WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pardes Institute of Jewish Studies v. Hans Schultz LLC
Case No. D2008-0648
1. The Parties
The Complainant is Pardes Institute of Jewish Studies, Jerusalem, Israel (whose American affiliate is American Pardes Foundation, New York, New York, United States of America), represented by Wolf Greenfield, United States of America.
The Respondent is Hans Schultz LLC, Newark, Delaware, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pardes.org> is registered with Webagentur.at Internet Services GmbH d/b/a domainname.at.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2008. On April 29, 2008, the Center transmitted by email to Webagentur.at Internet Services GmbH d/b/a domainname.at a request for registrar verification in connection with the domain name at issue. On May 5, 2008, Webagentur.at Internet Services GmbH d/b/a domainname.at transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 8, 2008 the Center issued a notification that the language of the proceeding was German, the language of the Respondent’s registration agreement. On May 8, 2008 the Complainant filed a written request that the proceedings be conducted in English, and on May 15, 2008, the Respondent (or presumably an individual acting on the Respondent’s behalf, as the e-mail was received from the e-mail address provided in the Registrar’s verification response as belonging to the Registrant of the disputed Domain Name) replied to the Center by email, consenting to English as the language of the proceedings. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint on May 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2008. The Respondent did not submit any response to the Complaint. Accordingly, the Center notified the Respondent’s default on June 5, 2008.
The Center appointed Angela Fox as the sole panelist in this matter on June 19, 2008. 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 a religious seminary in Jerusalem with an American affiliate, The American Pardes Foundation, in New York City. The Complainant provides English-language religious instruction in the Jewish faith at its school in Jerusalem. Approximately 75% of its students are from the United States of America.
The Complainant has used the name “PARDES” in respect of its educational services continuously since 1972. It owns United States federal trademark registration nos. 2,223,885 and 2,225,355 for PARDES dating from February 16, 1999 and February 23, 1999, respectively. Details of these registrations were attached to the Complaint.
Although the Whois details appended to the Complaint give a registration date of December 2, 2007, the disputed domain name appears to have been in the ownership of an entity called Belize Domain WHOIS Service prior to this date. On November 5, 2007 the Complainant’s attorneys emailed that entity seeking transfer of the disputed domain name in return for reimbursement of registration costs. The contact information provided was apparently inaccurate and the email was returned as undeliverable. On December 2, 2007, the disputed domain name was transferred to a new registrant, Qin Shu Tong, located in China.
The Complainant’s attorneys attempted to contact Qin Shu Tong by email on December 18, 2007. No response was received, but on March 12, 2008, the domain name was again transferred, this time to the Respondent. The disputed domain name is now in use for a web page hosting a generic search engine and a number of sponsored links, including to the Complainant and competitor providers of Jewish religious educational services. One section of the linked page invites visitors to “Enquire about this domain,” whereupon they are taken to a page asking them to submit their details if they are interested in purchasing the domain name.
5. Preliminary Issue
Paragraph 11(a) of the Rules provides that unless otherwise agreed by the parties or specified in the registration agreement, the language of an administrative proceeding shall be the language of the registration agreement, subject to the Panel’s authority to determine otherwise having regard to the circumstances of the proceeding.
In this case, the language of the registration agreement is German, but the Complaint was filed in English. In its email to the Center dated May 15, 2008, the Respondent (or an individual acting on its behalf) consented to the use of English in the proceedings. The Complainant indicated in its email of May 8, 2008 to the Center that it also prefers to continue in English. Therefore, under paragraph 11(a) of the Rules, the Panel determines that the language of the proceedings shall be English
6. Parties’ Contentions
The Complainant submits that the disputed domain name is identical to its registered trademark PARDES, and that the Respondent has no rights or legitimate interests in it. In particular, the Complainant has not licensed the Respondent to use its registered PARDES trademark, the Respondent has not been commonly known by a name corresponding to it, and the Respondent has not used, nor made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of any goods or services, nor has it made any legitimate non-commercial or fair use of the disputed domain name.
