the Policy (e.g. by attempting to transfer a domain name registration between nominees before a Complaint can be filed), then a Complainant should be expected to contact the Respondent directly and to afford a reasonable opportunity for circumstances to be clarified and/or for a dispute to be resolved prior to filing a formal Complaint.

In the present case, the Panelist must nevertheless address the issues raised in the Complaint.

6.1 Is the domain name identical or confusingly similar to a trademark or service mark in which the Complainant has rights?

In the Panelistís opinion, this requires the Complainant to satisfy the Panel on two points. Firstly that the domain name is identical or confusingly similar to a trademark or service mark claimed by the Complainant and, secondly, that the Complainant does indeed have rights in a relevant mark.

The first point may be established by comparison of the domain name at issue and the claimed mark(s).

Where the relevant mark is a registered trademark, the second point may readily be established and independently verified by reference to the applicable official TradeMarks Register. In such a case, presentation of an appropriately certified true copy of the registration details would plainly provide sufficient evidence of the existence of applicable rights. For example, under the UK TradeMarks Act 1994, (the TMA1994) Section 72, registration provides prima facie evidence of validity and hence of the registered proprietorís entitlement to the rights conferred under Section 9 of the TMA1994.

The Complainant has asserted that it has trade mark registrations and/or applications pending for the mark, IMPERIAL COLLEGE in the following countries:

Australia

European Community

Hong Kong

Japan

Singapore

Thailand

United Kingdom

United States

A Schedule listing details of these alleged trademark rights was included in the Complaint.

However, the Schedule did not comprise up-to-date information from official Registry records and was clearly insufficient in all cases to confirm ownership and subsistence of those rights to the Panelistís satisfaction. As on previous occasions, rather than dismiss the inadequately evidenced claims peremptorily, the Panelist sought to independently verify the Complainantís claims, where possible, by reference to those relevant Trade Marks Registry details which are conveniently accessible online.

In the Panelistís view, it is reasonable to expect that the standards to be applied to supporting evidence in cases brought under the Policy should be equivalent in form and extent to that which would be required in an opponentís evidence-in-chief in a trademark opposition brought on corresponding grounds. The Community Trade Marks Office has issued helpful guidelines entitled "INFORMATION ABOUT EVIDENCE" as an Annex to a notice on "Substantiation of Earlier Rights in Opposition Proceedings" (available as a .pdf file at http://oami.eu.int/pdf/marque/oppo3.pdf). These guidelines specify how to prove particulars required in an opposition case. In relation to prior registrations, the requirements include proof of ownership and validity and state expressly that "extracts from private records or databases are not acceptable". Acceptable proof may take the form "of extracts of records or official databases Öeither in paper or electronic form, provided they contain all the particulars of the registration."

In the present case, the Panelist has been able to consult on-line official databases for marks in the UK, Australia, the US and the Community. For the purposes of these proceedings, therefore, the Panelist has not considered any alleged rights in other jurisdictions. The Complainantís rights in the US and Australia are for marks including the College crest in which the device element is so dominant that the domain name could not reasonably be said to be confusingly similar. The Community application for IMPERIAL COLLEGE is shown as still subject to opposition (which suggests that the Complainantís claim to exclusive rights may not perhaps be as extensive as it would like). This leaves four potentially relevant UK registrations 1572164 (Class 16), 1544894 (Class 36), 1544895 (Class 41) and 1544896 (Class 42) for IMPERIAL COLLEGE as a word mark, which the Panelist has been able to verify are officially recorded as in force and registered in the Complainantís name.

For the purposes of the Policy, therefore, the question boils down to whether imperialmba.com is identical or confusingly similar to IMPERIAL COLLEGE (as registered) or to IMPERIAL (as the Complainant alleges it is commonly known).

