The Complainant is The University Court of the University of Abertay Dundee of Dundee, Scotland, United Kingdom of Great Britain and Northern Ireland, represented by Thorntons Law LLP, United Kingdom.
The Respondents are Domains by Proxy Inc. of Scottsdale, Arizona, United States of America, and Ali Kosari of Hove, East Sussex, United Kingdom (the “Respondent”).
The disputed domain name <universityofabertaydundee.info> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2010. On May 7, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 8, 2010, GoDaddy.com, Inc. 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 Complainant sent an email communication to the Center on May 10, 2010 disclosing the identity of the underlying registrant of the disputed domain name. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 9, 2010.
The Center appointed Jon Lang as the sole panelist in this matter on June 15, 2010. 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.
The Complainant is a university based in the United Kingdom and is the proprietor of United Kingdom trade mark 2,451,351 UNIVERSITY OF ABERTAY DUNDEE (word-only), registered under Use Classes 16, 18, 21, 25, 26, 28, 35, 41, 42, and United Kingdom trade mark 2,451,348 UNIVERSITY OF ABERTAY DUNDEE (logo), registered under Use Classes 16, 18, 21, 25, 26, 28, 35, 41, 42.
The Complainant has been operating under “University of Abertay Dundee” from 1994, since gaining statutory approval by virtue of the University of Abertay Dundee (Scotland) Order of Council 1994/1980, and has built up considerable goodwill under this trading name. The Complainant has approximately 5000 students, with 74% of these students coming from the United Kingdom and the remaining 26% originating from outside the United Kingdom. The Complainant is regarded as one of the most prominent Universities in Scotland and a Google search of “University of Abertay Dundee” returns 134,000 results.
The Domain Name was registered by the Respondent on September 18, 2009.
The Domain Name redirects users to “www.abbeycollege.info”. Abbey College is another United Kingdom educational establishment.
- The Domain Name is identical to the Complainant's word only mark 2,451,351 and trading name, and confusingly similar to the Complainant's logo mark 2,451,348;
- The Respondent has no rights or legitimate interests in respect of the Domain Name. So far as the Complainant is aware, the Respondent has not used the Domain Name prior to its registration in September 2009 and has not built up goodwill in the Domain Name or the mark UNIVERSITY OF ABERTAY DUNDEE in its own right;
- The Complainant does not believe that the Respondent has registered UNIVERSITY OF ABERTAY DUNDEE as a trade mark in the United Kingdom or in any other jurisdiction and the Respondent has no title to use the mark in relation to educational goods and services in the United Kingdom;
- The Respondent has no title or license from the Complainant to use its trade marks for the purpose of promoting another educational establishment and indeed, there is no relationship at all between the Complainant and the Respondent;
- The Domain Name is used to re-direct traffic to “www.abbeycollege.info”
- The website at “www.abbeycollege.info” contains the words “The Website is not available, please try later,” indicating no legitimate interest or use in the Domain Name by the Respondent;
- The Domain Name was registered and is being used in bad faith;
- It is submitted that the Respondent was aware, or ought to have been aware of the Complainant, its trade marks and website prior to registering the Domain Name, yet deliberately registered the Domain Name regardless;
- It is suggested that the Respondent registered the Domain Name in bad faith by taking unfair advantage of the goodwill associated with the Complainant's trade marks and trading name by creating a likelihood of confusion with the Complainant's trade marks and trade name as to the source, sponsorship, affiliation, or endorsement of Abbey College1.
- Use of the Complainant's trade marks and trading name in this manner could, by re-directing individuals seeking the Complainant's legitimate web site, result in potential loss to the Complainant in terms of recruitment of students, staff and/or cause reputational damage. The Respondent's actions in this regard would warrant a claim of Passing-off.
- Although the website at “www.abbeycollege.info” is not “complete”, the use of the term “Abbey College” could constitute use of the Complainant's trade marks in relation to educational services in the United Kingdom and consequently, could amount to trade mark infringement under section 10(1) and 10 (2) of the Trade Marks Act 1994.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires a complainant to prove that the respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that he has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
The Domain Name incorporates the Complainant's trade mark in its entirety. The suffix “info” is to be disregarded for comparison purposes. The Domain Name and trade marks are identical.
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of that domain name. There must be something more. The Respondent is not licensed by or affiliated with the Complainant. A respondent can show it has rights to or legitimate interests in a domain name in other ways however. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert Internet users. However, it seems extremely unlikely that the Respondent is known by the Domain Name and, given the website to which the Domain Name resolves i.e. a site which refers to another educational establishment unrelated to the Complainant, it cannot be said that there is legitimate noncommercial or fair use. A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services, but there is no evidence of this in the present case.
In Drexel University v. David Brouda, WIPO Case No. D2001-0067 the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.” This appears to be the case here.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. Indeed, there is no evidence before this Panel to contradict or challenge any of the contentions of the Complainant. This Panel finds therefore that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name. The burden to demonstrate such rights or legitimate interests therefore falls on the Respondent. As the Respondent has not come forward with a Response or taken any other action to address the Complaint, this Panel finds that the Complainant has also fulfilled the requirements of this element of the Policy.
It seems likely that the Respondent was aware of the Complainant and its marks when the Domain Name was registered. There seems to be no other obvious explanation for the Respondent to choose this particular Domain Name to register. It would be a remarkable coincidence if the Respondent, by chance, chose the name of the Complainant without prior knowledge of the Complainant. As described in the Policy, one way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Whilst only the Respondent will know the true intention behind registration, it certainly appears that there has been an intention to attract Internet users to a site that has nothing at all to do with the Complainant using a domain name that would suggest that it has everything to do with the Complainant.
The relationship between the Respondent and Abbey College is not known and it might be that the precise circumstances surrounding the Respondent's registration and use of the Domain Name are not identical to the circumstances described in the Policy (as being indicative of bad faith registration and use) as outlined above. However, the circumstances referred to in the Policy are not exhaustive. Each case must be examined on its own facts. In this case, the Panel can see no legitimate reason for registration of the Domain Name, which is very likely to confuse Internet users into believing that it is related in some way to the Complainant. Internet users may well become annoyed and frustrated at being led down an alley that has no relevance to their search. This may reflect badly on the Complainant. It may also cause it harm as has been suggested.
In all the circumstances, the Panel finds that the Complainant has satisfied the burden of demonstrating, for the purposes of the Policy, that the Domain Name has been registered and used in Bad Faith.
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 <universityofabertaydundee.info> be transferred to the Complainant.
Dated: June 29, 2010
1 It is not known whether the true Abbey College is aware of the Domain Name