WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Chancellor, Masters and Scholars of the University of Cambridge v. Sunny Legend
Case No. D2018-1542
1. The Parties
The Complainant is The Chancellor, Masters and Scholars of the University of Cambridge, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Sunny Legend of Brooklyn, New York, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <carnbridge.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). The registration has been made on February 20, 2018.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2018. On July 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2018, 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.
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 the Respondent of the Complaint, and the proceedings commenced on July 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2018.
The Center appointed François Dessemontet as the sole panelist in this matter on August 24, 2018. 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 University of Cambridge is a common law entity existing since the 13th century and active in university education and in scientific research, as well as in the teaching of the English language and of the assessment of education. The University of Cambridge owns numerous trade marks throughout the world to identity activities such as publishing, assessment of education and distance learning. It also uses the domain name <cambridge.org> for the same purposes. That domain name is part of the electronic mail addresses of many of the University’s employees in the field of publishing.
Examples of the Complainant’s trade marks are as follows:
United States of America trademark registration no. 1365532 for CAMBRIDGE, registered on October 15, 1985; European trademark registration no. 000088179 for CAMBRIDGE, registered on July 4, 2002.
The disputed domain name was registered on February 20, 2018. According to the Complaint and relevant evidence, the disputed domain name doesn’t resolve to any active website, and it was used for a fraudulent email scheme for financial gain.
5. Parties’ Contentions
The Complainant alleges that it owns extensive rights in the trade mark CAMBRIDGE and in various other trade marks incorporating the word CAMBRIDGE all around the world.
Further the Complainant has a significant reputation and has built up a vast amount of goodwill in the CAMBRIDGE trade mark in the United Kingdom and abroad. The University of Cambridge regularly ranks as the best university in Europe and one of the five best in the world. The University has long-standing links to the Royal Family of England. Further, University Press would be the world’s oldest publisher and a well-known name in publishing. Altogether, the University enjoys a budget of approximately GBP 1,700 million annually, a good part of its resources coming from publishing and distance learning activities or electronic products sales.
The Complainant also has an extensive licensing programme marketing CAMBRIDGE merchandise worldwide, including clothing, stationery, gifts, and homeware.
Therefore, the Complainant considers that it has rights in the mark CAMBRIDGE under paragraph 3(b)(viii) of the Rules.
Moreover, the Complainant’s has used the domain <cambridge.org> for the main website and for the email addresses of Cambridge University Press since 2000. Thus, the Complainant alleges that the use of the disputed domain.name is highly likely to cause confusion to the Internet users and the Complainant’s customers.
In addition, the Complainant argues without further comments that under the Rule 3 (b)(ix)(1) the domain name in question is confusingly similar to the Complainant’s trade mark.
The Complainant notes that the Respondent has no rights or any legitimate interest in the disputed domain name <carnbridge.org>. The Respondent is not using the disputed domain name in connection with a legitimate offering of goods or services. Further, the Respondent has not sought the Complainant’s agreement to use the CAMBRIDGE trade mark.
Finally, the Complainant alleges that the disputed domain name was registered and has been used in bad faith under paragraph 3(b)(ix)(3) of the Rules. Cambridge is a denomination of the Complainant which is known since hundreds of years. It is highly likely that the Respondent could not ignore the rights of the Complainant at the time of the registration of the disputed domain name. This domain name was registered with the purpose of disrupting the business of the Complainant, and has been registered in an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s own trade marks and webpage. According to the Complainant, the registration of <carnbridge.org> is a case of “typosquatting”, through a misspelling of the original CAMBRIDGE trade mark, with the replacement of the two letters “r” and “n” coming instead of “m”. Internet users may mistakenly arrive at the Respondent’s disputed domain name or fail to notice that that is not the true and original webpage of Cambridge University.
The Complaint also alleges, and adduces evidence to the effect that, the Respondent has attempted to exploit the disputed domain name misusing a misleading address looking like that of an employee of the Complainant. Cambridge University Press uses the domain <cambridge.org> for its employees’ official email addresses. Therefore, customers and other parties who deal with Cambridge University Press by email are used to seeing email addresses which end in “@cambridge.org” when dealing with Cambridge University Press.
On February 28, 2018, Mr. Guy Wheeler, Senior Counsel at Cambridge University Press, was forwarded an email thread which resulted from purportedly Cambridge University Press acting through Mr. Whitehouse, one of its senior officials. Mr. Whitehouse is deputy CFO and Director of Finance at Cambridge University Press. His official email address is […]@cambridge.org. Mr. Whitehouse appeared in those mails as asking a customer, the Turkish firm Dunya, a long-standing and important customer of Cambridge University Press, for payment of GBP 500,000. The email address from which the requests originated is […]@carnbridge.org, where the last part of the address is made up of the disputed domain name.
