WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Imperial College of Science, Technology and Medicine v. THEIMPERIAL COLLEGE, Imran
Case No. D2010-1026
1. The Parties
Complainant is Imperial College of Science, Technology and Medicine of London, United Kingdom of Great Britain and Northern Ireland, represented by Dechert, LLP of the United Kingdom of Great Britain and Northern Ireland.
Respondent is THEIMPERIALCOLLEGE, Imran of New Delhi, India.
2. The Domain Names and Registrar
The disputed domain names, <theimperialcollege.com> and <theimperialcollege.org>, are registered with Web Werks India Pvt. Ltd. (“Web Werks”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on June 22, 2010. On June 22, 2010, the Center transmitted by email to Web Werks a request for registrar verification in connection with the disputed domain names. By June 30, 2010, Web Werks had transmitted by email to the Center its verification responses confirming that the Respondent1 is listed as the registrant and providing contact details and other information pertaining to each of the registrations. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 23, 2010.
The Center appointed Debra J. Stanek as the sole panelist in this matter on July 30, 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.
Subsequently, the Panel issued an Order inviting statements from Complainant and Respondent. Complainant was invited to provide a statement clarifying whether it was relying on any of the trademark registrations referenced in the Complaint and to provide copies of any such registrations, citing paragraph 3(b)(xv) of the Rules, which provides that the complaint “shall” include “documentary or other evidence, including a copy of . . . any trademark or service mark registration upon which the complaint relies . . . .” Respondent was given an opportunity to any documentary evidence, limited to a rebuttal or response to the new facts raised in Complainant’s statement.
In response, Complainant stated that it was relying on its trademark registrations and provided copies of the registrations.
4. Factual Background
Complainant is an educational and research institution founded in 1907 as the Imperial College of Science, Technology and Medicine. It owns, among others, United Kingdom. and European Community trademark registrations for the mark IMPERIAL COLLEGE, the earliest of which, United Kingdom. registrations for a variety of goods and services, including university educational services, published materials, credit card services, and research and testing services, were registered in 1995.
Respondent registered the disputed domain names in February 2010. The disputed domain names do not resolve to active web sites.
5. Parties’ Contentions
(1) The domain name is identical or confusingly similar to Complainant’s marks
Since it was established in 1907, Complainant has built considerable good will in its name and marks, which include IMPERIAL, IMPERIAL COLLGE, IMPERIAL COLLGE LONDON, and others.
Complainant owns numerous trademark registrations in multiple jurisdictions for its IMPERIAL marks, including United Kingdom. and European Community trademark registrations for the mark IMPERIAL COLLEGE. In the world of higher education, the names “Imperial”, “Imperial College,” and “Imperial College London” would refer only to Complainant and not to any other institution.
The only difference between Complainant’s IMPERIAL COLLEGE marks and the disputed domain names is the addition of the non-distinctive prefix “the”, which is of no trademark significance.
(2) Respondent has no rights to or legitimate interests in respect of the domain name
The disputed domain names were registered in February 2010, over 100 years after Complainant was formed. Given the global reputation of Complainant, it is reasonable to assume that Respondent actually knew of Complainant at the time the names were registered.
Prior to filing this Complaint, Complainant’s counsel contacted Respondent. In a March 2010 response, Respondent stated that he heard the name “Imperial College” in a film. Therefore, Respondent must have been aware of Complainant after seeing the movie and chose the domain names because of their association with Complainant and to draw traffic to his websites.
Complainant has not authorized Respondent to use its marks. Despite the fact that the “.com” domain name was registered in the name of “THEIMPERIALCOLLEGE,” there is no evidence that that is Respondent’s name or that he commonly known by that name.
There is no evidence of use or preparations to use either of the domain names in connection with a bona fide offering. In response to Complainant’s letter, Respondent stated that he has not used and did not plan to use the domain names.
(3) Respondent has registered and is using the domain name in bad faith
Several facts support a finding of registration and use in bad faith:
Complainant was formed and began building good will in its marks over 100 years before the registration of the domain names.
The only feasible possibility is that Respondent registered the domain names to take advantage of Complainant’s mark.
Respondent is passively holding the domain names, which constitutes bad faith. Complainant has a worldwide reputation and Respondent has provided no evidence of any actual or good faith use of the domain names since registering them in February 2010. Further, since his March 2010 response to Complainant, Respondent has not replied to Complainant’s communications.
Complainant’s mark is registered in India, where Respondent is based.
Respondent is diluting Complainant’s rights.
Respondent stated, in his March 2010 communication, that he would transfer the domain names to Complainant, but he has not done so.
There are no conceivable circumstances under which Respondent could be making a good faith use of the domain names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to prevail, Complainant must prove, as to each domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
The primary consequence of Respondent’s failure to respond is that it has not made any argument or offered any evidence described in paragraph 4(c) of the Policy, such as using (or preparing to use) a domain name before the dispute, being known by a domain name, or making legitimate noncommercial or fair use of a domain name, that might support a finding that Respondent has rights or legitimate interests in the domain names. Nor has Respondent provided any evidence on the issue of bad faith.
A. Identical or Confusingly Similar
Complainant has established its rights in the mark IMPERIAL COLLEGE by virtue of the evidence of its United Kingdom and European Community trademark registrations.
The domain names are not identical to Complainant’s mark. However, each includes Complainant’s IMPERIAL COLLEGE mark in its entirety, preceded by the article “the.” The Panel agrees that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark, although such a finding is not automatic.
Here, the addition of the term “the” (ignoring the lack of spaces between the terms and the addition of the generic top-level domains “.com” and “.org”, which are not relevant for these purposes), does nothing to effectively differentiate or distinguish either of the domain names from that mark.
Accordingly, the Panel finds that Respondent’s disputed domain names are confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you 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.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy.
There is no evidence that Complainant has used or made any preparations to use either of the domain names in connection with a bona fide offering. Indeed, the correspondence from Respondent provides some confirmation that Respondent has not done so. Further, in light of Complainant’s long-time and extensive use of the IMPERIAL COLLEGE mark, it is difficult to conceive of circumstances in which Respondent might make a bona fide offering under that name.
Despite the fact that the registration records identify the registrant or registrant organization as “THEIMPERIALCOLLEGE,” and based on the current record, there is no evidence that Respondent is or has been known by the name. See Policy, paragraph 4(c)(ii).
Finally, there is no evidence that Respondent is making a legitimate noncommercial or fair use of either domain name.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in each of the disputed domain names.
C. Registered and Used in Bad Faith
Complainant must establish that the domain names were registered and are being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in its mark, which are well established, long predate Respondent’s registration and use of the domain names. Even assuming that that Respondent was inspired to register the domain names from a reference to a fictional “Imperial College” in a film, it is probable, in the Panel’s view, that Respondent was actually aware of Complainant, its institution, and name, which enjoys a worldwide reputation.
Respondent might have been able to present evidence or make an argument that its registration and use of the domain name was not in bad faith. However, in the absence of any response, the Panel draws an adverse inference on this point.
Further, the Panel has already concluded that Respondent has no rights or legitimate interests in the domain name and that the use of the domain name was not in connection with a bona fide offering of goods or services.
Under these circumstances, the Panel finds that Complainant has established that Respondent has registered and is using the domain name 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 names, <theimperialcollege.com> and <theimperialcollege.org>, be transferred to Complainant.
Debra J. Stanek
Dated: August 29, 2010