World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Imperial College of Science, Technology and Medicine v. Elite Educational Society

Case No. D2010-1550

1. The Parties

The Complainant is Imperial College of Science, London, the United Kingdom of Great Britain and Northern Ireland, represented by Dechert, United Kingdom.

The Respondent is Elite Educational Society of Andhra Pradesh, Republic of India.

2. The Domain Name and Registrar

The disputed domain name <imperialcollegeinfo.com> (“Disputed Domain Name”) is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2010. On September 15, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On September 15, 2010, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 September 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2010. The Respondent did not submit any response.

The Center appointed Alistair Payne as the sole panelist in this matter on October 21, 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.

4. Factual Background

The Complainant is the very well established and reputed London based tertiary institution, and owns various registered trademark rights for its word mark IMPERIAL COLLEGE in several jurisdictions including Community Trademark Registration No. 272419 and also various trademark registrations in India including for its word mark IMPERIAL COLLEGE under No. 1288991. The Complainant operates a website under the domain name “www.imperial.ac.uk”.

The Respondent registered the Disputed Domain Name in April 2010.

5. Parties’ Contentions

A. Complainant

The Complainant submits that its name and mark is extremely well known both in the United Kingdom and internationally. It says that it owns trademark rights in its name and mark IMPERIAL COLLEGE as noted above and that the Disputed Domain Name is confusingly similar to its trademark in that it only differs from the Complainant’s trademark by the additional inclusion of the word “info”.

The Complainant says that the Respondent registered the Disputed Domain Name some 103 years after the commencement of the Complainant’s institution and, based on the degree of renown attaching to the Complainant’s name and mark, the Respondent must have known of the Complainant and of its name when it registered the Disputed Domain Name.

The Complainant further submits that it has never authorised the Respondent’s use of its name or mark and that there is no evidence of a bona fide business being operated by the Respondent at the website to which the Disputed Domain Name resolves or an intention to provide bona fide goods and services in connection with that name. The website to which the Disputed Domain Name resolves currently features a home page promoting international calling cards but none of those links appear to be operative. Originally according to the Complainant there was a “pay per click” parking page at the site which featured links to other sites focused on education and in particular other universities. The Complainant submits that the Respondent chose the Disputed Domain Name purposefully because it thought that it would attract traffic to its website. In short the Complainant submits that there is no evidence that the Respondent has any rights or legitimate interests in the Disputed Domain Name.

As far as bad faith is concerned the Complainant says that it is apparent, as noted above, that the Respondent chose to register the Disputed Domain Name purposefully and in full knowledge of the Complainant’s name in order to confuse internet users and to drive traffic towards its website in terms of paragraph 4 (b) (iv) of the Policy. In addition the Complainant says that there is no evidence that the Respondent had any legitimate purpose which is indicative of bad faith and this is more so the case in the circumstances that the Complainant’s name and mark is of such renown.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel acknowledges the significant degree of renown attaching to the Complainant’s IMPERIAL COLLEGE trademark and notes that the Complainant has demonstrated that it has various registered trademarks for IMPERIAL COLLEGE and in particular in India where the Respondent is based. The Panel notes that the Disputed Domain Name differs from the Complainant’s mark only by the inclusion of the term “info” as an abbreviation of information. This is a commonly used generic abbreviation which in no way distinguishes the Disputed Domain Name from the Complainant’s trademark and as a result the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s IMPERIAL COLLEGE trademark.

Accordingly the Complaint succeeds in relation to the first element of the Policy.

B. Rights or Legitimate Interests

The onus is upon the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut the Complainant’s prima facie case.

In the Panel’s view the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorised the Respondent’s use and it appears from review of the screenshots of the current and former websites at the Disputed Domain Name that it has been used to either resolve to a parking page site or to a website promoting international calling cards but without any active links. The lack of evidence of the Respondent providing any bona fide goods or services in relation to the Disputed Domain Name supports the prima facie case that the Respondent has no rights or legitimate interests.

The Respondent has not submitted a formal response, but in its informal communication suggested that it chose the Disputed Domain Name for the operation of a distance education centre based in India. The Panel notes that there is no other evidence before it in this regard and on its own this suggests even more strongly to the Panel that the Respondent chose the Disputed Domain Name with a view to associating itself with the Complainant.

In the circumstances of the significant degree of international renown attaching to the Complainant’s trademark and name, the degree of similarity of the Disputed Domain Name and the Respondent’s supposed explanation that it wished to use the Disputed Domain Name for a distance education centre, the Panel can only infer that the Respondent chose the Disputed Domain Name with a view to trading in some way on the repute attaching to the Complainant’s mark in relation to educational services. In the event, it ended up using the Disputed Domain Name for a parking page featuring paid links and it looks as though upon becoming aware of the Complaint decided to alter the site into one promoting international calling cards. None of these explanations provide evidence of the Respondent making a bona fide offering of goods and services in relation to Disputed Domain Name such as would rebut the prima facie case made out by the Complainant.

As a consequence the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complaint succeeds in relation to the second element of the Policy.

C. Registered and Used in Bad Faith

Consistent with the Panel’s findings above, the Panel finds that all the circumstances point to an inference that the Respondent chose to register the Disputed Domain Name purposefully and in full knowledge of the Complainant’s name in order to confuse Internet users into thinking that there was some association with it and to drive traffic towards its website at the Disputed Domain Name which, initially at least, featured links to competing educational providers. Previous panels have inferred bad faith in circumstances where a registrant allowed pay-per-click links to competing providers at its website, for example, in Shangri-La International Hotel Management Limited v Netincome Ventures Inc., WIPO Case No. D2006-1315. This inference is only reinforced by the Respondent’s subsequent suggestion in its communication that it intended to use the Disputed Domain Name for distance learning services. In fact the Respondent actually used it for a parking page featuring paid competing links and then a promotional site for calling cards featuring inactive links. Neither the Respondent’s explanation, nor these activities are consistent with the Respondent having a good faith motive and suggest opportunistic conduct by the Respondent in seeking to take advantage of the Complainant’s mark and name in relation to educational services.

In these circumstances the Panel finds that the Complainant has made out its case in relation to the elements of paragraph 4(b)(iv) of the Policy, namely that the Disputed Domain Name was chosen intentionally to attract for commercial gain users to its Internet site by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. Accordingly the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith and the Complaint succeeds in relation to the third element of the Policy.

7. Decision

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 <imperialcollegeinfo.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Dated: November 1, 2010

 

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