On initial consideration, one problem for the Complainant is that it has provided no evidence to support the contention that it has unregistered rights in IMPERIAL alone. Where a mark is unregistered, there can normally be no automatic presumption of entitlement to rights under English law. A party claiming unregistered rights in the UK would need to support such a claim with appropriate evidence to satisfy the relevant Tribunal that it was entitled to the protection claimed for any such unregistered right. (Such evidence would normally be presented in the form of a Witness Statement, Affidavit or Statutory Declaration. The UK TradeMarks Registry has useful notes on "How to provide evidence of use of a trademark", which are available at http://www.patent.gov.uk/dtrademk/evidence.html)

However, as the European Court of Justice stated in Sabel B.V. v. Puma A.G. (Case C-251/95):

".... the appreciation of the likelihood of confusion 'depends on numerous elements and, in particular, on the recognition of the trade mark on the market, of the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods or services identified'. The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case."

In the present case, the Complainant has registered rights in the mark IMPERIAL COLLEGE, in particular in Class 41 in respect of "University educational services". In the Panelistís experience, it is almost invariably the case that when referring to colleges in a collegiate university people will abbreviate the name and drop the descriptive reference to "college". Similarly, when considering likelihood of confusion, therefore, it is reasonable to expect that much greater weight will be given to the distinctive element - in this case "IMPERIAL".

It is also important to consider the domain name in context. The name "imperialmba" will undoubtedly be seen and read as "Imperial MBA". There is no other logical division of the name for English eyes. The acronym "MBA" also has no other familiar meaning except for "Master of Business Administration". Thus, inevitably, the domain name will be seen as having an educational connection, and most likely with Imperial College, the Complainant in this case. This view is reinforced by the fact that the Complainant itself does refer to "The Imperial MBA" (see for example http://www.ms.ic.ac.uk/programmes/fulmba/overview/index.html). Consequently, and interestingly, in the Panelistís opinion, the fact that the domain name is "imperialmba.com" actually makes it more likely that confusion will arise than had the domain name merely been, say, "imperial.com", when other possible connotations and connections might have additionally sprung to mind (such as Imperial weights and measures, Imperial Chemical Industries, etc.).

The Respondent ICMSAA has alleged that no confusion would arise; that there are other users of the name "Imperial College" and that the Complainant cannot have applicable rights to "Imperial". These assertions are of no assistance to the Respondent. The Respondent ICMSAA has adopted a domain name which plainly does not serve to differentiate the Complainant, Imperial College, from the Alumni Association. (It appears to the Panelist that there may be other reasons for this, which are considered further at 6.3 below, but these do not justify the Respondentís assertions.) That there may be other domain names including the words "imperial college" is irrelevant. There is nothing to show that these names have been registered with the approval of the Complainant and they may well also be in dispute. Of the results in a general internet search carried out by the Panelist for "Imperial College" all the principal links and references were to the Complainant except for one to an Imperial College in Toronto. In any event, by the Respondentís own admission, the "Imperial" in "ImperialMBA" is intended to refer to the Complainant.

Accordingly, having regard to all the circumstances, the Panelist considers that the domain name at issue is indeed confusingly similar to a service mark in which the Complainant has rights and that the first requirement of Paragraph 4(a)(i) of the Policy is met.

6.2 Does the Respondent have no rights or legitimate interests in respect of the domain name?

On this issue, the Complainantís case relies principally on the claim that the Complainant has "not licensed or otherwise permitted or authorized the Respondent personally to use its trademark or to apply for any domain name incorporating any such mark".

The relevance of this factor is clearly dependent on whether or not a legitimate use might reasonably be expected to require such a license.

Paragraph 4(c) of the Policy also helpfully provides some guidance as to some factors, which, if present, may serve to demonstrate a legitimate interest in a domain name. Conversely, the absence of such factors may therefore be indicative of a lack of such an interest. The relevant indications are:

(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the Panelistís view, the evidence in this case does not support the Respondentís claims in relation to any of these factors.

The evidence shows that there have been demonstrable prior preparations for operating a website using the domain name and referring to "Imperial College Management School" and "The Management School Alumni Association" in a manner which would manifestly cause confusion and potentially misrepresent the nature of the Respondentís connection with the Complainant. Indeed, the Respondent itself admits that the website has been in operation and was always intended to be used for offering ICMSAA services (i.e. not services necessarily authorized by the Complainant). The Panelist does not believe that such use can be considered as being for a "bona-fide" purpose in relation to the particular domain name at issue. Had the domain name referred directly to "alumni" (e.g. as say "imperialmsalumni.com"), the case for legitimacy might have been defensible, since a visitor might not necessarily expect an alumni association to be officially connected with a college in the same way they would surely expect the "imperialmba" to be so connected.

