WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yeshiva University v. SS Media, Joy Dhivakar S Singh,
Case No. D2010-1588
1. The Parties
The Complainant is Yeshiva University of New York, New York, the United States of America, represented by Archer & Angel, the Republic of India.
The Respondent is SS Media, Joy Dhivakar S Singh, of Chennai, Tamil Nadu, the Republic of India.
2. The Domain Name and Registrar
The disputed domain name <einstein-college.com> (“the Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2010. On September 21, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 27, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Center sent an email communication to the Complainant on September 27, 2010 requesting an amendment to Complaint for an administrative deficiency. The Complainant filed an amended Complaint on September 28, 2010.
The Center verified that the Complaint together with the amended 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 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2010.
On October 14, 2010, the Respondent sent an email to the Center advising that the “Registrant details” for the Domain Name were “Aladipatti Vaithialinga Nadar-Pathrakali Ammal Educational & Charitable Trust”. The Respondent’s email went on to refer to a college apparently owned or operated by the Trust at Tirunelveli, India, and stated: “I am a Domain reseller. Sorry for the inconvenience.” The Respondent did not provide any other response to the Complaint.
By email dated October 14, 2010, the Center pointed out to the Respondent that the registrant details provided by the Respondent in its October 14 email differed from those contained in the Whois information, which had been confirmed by the Registrar. The Center’s email noted that the Respondent was the listed registrant.
The Respondent did not reply to the Center’s October 14 email. However on October 21, 2010 the Center noted that the Whois particulars for the Domain Name had been changed, to show the registrant as “Director, Einstein College”, of the same address as the Respondent had provided for the “college” in the Respondent’s October 14 email. The Center raised the change in the Whois particulars with the Registrar, asking for an explanation of the circumstances of the transfer of the Domain Name to “Director, Einstein College”.
By email to the Center dated October 27, 2010, the Registrar confirmed that the Domain Name itself had remained on “Registrar-lock” status, but that the system used by the Registrar permitted a domain name registrant to modify its contact details in the Whois information by directly modifying the Registrar’s “Contact” database. The Registrar advised that it had restored the contact details to those that it had confirmed to the Center on September 27, 2010, and applied a “client Update Prohibited” function on these particular contact details, directly at the registry.
The Center appointed Warwick Smith as the sole panelist in this matter on November 1, 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.
By Procedural Order No. 1 dated November 10, 2010, the Panel requested that the Complainant submit a further statement answering certain questions set out in the Order. The Respondent was given an opportunity to reply to the Complainant’s further statement, and the time for the Panel to give its decision was extended to November 24, 2010.
On November 10, 2010, the Complainant requested a ten day extension of the time allowed for it to comply with Procedural Order No. 1. That request was declined by the Panel.
The Complainant duly submitted a further statement in response to the Panel’s request, on November 15, 2010. The Respondent did not submit any Reply.
4. Factual Background
The following statements of fact are taken from the Complaint.
The Complainant provides undergraduate and graduate university courses at four campuses in New York. One of the Complainant’s facilities is a graduate medical school called The Albert Einstein College of Medicine (for convenience referred to hereafter as “AECOM”), which the Complainant has operated since 1955.
AECOM provides one of the largest post-graduate medical training programmes in the United States, offering some 150 residency programmes to more than 2,500 physicians in training. More than 8,000 alumni from AECOM are among the foremost clinicians, bio-medical scientists, and medical educators in the United States. Researchers at AECOM have made a number of important discoveries, some of which were detailed in the Complaint.
The Complainant has for some years successfully organized international symposiums on public health issues. Those symposiums have been attended by students and academicians from across the globe. The Complainant has also published various articles relating to its symposiums, and those articles have been featured in leading newspapers and magazines. AECOM has also established “Global Health Fellowship Programmes” to encourage students to participate and gain experience in clinical and public health in developed and undeveloped countries.
India is one of the countries in which senior Global Health Fellows from AECOM have carried out projects. One of the publications which the Complainant produced noted that “Einstein’s collaborations with India began in earnest in 2000”.
The Complainant’s Service Marks
The Complainant is the owner of the word mark ALBERT EINSTEIN in the United States, in respect of educational services (conducting a medical school and hospital) in International Class 41. That mark has been registered on the principal register maintained by the United States Patent and Trademark Office (the “USPTO”), with effect from May 1979.
