WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yale University v. Yale Explore and movcom
Case No. D2011-1367
1. The Parties
The Complainant is Yale University of New Haven, United States of America (“United States”), represented by Venable, LLP, United States.
The Respondents are Yale Explore and movcom of Seoul, Republic of Korea (“Korea”).
2. The Domain Names And Registrar
The disputed domain names <yale-explore.com> and <yale-explore.org> are registered with Gabia, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2011. On August 12, 2011, the Center transmitted to Gabia, Inc. (the “Registrar”) a request for registrar verification in connection with the disputed domain names. On August 16, 2011, Gabia, Inc. transmitted to the Center its verification response confirming that Yale Explore is listed as the registrant for <yale-explore.com>, movcom is listed as the registrant for <yale-explore.org>, and providing the contact details.
On August 17, 2011, the Center notified Counsel for the Complainant that the Complainant had transmitted the Complaint to the email address of only one of the Respondents (movcom), and instructed that the Complaint also be sent to the other Respondent (Yale Explore). On August 17, 2011, Counsel for the Complainant confirmed that it had sent a copy of the Complaint and annexes to the email address of Yale Explore.
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”).
On August 17, 2011, the Center notified the parties, in both English and Korean, of the Center’s procedural rules relevant to the language of the proceeding. The Center informed the parties that according to the Registrar, the language of the registration agreement is Korean, and that the Complaint was submitted in English. In addition, the Center specifically requested the Complainant to provide at least one of the following: “1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into Korean; or . . . 3) submit a request for English to be the language of the administrative proceedings.” To the Respondents, the Center stated, “In all cases, if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by August 22, 2011.” The Center also instructed the Respondents, “Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be [English], and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials . . . as to why the proceedings should not be conducted in English.”
On August 17, 2011, Counsel for the Complainant responded to the Center, with a copy to the Respondents, stating, “The complaint contains a significant section of argument as to why the complaint should be in [E]nglish and that the language of the proceedings should be in [E]nglish.” In a separate email to the Center later on the same date, the Complainant’s counsel elaborated, “Please consider the section of the complaint [as] our request . . . .”
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2011. The Respondents did not submit any response, as further described herein. Accordingly, the Center notified the Respondents’ default on September 14, 2011.
On September 9, 2011, Counsel for the Complainant transmitted to the Center, with a copy to the Respondents and the Registrar, an email message with attachments, requesting permission to file “a supplemental Annex to its Complaint.” The Complainant stated, “Since the filing of the Complaint, we have learned that whoever is behind the websites discussed in the Complaint have been arrested for fraud.” On the same date, the Center acknowledged receipt of the submission, and informed that “[i]t will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision.”
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on September 19, 2011. 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 Panel determines that English is the language of the proceeding, as discussed herein.
4. Factual Background
The Complainant is a major research university in the United States, with an international reputation. It has obtained multiple registrations for the YALE mark in numerous countries, including the United States (on April 29, 1986, for “educational services, namely providing instruction and training at the undergraduate, graduate, post-graduate and professional levels”), and Korea (on April 1, 1998, for “tapes including contents of lecture,” and August 21, 1998, for “publication services, printing services, marketing services, computer programming, academies”).
The disputed domain names, <yale-explore.org> and <yale-explore.com>, were registered on November 29, 2010 and April 3, 2011, respectively.
5. Parties’ Contentions
The Complainant contends that: (i) the disputed domain names are identical or confusingly similar to the mark in which the Complainant has rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Complainant also states, inter alia, that: its mark is “world famous”; the “Respondent registered the domain names with the sole aim of impersonating Yale for nefarious purposes”; and the “Respondent has used the yale-explore domain names to market its programs under a blatantly false assertion and implication that the program is affiliated with Yale and that Yale faculty are involved with the program.”
On August 30, 2011, the Center received an email message whose subject line reads, “Regarding the case of ‘Yale-Explore.com’ [Case # D2011-1367].” The full body of the message states:
Thank you for your kindly explanation of the case (# D2011-1367).
We would like to solve this problem ASAP as you explained. We are willing
to give up the domain names.
Unfortunately we do not know the way to solve this issue in right way.
Please give us the detail guide that we can follow as instruction.
(we are willing to follow as your instruction ASAP)
Thank you for your help and sorry for your inconvenience.
Min Suk Kim
On the same date, the Center responded to the sender, with a copy to Counsel for the Complainant, as well as email addresses of the Respondents. The Center acknowledged receipt of the email communication, informed the sender that “it does not appear that you are the registrant of record for, or the holder of the domain-name registration” of the disputed domain names, and requested the sender to identify itself, explain its relationship to the Respondent, and “provide information sufficient to establish the legitimacy of your request in the context of the current proceedings.” The Center did not receive a reply. Nor did the Center receive any correspondence from the Respondents.