The Respondent has plainly not been commonly known by the domain name; and the Respondent is not making any evident fair use (for the reason that the expressed intention is for a site for "alumni" and not for the "ImperialMBA" itself).

In the Panelistís opinion, any active use of the domain name in the UK would almost inevitably lead to confusion with the Complainantís registered name, and the Panelist therefore also concludes that the Respondent can have no rights or legitimate interests in the domain name without the Complainantís authorization, which it does not have. The requirements of Paragraph 4(a)(ii) of the Policy are therefore met.

6.3 Has the domain name been registered and is it being used in bad faith?

This is the question which has given the Panelist the greatest cause for concern and for extended consideration and deliberation, notably because, in this case in particular, there would appear to be a great deal more behind this dispute which has not been revealed by either side, and the real explanation for the partiesí actions may well lie in what has been left unsaid.

It is important for the Parties to be aware that the various circumstances cited in Paragraph 4(b) of the Policy as evidence of registration and use in bad faith, which the Complainant has essentially reproduced regardless of their realistic relevance to the case at hand, are merely exemplary. A finding of registration and use in bad faith for the purposes of the Policy may be based on other circumstances, the actual facts and the applicable law in each particular case. Consequently, the Panelist does not propose to comment on all the various allegations and counter-assertions made by each side in these proceedings where these are not realistically supported by any of the evidence.

The evidence suggests that disputes over domain names are just one manifestation of a general falling-out between what was undeniably a legitimate Alumni Association and the College whose alumni comprise the Association. It does seem to the Panelist that, as such, it would surely have been preferable for the parties in this case to have sought to resolve all the issues in the overall dispute through some form of private mediation or arbitration rather than through selective public proceedings such as under the Policy. The Panelist nevertheless recognizes it is not for him to mandate mediation, but to decide this Complaint on its merits regardless of how it reflects on the parties.

In this case, a number of the demands and assertions made on behalf of the Complainant go somewhat beyond what the Panelist would have expected to see in the circumstances, leading the Panelist to further concerns over the respective merits of each Partyís position in these proceedings.

The Complainant, in Solicitorís correspondence, has effectively demanded that the ICMSAA should cease to refer to itself as such (either as Imperial College Management School Alumni Association or by its initials). The Association has apparently been known and referred to in those terms for 10 years and has been acknowledged by the Complainant as being independent of the Complainant. The term "Imperial College Management School Alumni" is clearly directly and legitimately descriptive of such Alumni. It is perhaps reasonable to expect that an Association of Alumni which is no longer formally recognized by the College should clearly identify itself as "unofficial" or as "independent" of the College (to the extent that this may not be well known to the relevant audience). However, it seems to the Panelist that any Association of such Alumni has no meaningful alternative but to use the words "Imperial College Management Association" as part of its name in some way, provided always that it does so "in accordance with honest practices in industrial or commercial matters" to meet the requirements of Section 11(2) of The TradeMarks Act 1994. (The interpretation of this proviso has been the subject of judgements in the UK (AB Volvo v. Heritage(Leicester) Ltd., [2000] FSR 227) and in the European Court of Justice (BMW v. Deenik, C-63/97)).

Why, the Panelist is led to consider, did the Respondent not choose to register and use a domain name which sensibly reflected its established name? Since December, 1999 it has been possible to register a domain name of up to 67 characters in length, so the likes of:

"imperialcollegemanagementschoolalumniassociation.com"

"imperialcollege-ms-alumni-association.com"

"icms-independent-alumni-association" and even

"imperial-college-management-school-independent-alumni-association.com"

were all potentially registrable as valid domain names before the ICMSAA launch of its Global Reach event in January 2000. Even before then, names with up to 26 characters were registrable, which would have allowed:

"imperialms-alumni- assoc.com"

"icms-indep-alumni-assoc.com" etc.