The Complainant is also the registered proprietor in the United States of the service mark ALBERT EINSTEIN COLLEGE OF MEDICINE, in International Classes 41 and 42. This mark has been registered since May 2002, and it covers the provision of “courses of instruction and training in the field of medicine and biological science at the graduate and professional levels and distributing course material in connection therewith… Medical research, namely, conducting clinical, scientific and animal trials”.
The Complainant has an application pending for the registration of a Community Trademark consisting of the word EINSTEIN with a design (“the Einstein design mark”). Applications to register the Einstein design mark were also filed in India on September 1, 2009. Those applications do not appear to have proceeded to registration. The Einstein design mark has been used by the Complainant since November 2008.
The Complainant produced with the Complaint copies of various brochures and similar material, some of which prominently featured what the Panel takes to be the Einstein design mark. In this mark, the word “EINSTEIN” appears very prominently in a white rectangle, with a small design element immediately to the left of the word.
A publication called the “Einstein Quarterly” appears to have been published by AECOM in 2003, and from at least the spring of 2006 AECOM has published a brochure called “EINSTEIN”. These and other materials produced by the Complainant appear to show that AECOM has frequently been referred to simply as “EINSTEIN”.
The Complainant’s Websites
The Complainant operates a website or websites at a number of domain names, including the domain names <einstein-college.co.in>, <einsteinindia.in>, <einsteinindia.com>, <einsteincollegeofmedicine.in> and <einsteincollegeofmedicine.co.in>. The <einstein.co.in> domain name was created on July 30, 2009, and the <einstein-college.co.in> was created on June 15, 2010. The other “einstein” domain names owned by the Complainant were registered in March 2010.
The Respondent and the Domain Name
The Domain Name was registered on January 11, 2008.
The Complainant says that in about July 2010 it discovered that the Respondent had registered the Domain Name and the domain name <einstein-college.in>. The Complainant’s representative sent a cease and desist letter to the Respondent on July 13, 2010, apparently by registered post. The Complainant says that the letter was received by the Respondent on July 17, 2010, but the Respondent did not reply to it.
The Domain Name has resolved to the website at “www.einstein-college.in” (“the College website”), and the Complainant produced extracts from the College website printed on September 17, 2010. The College website on that date appeared to be advertising an educational institution in the State of Tamil Nadu in India at “Sir C.V. Raman Nagar, Seethaparpanallur, Tirunelveli”. The word “EINSTEIN” appeared twice on the copy of the College website which the Complainant produced, and there was also a heading “Einstin College” (clearly mis-spelt), and a picture of a large two-storied building which appeared to be a university or a large school, with the bottom part of college crest immediately above the words: “Enroll-Excel”. Immediately beside the word “Tirunelveli”, there was a 6-digit number which appeared to be a Tamil Nadu postcode, and a telephone number.
The top part of the college crest was not shown on the College website extracts which the Complainant produced. With the exception of two references to the word “EINSTEIN”, the top half of what appeared to be the home page consisted of nothing but a number of blank squares, each containing a small cross.
The Complainant noted that the College website appeared to be faulty in technical aspects, and that pages from the College website had not been loaded properly and could not be viewed clearly when opened in web browsers such as Internet Explorer and Google Chrome.
The Complainant says that it has never licensed or authorized the Respondent to register or use the Complainant’s marks.
The Panel’s Visit to the College Website
On November 9 and November 22, 2010, the Panel visited the College website. It appeared to be in substantially the same form as the pages from the College website which were produced with the Complaint, although the words “Welcome to Einstein College of Engineering” came up briefly on the Panel’s computer screen before the home page appeared. The same words appeared briefly when the Panel attempted to leave the College website by clicking on the “back” arrow in his browser (a double-click was necessary to exit the College website).