The Respondents did not reply to the Complainant’s contentions.
Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. The Panel may also draw appropriate inferences from the Respondents’ default, under paragraph 14(b).
6. Discussion And Findings
Initially, the Panel must address the language of the proceeding. Paragraph 11 of the Rules provides that unless otherwise agreed by the parties, the language of the registration agreement is the language of the administrative proceeding, but that this rule is “subject to the authority of the Panel to determine otherwise, having regard to the circumstances.”
Here, the registration agreement is in Korean. The Complainant submitted its Complaint in English, and requests that English be the language of the proceeding. The Center informed the Respondents, in both English and Korean, that they may object timely to any request that the language of the proceeding be English. They did not do so. With the Respondents’ default, and only the Complainant remaining, the Panel determines that English is the language of the proceeding.
The Panel is satisfied in the circumstances that the case is appropriately brought against the two named Respondents, who from the available record appear to be either the same entity, or at least related in so far as control over the two disputed domain names is concerned.
Turning to the merits, the Complainant must demonstrate the presence of each of the three elements under paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The disputed domain names, <yale-explore.com> and <yale-explore.org>, are identical or confusingly similar to the mark in which the Complainant has rights: YALE. Publicly available (United States) registration documents indicate that the Complainant’s first use of the mark occurred nearly three centuries ago (1718), with use “in commerce” set in 1814. It has formal registrations of the mark in numerous countries. In both disputed domain names, “yale” is the predominant and identifying portion. The addition of a generic term such as “explore,” along with the top level domain “.com” or “.org” does not defeat confusing similarity.
The first element of paragraph 4(a) of the Policy is demonstrated.
B. Rights or Legitimate Interests
The Complainant has met its initial burden of making a prima facie showing that the Respondents lack rights or legitimate interests in respect of the disputed domain names. The burden thus shifts to the Respondents to demonstrate any such rights or legitimate interests. The Respondents have defaulted and provide no argument in this regard. The Panel must independently undertake the task to determine if any rights or legitimate interests are present.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances, which, if proven, demonstrate the respondent’s rights or legitimate interests in respect of the domain name, namely, (i) the respondent’s “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,” (ii) the respondent being commonly known by the domain name, even if it has not acquired trademark or service mark rights, and (iii) the respondent’s “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.”
Given the Complainant’s protestations about the Respondents’ registration and use of the disputed domain names, the Panel presumes that the Complainant has no relationship with the Respondents (aside from this proceeding), and that the Complainant has not given the Respondents authorization or permission to use its mark.
The Panel is unable to ascertain any evidence that would demonstrate the Respondents’ rights or legitimate interests in the disputed domain names, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is established.
C. Registered and Used in Bad Faith
In order to prevail, the Complainant must also show that each of the disputed domain names “has been registered and is being used in bad faith,” as set forth in paragraph 4(a)(iii) of the Policy. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of bad faith in the registration and use of a domain name.
In the present case, Internet users who resorted to the disputed domain names were taken to websites, whose contents were virtually all in English text, with various references to “Yale,” “Yale University,” and “Yale professors,” and photographs of the Yale campus and individual Yale faculty members. There was even a notice for a “Summer Session” at Yale University, in New Haven, Connecticut. The website for <yale-explore.com> described the “Yale Explore Program” as “committed to intellectual inquiry, responsible decision-making and excellent educational environment.” One link within the website for the <yale-explore.org> featured a 142-word letter - purportedly from a current Yale professor and Yale Explore’s “President” (next to his picture and above his signature) - addressed to “Prospective Students” and welcoming them to Yale Explore.1 Links within the website for <yale-explore.com> provided descriptions of specific programs, class schedules, and tuition charges - “US$4,400” for “Silver Class,” and “US$ 8,800” for “Gold Class.”
The Respondents’ activities are, in the Panel’s view, blatant and without fear. Bad faith is present throughout. Specifically, the Respondents have brazenly and “intentionally attempted to attract, for commercial gain, Internet users to [the Respondents’] website . . ., by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondents’ website, under paragraph 4(b)(iv) of the Policy.
The third element is demonstrated.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <yale-explore.com> and <yale-explore.org> be transferred to the Complainant.
Dated: October 3, 2011
1 The case record contains this professor’s email response to an individual who contacted the professor inquiring about the program, wherein he states, “I am afraid that the website you have found is a fraud and scam. No such programs operate at Yale, neither I nor any of the Yale faculty listed under it have anything do with it, and Yale has sought to have the website shut down.”