Of course, logically, if the Association had been seeking a convenient domain name to reflect its recognized identity, one might have thought "icmsaa.com" would have been the obvious candidate. Curiously, neither the Complainant nor the Respondent made any reference to this most likely option. A simple inspection reveals, however, that the Respondent could not have adopted this domain name when the evidence suggests it was looking to register a domain name in October 1999, because that domain name, together with "icmsaa.net" and "icmsaa.org" had already been registered on September 29, 1999 by the Complainant.

Given the Complainantís own admission that the ICMSAA is independent of the Complainant, it seems to the Panelist that, had the Respondent ICMSAA chosen to do so, it would have had very reasonable grounds to question the Complainantís basis for appropriating these domain names to itself, particularly as the Complainant itself is not known by the name ICMSAA and evidently does not use the names in any website offering goods and services. Indeed, the Respondent ICMSAA might well have been able to make a case for bringing proceedings against the College under the Policy to have those names transferred to it.

What the Respondent ICMSAA does not have, however, in the Panelistís view, is any right to go about appropriating other domain names (whether in reaction to the Complainantís own apparently preemptive action or not), to which the Complainant does plainly have a strong legitimate claim.

The Policy provides a potential remedy for a Complainant which is based in contract not equity - the fact that there may be evidence of some unexplained, even possibly provocative, conduct by the Complainant, does not disentitle it to relief if the Respondent is found to have breached the applicable rules.

The evidence is that the domain name in dispute has clearly been in use. It was also used for commercial purposes such as promoting the sale of tickets for the ICMSAA Global Reach event. It may not have been actively directed at interfering with the Complainantís business, but it was clearly a potentially misleading use and the Complainant was within its rights to object to its use in such circumstances.

The Respondent, Mr. Khan, has asserted that the Complainant "is using ĎReverse Domain Name Hijacking" by pursuing these proceedings. This contention is clearly unsupportable and the Panelist rejects it absolutely.

As Aldous L.J stated in the One in a Million case (British Telecommunications & Ors. v. One in a Million Ltd. & Ors. Court of Appeal full judgement available at http://www.nic.uk/news/legal/oiam-appeal-judgement.html), first in relation to Marks & Spencer in that case:

"The placing on a register of a distinctive name [Ö] makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of [the registrant] and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered."

Further, in this Panelistís opinion, and consistent with the views expressed in the High Court and Court of Appeal, which considered the issue of whether an inactive domain name could be considered as "used" for the purposes of trademark infringement, the fact that a domain name may only be passively "in use" insofar as it is on the register in an unauthorized Registrantís name, may still be sufficient to cause confusion and effect a misrepresentation regarding the status of the connection of the Registrant with the legitimate owner of rights in the relevant name.

Mr. Khan has made the argument that as "ICMSAA members have been educated in good faith and business ethics and good management by the Complainant. If the Complainant doubts the ability of their own graduates to exercise good management and business practice in the market place they must surely look at themselves and their teachings." This argument is apparently intended to suggest that it is therefore inconceivable that the Respondent(s) could be considered to have acted in bad faith.

Unfortunately, however, sometimes even the best may overstep the mark and it is the Panelistís view that the Respondent(s) did so in this instance. For the narrow purposes relevant to the Policy, the Panelist is satisfied that the Respondent ICMSAA and/or the Respondent Registrant (in view of the evidence of its previous close connections with the Respondent ICMSAA) did act unjustifiably in registering and using the domain name at issue.

The Panelist accordingly concludes that in the context of the Policy the domain name has been registered and is being used in bad faith and the requirements of Paragraph 4(a)(iii) of the Policy are met.

 

7. Decision

For the reasons explained in Section 6 above, the Panelist concludes that each of the requirements of Paragraph 4(a) have been met. Accordingly, the Panelist requires that the domain name "imperialmba.com" be transferred to the Complainant.

 

 


 

 

Keith F.Gymer
Presiding Panelist

Dated: November 13, 2000