WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Iona College v. Ilya S.
Case No. D2012-2271
1. The Parties
The Complainant is Iona College, New Rochelle, New York, United States of America, represented by Tarter Krinsky & Drogin LLP, United States of America.
The Respondent is Ilya S., Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <ionaconnections.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2012. On November 19, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On November 21, 2012, GoDaddy.com, LLC 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 together with the amendment to 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 November 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2012.
The Center appointed David Williams as the sole panelist in this matter on January 17, 2013. 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, Iona College, is an educational institution chartered by the Regents of the University of the State of New York, United States of America. The Complainant is the common law owner of the unregistered trademark IONA which is used by the Complainant in connection with educational and related services. The IONA name has been used by the Complainant in the United States since 1940 to, inter alia, promote and provide its post-secondary educational and related services.
On or about November 3, 2008, the Complainant registered the domain name <ionaconnections.com> (now the disputed domain name). It began to operate a website with the web address of “www.ionaconnections.com” (the “original IONA connections website”). This site was the online portal for Iona College alumni and provided information of interest to alumni, such as news regarding the Complainant, access to an alumni directory, a calendar of alumni events, job postings and the like.
In November 2011, the Complainant inadvertently failed to renew the registration for its <ionaconnections.com> domain name, the domain name used in connection with the original IONA connections website. It appears this was due to an oversight related to some personnel changes and the renewal information being sent to an email address which was no longer in use. As a result, the registration for <ionaconnections.com> lapsed. However, the Complainant continued to use the IONA trademark to promote its business. It also maintained an online presence of the mark with its website “www.iona.edu”.
Shortly after the Complainant inadvertently failed to renew its registration, and before it even realized that the registration had lapsed, the Respondent registered the domain name <ionaconnections.com> and began using it in connection with a website “www.ionaconnections.com”. This site appears to be a copy of an archived version of the original IONA connections website and bills itself as the “new home of the Iona Alumni”.
The Complainant is currently using the domain name <ionaconnection.com> to host its alumni website, “www.ionaconnection.com” (the “current IONA connections website”)
5. Parties’ Contentions
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
The Complainant alleges it holds common law rights to the IONA mark. It supports its claim to common law trademark protection, asserting that it has amassed significant goodwill in the IONA name since 1940 through the use of the name to distinguish its services from the goods and services of others. These services include post-secondary educational and related services, encompassing, inter alia, fifty-nine undergraduate degree programmes, thirty-eight undergraduate minors, forty gradudate degree programmes, as well as other degrees and certificates. The Complainant also asserts that it began using the IONA mark online by creating the IONA website “www.iona.edu” as early as 1992. The Complainant contends that by virtue of the wide renown acquired by the IONA mark in the United States and the national promotion and provision of the educational services distributed under this mark, the IONA mark has become famous and the word IONA is immediately identified with Iona College, so much that the Complainant is often plainly referred to as “IONA” and the mark therefore has obtained a secondary meaning.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s mark because it incorporates this mark in its entirety.
The Complainant also contends that the Respondent’s website, to which the disputed domain name directs, is a copy of an archived version of the Complainants original IONA connections website. Therefore texts, photographs, layout, look, fonts and colours are almost identical to the original and the current IONA connections websites and further increase the likelihood of confusion.
The Complainant further contends that its use of the mark predates the Respondent’s registration of the disputed domain name.
ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Complainant has exclusive rights for the IONA mark. No consent was granted to the Respondent to use IONA in the disputed domain name. The Complainant alleges that it is obvious that the Respondent is not using the disputed domain name for a bona fide business or commercial purpose. The Respondent is not a licensee of or otherwise affiliated with the Complainant.
iii. The disputed domain name was registered and is being used in bad faith:
The Complainant further contends that the disputed domain name was registered and is being used in bad faith because at the time of the registration, the Respondent was bound to have had knowledge of the Complainant’s IONA mark due to the Complainants prior use of the disputed domain and the original IONA connections website. This claim is further supported by the fact that an archived version of the Complainant’s original IONA connections site appears to be used by the Respondent.
The Complainant argues that the disputed domain name is being used in bad faith because when viewing the website to which disputed domain name directs, one realises that the Respondent is intentionally attempting to improperly attract Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website and the services offered on it.