When the Panel used the “right-click” function on his mouse on one of the small crosses, and clicked on the word “Open”, he was able to access a number of subpages of the College website. These pages all featured the words “EINSTEIN College of Engineering” in fairly prominent lettering, and they appeared to show that a fairly substantial college campus is being run under that name on a site between the towns of Tirunelveli and Tenkasi, in Tamil Nadu, India. An enrolment application form available on the College website stated that Einstein College of Engineering is affiliated to Anna University in Chennai. The college crest referred to above contained a date which, although somewhat difficult to read, appeared to be “2004”. Above that date, the crest contained the words “EINSTEIN COLLEGE OF ENGINEERING” (that part of the crest was not visible on the extracts which the Complainant produced, nor on the home page as it appeared before the Panel used the “right-click” mouse function).
The members of the College Trust Board were named on the College website, and they were described as “well-educated persons with Master Degrees in United States of America and has work and project experience in USA”. That was not the only apparent connection between the College and the United States: the College website referred to the Trust’s “understandings” with college boards and admission bureaux in the United States, and a Memorandum of Understanding signed with an American corporation which would be prepared to “select performing and interested students”.
The College website made reference to the famous scientist Albert Einstein, noting that his theory of relativity “gave a new dimension to all inventions”. While the College appears to be called “EINSTEIN College of Engineering”, the campus near Tirunelveli was said to be named for “the famous Indian Noble Laureate Sir C.V. Raman, as Sir C.V. Raman Nagar.” (“Nagar” appears to be a generic expression in one or more of the languages spoken in India.)
On November 22, 2010, the Panel visited the College website directly, by keying into his browser “www.einstein-college.in”. There was no brief appearance of the words “Welcome to Einstein College of Engineering” on this occasion, but otherwise the College website appeared to be the same.
The Complainant’s Further Statement
In response to the Panel’s questions, the Complainant first acknowledged that “there may be a college or school of engineering in or near Tirunelveli, Tamil Nadu, India, with the name ‘Einstein College of Engineering’.” The Complainant said that it first became aware of the possible existence of the school on April 26, 2010.
The Complainant said that it conducted a “preliminary investigation” in May 2010, “to look into the existence of such educational institution”, but that the results of the investigation were “inconclusive”. The Complainant did not explain how a search for a large college building in a known location could have been inconclusive, other than by pointing to the relatively remote location of Tirunelveli (10 hours’ drive from Chennai, the nearest major city) and to the “limited infrastructure” in India. The Complainant said that it was undertaking another detailed investigation regarding “this apparent educational institution”, but that completion of the further investigation would take time. The Complainant could not say how long the “Einstein College of Engineering”, if it exists, has been operating in or near Tirunelveli.
The Complainant pointed out that Tamil Nadu is one of India’s largest states, and stated that any college at or near Tirunelveli would be over 600 kilometers from the Respondent’s location in Chennai.
The Complainant provided with its further statement printouts from a website operated by the Respondent at “www.ssmedia.in” (“the Respondent’s Website”), made on November 15, 2010. These web pages show that SS Media operates a business as a web designer, logo and graphics designer, and as a registrant and host of domain names. The Respondent’s Website did not suggest any connection with any college of engineering.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name contains the Complainant’s EINSTEIN trademark in its entirety. The Domain Name is identical or confusingly similar to the Complainant’s marks.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) the Respondent is not using the Domain Name for any purpose, and the contents of the College website appear to be moribund and faulty in technical aspects. The College website has technical glitches, as the pages have not been loaded properly and clearly.
(ii) The Complainant has never authorized the Respondent to register or use the Complainant’s marks, more specifically the EINSTEIN trademark.
(iii) Upon information and belief, the Respondent has never used, or made preparations to use, the Domain Name or any name corresponding to the Domain Name, in connection with a bona fide offering of goods or services.
(iv) The Respondent is using the Domain Name in connection with a website that competes with the services offered by the Complainant under its EINSTEIN mark. Such use is clearly not bona fide under the Policy, and does not confer upon the Respondent any rights or legitimate interests in the Domain Name.
(v) The Respondent has never been commonly known by the Domain Name, and has never acquired any trademark or service mark rights in the Domain Name. Given the Complainant’s established use of its marks for more than 54 years, it is exceedingly unlikely that the Respondent could be commonly known by one of those marks.
(vi) The Respondent has made an illegitimate, unfair use of the Domain Name, with intent for commercial gain, misleadingly to divert the general public.