The Complainant further contends that the Respondent acquired and has used the disputed domain name in bad faith by creating a likelihood of confusion with the Complainant’s PARDES trademark, and that the Respondent profits from this confusion whenever visitors to its website click through its sponsored links to entities including competitors of the Complainant. The Complainant further submits that the Respondent submitted false Whois contact details and registered the disputed domain name with the intention of selling it to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
Apart from consenting to the use of English in the proceedings and contesting, in the same email of May 15, 2008, the Complainant’s allegation as to the provision of false contact details, the Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the 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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it owns United States federal trademark registrations for the mark PARDES.
The disputed domain name consists of the word “pardes” and the non-distinctive domain name suffix, “.org”. It is well-established that suffixes such as “.org” and “.com” may be disregarded when comparing domain names and trademarks.
The Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
The Complainant has not authorized the Respondent to use the disputed domain name and has made out a prima facie case that the Respondent has no rights or legitimate interests in it. The Respondent has done nothing to rebut this case or to advance an alternative one.
Although the Respondent has been using the disputed domain name to offer sponsored links to third parties, including to competitors of the Complainant, such use does not constitute a bona fide offering of goods or services that would confer a right or legitimate interest under paragraph 4(c) (1) of the Policy. The mere provision of click-through Internet advertisements of the type offered by the Respondent is not, on its own, an offering of goods or services (see, inter alia, Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690). Even if it were, though, using the Complainant’s trademark to entice Internet users to a website promoting the Complainant’s competitors would not constitute a bona fide offering in any event since it is inherently misleading (see e.g., F. Hoffmann-La Roche AG v. Web Marketing Limited., WIPO Case No. D2006-0005; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946, and F. Hoffmann-La Roche AG v. Andrey Radashkevich /Domain Admin, PrivacyProtect.org, WIPO Case No. D2008-0149).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Under paragraph 4(b) (iv) of the Policy, the Panel may find that a domain name was registered and used in bad faith where the Respondent has used it in an intentional attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on it.
In this case, the Panel finds that the disputed domain name has been so used. It is identical to the Complainant’s registered trademark, and is inherently likely to attract Internet users seeking the Complainant. Once at the Respondent’s website, visitors are confronted with links to competitors of the Complainant as well as with a link to the Complainant itself. The provision of such links is misleading since it reinforces the impression that the disputed domain name is that of, or is in some way, related to the Complainant’s business in the provision of Jewish religious educational services.
By using the disputed domain name in an apparent attempt to profit from visitors clicking through to other commercial websites, the Respondent has clearly used the disputed domain name intentionally to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s PARDES trademark. Use of a domain name that is identical to a complainant’s trademark to offer sponsored links to third parties has been regarded by other panelists as registration and use in bad faith under paragraph 4 (b) (iv) of the Policy (see, inter alia, McDonalds Corp. v. ZusCom, WIPO Case No. D2007-1353). The fact that some of the commercial websites linked to the Respondent’s website were those of the Complainant’s competitors is a further indication of bad faith on the Respondent’s part (see DORMEUIL FRERES and DORMEUIL UK v. Keyword Marketing, Inc., WIPO Case No. D2007-1424).
The evidence is not conclusive that the Respondent provided false contact details or acquired the disputed domain name primarily with the intention of selling it to the Complainant for a consideration in excess of the Respondent’s documented out-of-pocket expenses relating to the domain name under paragraph 4(b) (1) of the Policy. However, the links on the Respondent’s website to competitors of the Complainant and to the Complainant itself, together with the enquiry page inviting visitors to submit their details if interested in purchasing the domain name, strongly suggest that the Respondent may have acquired it with a sale to the Complainant or to a competitor of the Complainant in mind. There is no need to determine these points in light of the Panel’s finding under paragraph 4(b) (iv) of the Policy, but the Respondent’s failure to deny the allegation of acquisition for the purpose of a profitable sale to the Complainant is, in the Panel’s view, telling.
The Panel finds that the disputed domain name was registered and is being used in bad faith under paragraph 4(b) (iv) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pardes.org> be transferred to the Complainant.
Dated: July 3, 2008