The Complainant alleges that by using the disputed domain name, the Respondent is intending to cause Internet search engines to prominently list the Respondent’s website when Internet users conduct searches for services offered by the Complainant and to otherwise intentionally mislead consumers into believing that <ionaconnections.com> is related or authorized by the Complainant.
The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.
6. Discussion and Findings
To qualify for a cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 14(a) of the Rules in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules, or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
The Panel must not decide in the Complainant’s favour solely based on the Respondent’s failure to reply to the Complainant’s contentions See Cortefield, S.A. v. Miguel Garcia Quitas, WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations, on balance of the probabilities, have merit.
A. Identical or Confusingly Similar
In order to transfer the disputed domain name to the Complainant, the Panel must be satisfied that with regard to this element:
(a) the Complainant has rights in a trademark or service mark; and
(b) that the disputed domain name is identical or confusingly similar to that trademark or service mark.
The disputed domain name incorporates the IONA trademark, which is owned and has been commercially used and promoted by the Complainant, in and for the purposes of its business for many years. To establish such rights, the Complainant must show that the name IONA has achieved secondary meaning or association with the Complainant within the United States or at least part thereof, refer for example Universal City Studios Inc. v. Burns, WIPO Case No. D2001-0784. It is undisputed that the Complainant has been indentifying itself and its services with the IONA mark for the better part of 70 years. Additionally, the Complainant has maintained an online presence under the IONA mark since 1992.
The Panel notes that, even if secondary meaning had been acquired only in a limited geographical area, the Complainant would nevertheless have established sufficient common law trademark rights within the meaning of the Policy. The Policy makes no distinction between localized and widespread trademark rights, and there is no requirement that a complainant own a famous mark to invoke the protections of the Policy, see e.g. UEFA v. Fuzi Furniture, WIPO Case No. D2000-0710 where the panel found that the complainant need not establish exclusive rights across all territorial boundaries, only a bona fide basis for making the complaint. This was affirmed for example in Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786.
It is irrelevant that the Complainant inadvertently let the registration for the disputed domain name lapse, as its rights under the Policy primarily stem from its use and ownership of the IONA trademark, and not any registration of the disputed domain name.
There is no question, in the Panel’s view, that the disputed domain name is confusingly similar to the Complainant’s IONA mark for the purposes of the Policy. The disputed domain name incorporates in its entirety the IONA mark. The UDRP panel in Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033 found that “if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words.”
For the purposes of the Policy, the question of identity or confusing similarity requires a comparison of the disputed domain name and the Complainant’s trademark rights, which have been proven as shown above. In this case, the disputed domain name has two differences from the Complainant’s IONA trademark: the addition of the “.com” suffix and the addition of the word “connections” to the trademark. As the panel found in F. Hoffmann-La Roche AG v. George Stiegman, WIPO Case No. D2008-1572, when comparing the disputed domain name to the trademark, “the addition of the generic top-level domain (gTLD) “.com” is not legally significant since use of a gTLD is required of domain name registrants. The “.com” gTLDs is one of several such gTLDs, and “.com” does not serve to identify a specific enterprise as a source of goods or services.” See also Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252, concerning the inclusion of a gTLD.
The fact that a domain name wholly incorporates a complainant’s trademark has been found sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. Many UDRP panels have found that the addition of words or letters to a mark used in a domain name does not generally alter the fact that the domain name is confusingly similar to the mark. The addition of a generic term does not serve to distinguish the domain name from the trademark. In this case, notwithstanding the gTLD, the disputed domain name consists of the Complainant’s IONA trademark and the suffix “connections”. The Panel finds that the suffix “connections” is of a descriptive nature only, and the distinctive element of the disputed domain name is obviously the term IONA. In these circumstances, the Panel concludes that Internet users finding the disputed domain name <ionaconnections.com> are likely to be misled into believing that the Complainant is the registrant or is otherwise affiliated or associated with the disputed domain name. Similar findings were made by the panel in F. Hoffmann-La Roche AG v. Domains by Proxy, LLC/ Daniel Kertzman, WIPO Case No. D2012-1900 and F. Hoffmann-La Roche AG v. NetMarketing cc, WIPO Case No. D2005-1216, where the panels found the addition of the word “sale”, (in a compound word, or with a hyphen to make a compound word), was descriptive and provided no distinctiveness or source of original elements whatsoever to the domain names at issue there: <valiumsale.com> and <valium-sale.com> respectively.