3. The Domain Name was registered and is being used in bad faith. The Complainant relies upon the following matters:
(i) The Respondent has intentionally attempted to attract Internet users to the College website, by creating a likelihood of confusion with the Complainant’s name or marks as to the source, sponsorship, affiliation or endorsement of the College website or of a product or service on the College website.
(ii) There can be no doubt that the Respondent knew of the Complainant’s marks, and especially the EINSTEIN trademark, when the Domain Name was registered. The marks, and particularly the EINSTEIN mark, are well known and recognized in numerous countries or geographic regions worldwide. The Respondent must also have known of the Complainant’s related domain names.
(iii) The Complainant’s rights in its marks pre-date the Respondent’s registration of the Domain Name by numerous years. The Respondent has acquired the Domain Name with an ulterior motive, and the balance of rights is in the Complainant’s favor.
(iv) If the Respondent is not restrained from using the Domain Name and the Domain Name is not transferred to the Complainant, irreparable loss and hardship will be caused to the Complainant.
(v) The Domain Name is very obviously connected with the Complainant, such that the Respondent has been guilty of “opportunistic bad faith”, in violation of the Policy.
Complainant’s Contentions in its Supplementary Statement
1. The Complainant’s dispute is with the present registrant of the Domain Name (the Respondent), and not with any school or college of engineering. There is no evidence which suggests that the Respondent may be acting on behalf of any such school or college, and the fact that both the Respondent and the college (if it exists) are both in Tamil Nadu does not justify an inference that there is some connection between the Respondent and the college. SS Media is a company specializing in web designing etc.; it is not an educational institution.
2. In sending the email to the Center dated October 14, 2010, the Respondent has shown bad faith and attempted to mislead the Panel by falsely providing the name and details of another party as registrant of the Domain Name.
3. The College website clearly features the mark EINSTEIN, which is rightfully the Complainant’s intellectual property. The Respondent has been misusing the Complainant’s trademark rights by attempting to show some association with the Complainant, which does not exist.
4. The Respondent is fully aware of the Complainant’s use of, and goodwill and reputation in, its marks, and has adopted the Domain Name in bad faith and with mala fide intention.
5. The Domain Name may mislead and deceive young and aspiring students into believing that some association exists between the Complainant and the Respondent, which affects the goodwill and reputation enjoyed by the Complainant worldwide with respect to its services.
6. If there exists an “Einstein College of Engineering” as the College website appears to suggest, the Complainant intends to take infringement action against its owners or operators under Indian trademarks legislation. However that is not a matter which should affect this proceeding, as the Respondent is not connected with any such college.
The Panel notes that the Complainant did not respond to the Panel’s request for advice as to the basis on which the Complaint contends that a college of engineering competes with the medical school and related services which the Complainant provides under its claimed EINSTEIN mark.
Except as indicated in section 3 of this decision (“Procedural History”), the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. What the Complainant Must Prove – General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
B. Identical or Confusingly Similar
The Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s ALBERT EINSTEIN COLLEGE OF MEDICINE mark, registered in the United States of America.
First, the words “einstein” and “college” are common to both the Domain Name and that mark, and they appear in the same order. Secondly, any reference to the word “einstein” is likely to be taken by a very large number of Internet users as a reference to the famous scientist Albert Einstein, and the use of the word “college” in the Domain Name would, in the Panel’s view, lead many Internet users to assume that any website at the Domain Name would probably be concerned with some college named in honor of the famous scientist. AECOM is, of course, such a college. There is nothing in the Domain Name to indicate what kind of college might be promoted on a website at the Domain Name, and in those circumstances the Panel is satisfied that a significant number of Internet users, being users who were familiar with AECOM, would assume that any website at the Domain Name was probably concerned with, or authorized by, AECOM.
Although it is not necessary to decide whether the Complainant has unregistered (common law) rights in the Einstein design mark, or in any other “Einstein” mark, and the Panel refrains from doing so, the confusing similarity between the Domain Name and the Complainant’s ALBERT EINSTEIN COLLEGE OF MEDICINE mark would undoubtedly be exacerbated by the fact that many people associated or familiar with AECOM appear to refer to the college by the abbreviated name “Einstein”.
