WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
University of Stellenbosch / Stellenbosch University v. Privacydotlink Customer 336335 / Privacy Protection
Case No. D2015-2086
1. The Parties
The Complainant is University of Stellenbosch / Stellenbosch University of Stellenbosch, South Africa, represented by Floor Swart Incorporated, South Africa.
The Respondent is Privacydotlink Customer 336335 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Privacy Protection of Belize City, Belize.
2. The Domain Name and Registrar
The disputed domain name <universityofstellenbosch.com> (the "Domain Name") is registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November17,2015. On November 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 18, 2015 and November 20, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 27, 2015.
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"SupplementalRules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 21, 2015.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 5, 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
The Complainant is a South African public university with some 29,000 students (including about 3,000 foreign students) and an international reputation for research, particularly in engineering, science, and medicine. It has operated under the current name and its Afrikaans translation (Universiteit Stellenbosch or Universiteit van Stellenbosch) since 1918. The Complainant owns several domain names, including <stellenboschuniversity.com>, but operates its principal website at "www.sun.ac.za". The website is presented in both Afrikaans and English, and both languages are used in instruction and research at the university. The Complaint claims common law protection for the unregistered marks STELLENBOSCH UNIVERSITY and UNIVERSITY OF STELLENBOSCH.
The Domain Name was created on January 27, 2005 and was registered in the name of a domain privacy service in the Cayman Islands. The Complainant sent a cease-and-desist letter to the privacy service, which subsequently disclosed the registrant's supposed identity. This is clearly a fabrication. The registrant is named as "Privacy Protection", with no organization name, a patently fictitious postal address ("#1 Map Street" in Belize City, postal code "0000"), and a telephone number with the international prefix for Hong Kong, China, not Belize. In this Decision, therefore, "Respondent" refers to the unknown beneficial owner of the Domain Name registration, which has taken pains to conceal its identity.
It appears that the Respondent has employed the "robots.txt" program to prevent archiving of any associated website by the Internet Archive's Wayback Machine. Screen shots attached to the Complaint, however, show that the Domain Name formerly resolved to a pay-per-click ("PPC") advertising landing page, with links to commercial websites. At least one of the links displayed the Complainant's trademark but resolved to an unrelated commercial site. At the time of this Decision, the Domain Name resolves only to an alert concerning "potential malware activity".
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its common law STELLENBOSCH UNIVERSITY and UNIVERSITY OF STELLENBOSCH marks, and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant infers that the Respondent registered and used the Domain Name in bad faith, to disrupt the Complainant's business and profit from misleading Internet users for commercial gain.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
The Complaint claims common law protection for the unregistered marks STELLENBOSCH UNIVERSITY and UNIVERSITY OF STELLENBOSCH. The record includes little evidence of advertising or marketing under the latter name, but it does present substantial evidence that the Complainant has advertised its educational services in recent years using the names Stellenbosch University and Universiteit Stellenbosch, typically appearing in a form that includes both the Afrikaans and English versions with a graphic logo. These marks appear in print media, on the Complainant's website, and in its social media pages. It is sufficient for purposes of the current proceeding that the Complainant has common law rights in the unregistered marks for STELLENBOSCH UNIVERSITY.
The Policy does not require a registered trademark, and the Panel finds that the Complainant has established the likelihood of common law protection (which is recognized under South African law) or "trademark-like protection" under relevant legal doctrines such as passing-off. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7.
The first element of a UDRP complaint "serves essentially as a standing requirement" and entails "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name" (WIPO Overview 2.0, paragraph 1.2). Applying this test, the Panel finds that the Domain Name is confusingly similar to the Complainant's unregistered STELLENBOSCH UNIVERSITY mark, merely inverting the order of the two words and inserting the preposition "of".
The Panel concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, 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; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Complainant has established common law rights to the mark STELLENBOSCH UNIVERSITY and denied any relationship with the Respondent. The PPC landing page formerly associated with the Domain Name does not reflect any legitimate commercial or noncommercial interest in a corresponding name, and the Respondent has not come forward to assert such an interest.
The Panel concludes that the second element of the Complainant has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following:
"(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
The Complainant contends that there is no conceivable legitimate use of its marks, without the Complainant's permission, and concludes that the Respondent registered and uses the Domain Name in bad faith, to disrupt the Complainant's business and profit from misleading Internet users for commercial gain. The Panel cannot agree with the proposition that a legitimate use cannot be imagined: the Domain Name might conceivably have been used by an alumni association, for example, or for a website with commentary about the Complainant. (There is no evidence that the Respondent prepared to use the Domain Name for any such arguably legitimate purposes.) There is also nothing in the record that suggests that the Respondent is a "competitor" in the Complainant's business. However, the Panel finds that the Domain Name was most likely registered and used for commercial gain, in the sense contemplated by the Policy, paragraph 4(b)(iv), by creating a likelihood of confusion with the Complainant's STELLENBOSCH UNIVERSITY mark.
The Domain Name was clearly used for commercial gain, as the landing page formerly associated with the Domain Name displayed commercial advertising links. Whether and how the Respondent shared in that gain is immaterial, as the Respondent is ultimately responsible for how the Domain Name is used. The Domain Name is not generic, and so it is unlikely to attract Internet users other than those interested in the Complainant. The Complainant's mark is distinctive, based on the name of a South African city in which there is no other university. The record indicates that the mark is also well-known outside South Africa, in educational and research circles. The Complainant is ranked among the top universities on the continent and globally; it attracts many foreign students and researchers; and it is known internationally for research in several fields of technology. Thus, there is no likely explanation for the Domain Name other than as a deliberate reference to the Complainant's mark, exploiting the Complainant's reputation to generate advertising revenues. There is no indication on this record that the Respondent had any plans for a conceivably legitimate use of the Domain Name.
Further, the Respondent hid its real identity at two layers: registration through a domain privacy service, with false information underlying that registration. The Respondent also obscured the history of its use of the Domain Name by employing the robots.txt program, in a manner consistent with its other efforts to avoid accountability (see WIPO Overview 2.0, paragraph 3.10). The Respondent failed to reply to the Complainant's cease-and-desist letter or to this Complaint. The totality of these circumstances suggests a disregard for the trademark rights of others, as well as awareness that the Respondent has no legitimate claim to the Domain Name. The Panel finds that these actions support the inference of bad faith in the registration and use of the Domain Name.
The Panel concludes that the Complainant has established the probability that the Domain Name was registered and used in bad faith within the meaning of the Policy, paragraph 4(b).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and15of the Rules, the Panel orders that the Domain Name <universityofstellenbosch.com> be transferred to the Complainant.
W. Scott Blackmer
Date: January 22, 2016