The first requests thus seemingly emanating from Cambridge University Press were made on February 21, 2018, that is the day after the registration of the disputed domain name on February 20, 2018. The requests indicated, in lieu of the usual bank address of Cambridge University Press, a bank account in Bratislava to which GBP 500,000 should be paid by Dunya. This bank account in Bratislava is not connected in any way with Cambridge University Press.
For a rather long time no one observed the difference between the addresses […]@cambridge.org and […]@carnbridge.org. In fact, their only difference, the substitution of “rm” for “m”, is barely legible with most fonts. Thus, the customer Denya genuinely believed that the requests for payment emanated from Mr. Whitehouse. The customer believed that those emails were from Cambridge University Press Director of Finance and was deceived as to the origin of the emails. It was only when another employee of Cambridge University Press was copied in, using his official Cambridge University Press address, that anyone noticed that the email address being used was not the official Cambridge University Press address of Mr. Whitehouse. Eventually, the fraudulent operation involving the embezzlement of half a million Pounds was not carried out.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The present case is typical from the so-called “typosquatting”. Over seventeen hundred WIPO Domain Name Dispute cases mention that concept, which has been widely recognized from the very inception of domain name piracy and of the legal or administrative measures fighting cybersquatting. It consists in selecting for a domain name a succession of letters that approximate a trade mark and/or a second-level domain name already registered. Were it an identical domain name in all its elements, the second registration could not happen. So, by necessity, there is always a slight difference between the first domain name registered as well as the corresponding trade mark and the almost identical domain name which has been registered later.
In typosquatting cases as in other categories of violation of trade marks or distinctive signs cases, the methodology to find whether it is confusing, thus reprehensible to register a domain name approximately identical to a trade mark or other domain name is as follows:
(a) comparative grammatical analysis of the two distinctive signs at issue;
(b) visual comparison between the two distinctive signs;
(c) phonetic comparison on the succession of vowels and consonants;
(d) semantic comparison between the marks and disputed domain names.
Under these tests, the confusing character of the second registered domain name <carnbridge.org> is obvious. The grammatical analysis shows an identical number of syllables, with an identical succession of vowels. Only two consonants are different. However, these two consonants fail to pass the test of a sufficient difference with the trade marks of the Complainant and its first registered domain name <cambridge.org>, as the visual impression of the mark and the two domain names is quasi identical. The difference between “m” in Cambridge and “rn” in carnbridge is negligible, and not likely to be perceived by the usual reader on Internet using usual fonts such as Arial.
Finally, the semantic comparison is helpless, since the meaning of CAMBRIDGE is self-contained as a certain reference to the University of Cambridge, and there is no immediate meaning for “carnbridge”; a short survey of Internet gives as most approximate semantic reference a location in Ireland, that is spelled rather differently (“Carn Bridge”). Therefore, no strong semantic difference might avoid the confusing similarity between domain name of the Complainant as well as its trade mark and the disputed domain name.
There is no need to speculate about the intention of the person or entity behind the registration of the disputed domain name, since the succession of events mentioned at the end of section 5 above sufficiently evidences the fraudulent transaction that were made possible by the registration of the disputed domain name (more as to this under section C below).
B. Rights or Legitimate Interests
The Respondent did not invoke any rights or legitimate interest in the disputed domain name. The Panel does not have any information showing that the Respondent would be known by the name Cambridge or Carnbridge. There seems to be no other purpose in adopting <carnbridge.org> than the intention to resemble the Complainant’s mark CAMBRIDGE and the derivative domain names and Internet addresses.
Further the Complainant alleges that it has not authorised the Respondent to use its CAMBRIDGE trade mark.
The Panel concludes that the Respondent has therefore no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant rightly points out that the name and mark CAMBRIDGE is known since hundreds of years, and the registrations of the trade mark well predate that of the dispute domain name. Therefore this name and trade mark could not be ignored by the Respondent when the Respondent registered its domain name <carnbridge.org>. It is likely that the domain name was registered primarily for the purpose of approximating the trade mark and domain name of the Complainant. The intention was not only to divert customers from the University of Cambridge in its different sectors, such as the Cambridge University Press, but also with the purpose of embezzling money through sending fraudulent emails purporting to originate with the Cambridge University Press. The detailed facts are exposed above at the end of section 5.
The present case is highly similar to the situation in Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213 (<arlafoods>). In this preceding case too, the disputed domain name was used to send the very day following the registration several emails impersonating an employee of the Complainant to one of the Compainant’s customers in furtherance of a fraudulent scheme.
In the present case as well, the weight of evidence is to the effect that the Respondent’s primary motive in registering the disputed domain name has been to capitalize on and take advantage of the reputation of the Complainant and of the good will attaching to its trade mark, by creating a likelihood of confusion with the Complainant’s trade mark, with the intent to unlawfully profit therefrom.
Only a bad faith registration can explain the sequence of events in the present case. Therefore, the requirement of bad faith under paragraph 4(a)(iii) of the Policy is fulfilled.
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 <carnbridge.org> be transferred to the Complainant.
Date: September 7, 2018