The Complainant has proved this part of the Complaint.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to the Complainant’s ALBERT EINSTEIN COLLEGE OF MEDICINE mark, and the Complainant has not authorized the Respondent to use that mark (or any expression confusingly similar to it), whether in a domain name or otherwise. There is nothing to suggest that the Respondent (as opposed to the college of engineering which appears to exist near Tirunelveli, Tamil Nadu, India) has been commonly known by the Domain Name, and there is therefore no basis for any right or legitimate interest under paragraph 4(c)(ii) of the Policy.
In those circumstances, the Complainant has provided sufficient prima facie proof that the Respondent has no right or legitimate interest in respect of the Domain Name, so the evidentiary burden under paragraph 4(a)(ii) of the Policy shifts to the Respondent. The Respondent has not filed any formal response to the Complaint, and in the Respondent’s email to the Center dated October 14, 2010 the Respondent appears to have disclaimed any right or interest in the Domain Name, referring to a named educational charitable trust as the correct registrant of the Domain Name. The Respondent did not suggest that it registered the Domain Name as agent or otherwise on behalf of that charitable trust. In those circumstances, the Respondent has not discharged its evidentiary burden. The Complainant therefore succeeds on this part of its Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, 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 [the respondent’s] website or location.
It is appropriate first to note two matters of general principle applicable to paragraph 4(a)(iii) of the Policy.
First, the Complainant must prove not only that the Domain Name has been used in bad faith, but also that it was registered in bad faith (see the decision of the majority in the recent three-member Panel decision in A. Nattermann & CIE. GmbH and Sanofi-Aventis v Watson Pharmaceuticals Inc, WIPO Case No. D2010-0800, and the Panel decisions to similar effect which are listed at pages 9 – 10 of the decision in that case. The Panel (a member of the majority in the A Natterman & CIE GmbH case) still adheres to the reasoning of the majority in that case, notwithstanding the more recent three-member panel decision in Jappy GmbH v Satoshi Shimoshita, WIPO Case No. D2010-1001. The Panel notes that the “unitary concept” approach to the words “registered and is being used” in paragraph 4(a)(iii) of the Policy, which some panels have recently adopted and which found favor with the panel in the Jappy case, has also been rejected recently by a very experienced panel in Technicolor S.A. v Technicolor Trademark Management S.A. and Technicolor Trademark Management S.A.S, WIPO Case No. D2010-1564.
Secondly, the complainant in a complaint under the Policy must generally prove that the respondent has been targeting the complainant in some way, such as by attempting to extort money from the complainant for a transfer of the disputed domain name, or by riding on the back of the complainant’s goodwill in its trademark by attempting to attract to a website at the disputed domain name Internet users looking for the complainant’s website (see for example The Perfect Potion v Domain Administrator, WIPO Case No. D2004-0743, followed by this Panel in Christian Dior Couture v Paul Farley, WIPO Case No. D2008-0008 and in Dreamstar Cash S.L. v Brad Klarkson, WIPO Case No. D2007-1943). See also the decision of this Panel in Think Service, Inc v Juan Carlos aka Juan Carlos Linardi, WIPO Case No. D2005-1033, where the panel (having referred to the panel decisions in Emilio Pucci SRL v Mailbank.com Inc., WIPO Case No. D2000-1786 and Builder’s Best Inc v Yoshiki Okada, WIPO Case No. D2004-0748) noted “that the relevant bad faith must be specific to the Complainant, or at very least the Respondent must have had the Complainant in mind when he registered the Domain Name”.
Generally, if a respondent has registered a disputed domain name because its real value is that it is the same as, or confusingly similar to, the complainant’s trademark, the registration will have been made in bad faith (see for example mVisible Technologies Inc v Navigation Catalyst Systems Inc, WIPO Case No. D2007-1141, followed by this Panel in Grundfos A/S v Texas International Property Associates, WIPO Case No. D2007-1448).
In this case, each of these matters of general principle creates a difficulty for the Complainant. In respect of the requirement that the Complainant must prove bad faith registration of the Domain Name, the Panel notes that the Domain Name was created on January 11, 2008, and that there is nothing in the evidence to suggest that the Respondent was not the original registrant. The Complainant must therefore show that the Respondent acted in bad faith in registering the Domain Name on that date. The Panel also notes that the Complainant appears to have no registered trademark in India, and that it did not apply to register any relevant mark in India until September 1, 2009. Nor does it appear that the Complainant owned any relevant “einstein” domain name in January 2008. There is an obvious question as to whether the Respondent was or should have been aware of AECOM when the Domain Name Was registered.