In view of this, the Panel finds that the disputed domain name, registered by the Respondent, is identical or confusingly similar to the IONA trademark, in which the Complainant has clearly demonstrated, to the satisfaction of the Panel, that it has well-established rights through long, exclusive commercial use.
B. Rights or Legitimate Interests
The Panel must make its determination based only upon its own inferences and the Complainant’s allegations, since the Respondent failed to respond to the Complaint. The consensus view of UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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.”
(See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 2.1.)
In the present case the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights.
By declining to submit a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the disputed domain name. The only evidence in this connection is that provided in the Complaint, and that which is self-evident from the website to which the disputed domain name refers.
The Complainant has exclusive rights to the IONA trademark and has not licensed or otherwise permitted the Respondent to use its trademark. Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; it is not making a legitimate noncommercial or fair use of the disputed domain name; nor has the Respondent been authorised or licensed by the Complainant to use the Complainant’s IONA trademark as part of the disputed domain name.
Furthermore, the Panel finds that the Respondent’s adoption of a domain name confusingly similar to the Complainant’s trademark and which was previously used by the Complainant itself, inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website. In other words, the Respondent is, without justification, taking advantage of the good name and reputation of the Complainant and unfairly attempting to link to its own business and activities to the goodwill that the Complainant has established over many years.
In Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990, the panel was of the view that:
“the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, for example from advertised pay-per-click products. Further, it misleads Internet users by diverting traffic intended for the Complainants to websites, which are in no way connected with the word ‘sigikid’, and it creates the impression of association with the Complainants’ group.”
Therefore, the Panel finds for the Complainant on the second element, that the Respondent has neither rights to nor legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of a domain name in bad faith, for example:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name; or
(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 said website location or of a product or service on that website location.
The Panel finds that the IONA trademark is well known in the field of education providers in the United States of America or at least part thereof. Further, the Complainant had previously registered the disputed domain name in its own name and used it itself. The Respondent even appears to be using an older archived version of the Complainant’s website for its own “www.ionaconnections.com” website. Therefore, the Respondent must have known of the Complainant, its products and trademark prior to registering the disputed domain name. The Respondent registered the disputed domain name some 70 years after the Complainant first started using the IONA mark. In view of the above, there is no doubt that the Respondent was aware of the trademark IONA prior to registering the disputed domain name. Indeed, in the Panel’s estimation, there could be no other reason for the Respondent’s registration of the disputed domain name other than to use it to direct Internet traffic to the Respondent’s website.
This finding is consistent with the opinions of previous panels (see F. Hoffmann-La Roche AG v. George Stiegman, WIPO Case No. D2008-1572; and F. Hoffmann-La Roche TMNET, Anton Gorodov, WIPO Case No. D2008-0995), it seems indeed that by using the Complainant’s trademark in the disputed domain name, the Respondent has intentionally created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The deliberate diversion of Internet users constitutes bad faith, by creating confusion that takes advantage of the Complainant’s goodwill. It is well established in prior UDRP decisions that such confusion, and the resultant misdirection of Internet traffic, is independently sufficient to establish bad faith. See e.g. Sony Ericsson Mobile Communications International AB, Telefonaktiebloaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128.
Therefore, in this case, the following circumstances were considered when assessing the existence of bad faith:
-The Complainant’s trademark IONA is a famous mark that has acquired secondary meaning in the field of education in the United States of America.
-The Respondent appears to be trading on the Complainant's goodwill and reputation, which the Complainant has built up over many years. This, without any explanations by the Respondent to the contrary, of which none have been forthcoming, constitutes bad faith. See e.g., eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633.
Furthermore, the failure of the Respondent to file any answer to the present Complaint or otherwise participate in the present proceedings, in the view of the Panel, also suggests bad faith on the part of the Respondent.
For all the reasons, the Panel concludes that the Respondent registered and is using the disputed 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 disputed domain name, <ionaconnections.com>, be transferred to the Complainant.
David Williams QC
Dated: January 29, 2013