WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ETH Zürich (Swiss Federal Institute of Technology in Zurich) v. John Shao

Case No. D2015-2338

1. The Parties

Complainant is ETH Zürich (Swiss Federal Institute of Technology in Zurich) of Zürich, Switzerland, represented by Schneider Feldmann AG, Switzerland.

Respondent is John Shao of Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ethz.com> (the “Disputed Domain Name”) is registered with Melbourne IT Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2015. On December 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2016. Respondent submitted (non-substantive” informal email communications to the Center on January 5 and 27, 2016. Respondent did not submit any substantive response. Accordingly, the Center notified Respondent’s default on January 21, 2016.

The Center appointed Flip Petillion as the sole panelist in this matter on January 27, 2016. 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

Complainant, ETH Zürich (Swiss Federal Institute of Technology in Zurich), is a Swiss Federal university institution. Complainant holds various trademarks, including the following:

- Word mark ETH, registered with the Swiss Federal Institute of Intellectual Property on June 16, 2004 under No. P-526262 in classes 9, 16, 41 and 42;

- Word mark ETH, registered with the Swiss Federal Institute of Intellectual Property on September 28, 2012 under No. 640612 in classes 8, 9, 11, 14, 16, 18, 21, 24, 25, 28 and 30;

- International word mark ETH, registered with WIPO on April 24, 2014 under No. 1209020 in classes 16, 41 and 42.

The Disputed Domain Name <ethz.com> was registered on May 7, 1999, and does not resolve to any content.

5. Parties’ Contentions

A. Complainant

Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Finally, Complainant claims that the Disputed Domain Name was registered and is used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.

Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

1. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

3. The Disputed Domain Name has been registered and is being used in bad faith.

The Panel will deal with each of these requirements in turn.

A. Identical or Confusingly Similar

To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is an ETH trademark in which Complainant has rights. The trademark has been registered and used in various countries in connection with educational services.

The Panel notes that the Disputed Domain Name <ethz.com> incorporates Complainant’s ETH trademark in its entirety and simply adds the letter “z”.

The Panel is of the opinion that the addition of generic Top-Level Domains (“gTLDs”) can be disregarded when comparing the similarities between a domain name and a trademark (see Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269).

In view of the fact that the full name of Complainant is “ETH Zürich” and given Complainant’s use of the domain name <ethz.ch>, the Panel considers the Disputed Domain Name to be confusingly similar to Complainant’s ETH trademark.

Accordingly, Complainant has made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of rebuttal on Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired any relevant trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent exists.

Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Respondent sent an email to Complainant claiming that the Disputed Domain Name is used for email services, but no evidence was provided in support of that claim.

The passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; American Home Products Corporation vs. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).

Finally, the Panel notes that Respondent decided not to take substantive part in the administrative proceedings. This is a further indication of the absence of rights or legitimate interests in the Disputed Domain Name.

In view of the foregoing, the Panel considers that Complainant has also made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see e.g., Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

The Panel notes that the Disputed Domain Name was registered on May 7, 1999, before Complainant’s trademarks. However, Complainant provides evidence regarding the use of the sign ETH and its name “ETH Zürich” as unregistered trademarks long before the registration of the Disputed Domain Name. Complainant demonstrates it is one of the leading international universities for technology and natural sciences, which emphasizes Complainant’s reputation. Moreover, the WhoIs records of Complainant’s domain name <ethz.ch>, referring to Complainant’s official website, show that this domain name has been registered and used before 1996. The Panel considers this as evidence of the use of the “ETHZ” abbreviation by Complainant before the registration of the Disputed Domain Name. Therefore, the Panel finds that Respondent must have had knowledge of Complainant and its rights at the moment it registered the Disputed Domain Name, which suggests bad faith (see Al Ghurair Group LLC v. Ghurair Group, WIPO Case No. D2004-0532; Rock im Park GmbH v. Rock Im Park Festival Wien / Klaus Schmidt, WIPO Case No. D2012-0956, where it was held that respondent was aware, or should have been aware, of complainant’s unregistered trademark rights when it registered the disputed domain name, because complainant’s “official” website was in operation well before the registration date of the disputed domain name. The disputed domain name was also almost identical to complainant’s domain name referring to its “official” website. Finally, complainant’s “official” website and unregistered mark would have been identified by a routine Internet search).

Respondent does not demonstrate any use of the Disputed Domain Name. According to the Panel, the passive holding of the Disputed Domain Name may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Name by Respondent that would be legitimate and not infringing Complainant’s well-known mark or unfair competition and consumer protection legislation (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). The fact that a complainant’s trademark has a strong reputation and is widely used and the absence of any evidence whatsoever of any actual or contemplated good faith use of the disputed domain name are further circumstances that may evidence bad faith registration and use in the event of passive use of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, supra).

In the present case, the Panel is of the opinion that Complainant’s ETH trademark is sufficiently known, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by Respondent.

Finally, despite of the non-formal communication sent to the Center, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions therefrom it considers appropriate.

In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith.

7. Decision

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 Name <ethz.com> be transferred to Complainant.

Flip Petillion
Sole Panelist
Date: February 10, 2016