AECOM was certainly involved in medical and scientific project work in India before January 2008 – the evidence shows that collaboration with local institutions on various global health ventures in India appears to have begun in or about the year 2000. There have been various visits to India by AECOM faculty members or alumni over the years between 2000 and 2008, and an AIDS awareness program known as “STEPS” appears to have been instituted in India by Dr Chhabra of AECOM in the early 2000s. The Complainant’s cease and desist letter to the Respondent sent in July 2010 referred to symposiums being run by AECOM in India since 2004 – an example in the evidence was a symposium held in Bangalore in July 2007. There was also evidence of the establishment of a global diabetes initiative under which AECOM has collaborated in research projects with the CMC Vellore Medical Research Center in India.
But these AECOM activities in India all appear to have been in highly specialized medical or scientific fields such as HIV/AIDS research and awareness, or diabetes research. And AECOM’s “Einstein” magazine, summer/fall 2009 edition, noted that: “While Albert Einstein College of Medicine may not be a household name in India, officials at the highest levels of its government have taken notice. ….” Looking at AECOM’s activities in India on their own, it seems doubtful that an operator of a small web design business in Chennai would have known about them (at least on the evidence produced in this proceeding).
On the issue of “targeting” the Complainant, there is an additional problem for the Complainant. The Domain Name resolves to a website (the College website) which on its face appears to be used by a third party carrying on business under the name “Einstein College of Engineering”. Even if the Respondent was aware of AECOM in January 2008 as the Complainant contends, the apparent existence of this “Einstein” college of engineering squarely raises the question of which “Einstein” college the Respondent had in mind when the Domain Name was registered.
When the Panel became aware of the possible existence of an “Einstein College of Engineering”, he drew the various sub-pages of the College website to the Complainant’s attention and put a number of questions to the Complainant. The first two questions which the Panel put to the Complainant were:
1. Does the Complainant accept that there exists a college or school of engineering in or near Tirunelveli, Tamil Nadu, India, which is known by the name “Einstein College of Engineering” (or by any other name which includes the word “Einstein”)?
2. If the answer to Question 1 above is “No”, the Complainant is requested to provide evidence documenting the enquiries it has made which have led it to conclude that no such college or school exists.
In its statement in response, the Complainant side-stepped giving any clear answer to the second of those questions, by stating in its answer to Question 1 that there “may be” a college or school of engineering called “Einstein College of Engineering” in the relevant location, and then contending that Question 2 was not applicable because it had answered Question 1 “in affirmative”. The Complainant elected to provide the Panel with no details of the preliminary investigation it said it had conducted in May 2010, nor any clue as to what the results of that preliminary investigation might have been (other than that they were “inconclusive”).
The Panel was not impressed with those answers from the Complainant. The College website provides what appear to be perfectly clear details of the claimed location of this college, complete with a postal code and a telephone number. It clearly names certain individuals as trustees, and it provides full particulars of addresses said to be the Trust’s head office in Tirunelveli and its administration office in Chennai. A form described as an enrolment form, accessible from the College website, contains the claim: “Approved by AICTE”, “Affiliated to Anna university”. And the College website describes a campus which, if it existed, would be a substantial property, comprising a large two-storied building, with 31 acres of land and separate hostels for male and female students. With all that information it is difficult to believe, at least without a far more detailed explanation than the Complainant was prepared to provide, that since April 26, 2010 the Complainant has been unable to conclusively establish whether or not there exists an Einstein College of Engineering near Tirunelveli. Taking account of the Complainant’s statement (in its answer to the Panel’s Question No. 2) that it had answered the Panel’s Question 1 in the affirmative, the Panel concludes, on the balance of probabilities that such an institution probably does exist.
The Complainant told the Panel in its supplementary statement that it could not say when the Einstein College of Engineering near Tirunelveli was established (if it exists). The year shown on the crest pictured on the College website appeared to be 2004. Whether or not that was the year of establishment, it seems entirely possible on the evidence produced that the Einstein College of Engineering has been operating at the Tirunelveli site from some time before January 2008, when the Respondent registered the Domain Name.
There is no evidence that the Respondent registered the Domain Name with a view to selling it to the Complainant for a profit, and nor are there any sponsored links to third party websites on the College website from which the Respondent might have been deriving pay-per-click revenue. The Domain Name simply resolves to a website (the College website) which appears to be operated by a real “Einstein” college.
All of the foregoing might suggest that the Complaint should be dismissed out of hand. But it remains the case that the Respondent failed to reply to the Complainant’s cease and desist letter, and has failed to provide any substantive response to the Complaint. When given a further opportunity to respond (to the Complainant’s supplementary statement), the Respondent again remained silent.
Furthermore, the Respondent gave incorrect advice in the October 14, 2010 email to the Center, that a named educational and charitable trust was the “registrant” of the Domain Name. The Respondent is in the business of registering domain names, and would have known perfectly well that the information in the October 14, 2010 email did not accurately set out the registration details for the Domain Name. When that was pointed out by email sent to the Respondent by the Center, the Respondent not only remained silent, but proceeded to alter the registrant and contact details for the Domain Name (without apparent reference to the Registrar), to show the registrant not as the charitable trust named in the Respondent’s October 14 email, but as “Director, Einstein College”, of Seethaparpanallur, Tirunelveli.
The poor quality of the College website (difficulty in accessing web pages, spelling mistakes, poor grammar, etc) is also suspicious.
In the end, the Panel is left with the impression that the College website is probably not a genuine website. If it were, and the Respondent had been honestly hosting the College website for the Einstein College of Engineering (or had perhaps onsold the Domain Name to that College at some earlier stage without effecting a formal transfer of the Domain Name), why would the Respondent not have simply referred the Complaint on to the College? And why would the College not then have responded to the Complaint? The spelling mistakes and poor English on the College website are also consistent with the view that the Respondent was acting alone in registering and maintaining the Domain Name, and that the College website is not a genuine website operated by the Einstein College of Engineering. (Would any bona fide tertiary education provider called “Einstein College…” really create or approve a website where its name was mis-spelt “Einstin College”? - it seems highly improbable.)
So why did the Respondent register the Domain Name and point it to what appears to be an apparently unauthorized website? The Panel cannot know the answer to that question for sure, but he does note that the Respondent claims to be a domain name reseller, and it has no apparent connection with education. It therefore seems likely that the Respondent acquired the Domain Name with a view to onsale at a profit.
Onsale to whom? Clearly, the Respondent was aware of the Einstein College of Engineering near Tirunelveli – the College website leaves no room for doubt about that. But where is the evidence that on January 11, 2008 the Respondent knew of the Complainant or AECOM?
The onus of proof on that question lies on the Complainant, and in the view to which the Panel has come that onus has not been discharged. The Respondent could just as easily have been “targeting” the owners and operators of the Einstein College of Engineering when it registered the Domain Name – certainly the poor quality of the College website does that institution no favors, and that might be consistent with a bad faith attempt to force that institution into paying more for the Domain Name than it might otherwise have been prepared to do. Whether or not that is so, there is nothing in the evidence to suggest that the Respondent had AECOM in mind when it registered the Domain Name.
The Panel has some sympathy with the Complainant, in that it appears that the Respondent has been acting in bad faith, and the Complaint has only failed because the Complainant has failed to prove that that bad faith was directed at it, as opposed to another entity which might or might not have rights in the expressions “Einstein”, or “Einstein College”, in India. However the Panel has little doubt that he has not heard the whole story, and it is not for the Panel in this proceeding to venture any opinion on which of the Complainant and the Einstein College of Engineering might have the stronger claim to the use of those expressions in India. Where the Respondent appears to have been targeting the Einstein College of Engineering and not the Complainant, there is no proper basis for an order directing the transfer of the Domain Name to the Complainant.
The Complainant has indicated that it intends to commence appropriate trademark infringement proceedings in the Indian courts once it has established to its satisfaction that the Einstein College of Engineering does exist, and it seems to the Panel that the respective rights (if any) of the Complainant, the Respondent, and the Einstein College of Engineering, would be better determined in such proceedings than in a summary, administrative proceeding such as this.
For all the foregoing reasons, the Complaint is denied.
Dated: November 24, 2010