WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
British Columbia Institute of Technology v. Whois Agent, Domain Protection Services, Inc. / Domain Vault, Domain Vault LLC
Case No. D2018-2336
1. The Parties
The Complainant is British Columbia Institute of Technology of Burnaby, Canada, represented by DLA Piper (Canada) LLP, Canada.
The Respondent is Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States of America (“Unites States”) / Domain Vault, Domain Vault LLC of Dallas, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <bcit.com> (the “Disputed Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2018. On October 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 15, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 19, 2018, 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 October 20, 2018.
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 October 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2018.
The Center appointed John Swinson as the sole panelist in this matter on November 26, 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 is British Columbia Institute of Technology, a polytechnic educational institution in British Columbia, Canada. According to the Complaint, the Complainant was established in 1964, and has been providing post-secondary educational services under the BCIT trade mark for more than 50 years. The Complainant is one of the largest post-secondary educational institutions in British Columbia. The Complainant has five campuses and more than 50,000 enrolled students from over 100 countries, including the United States of America (“United States”).
The Complainant owns a number of registered trade marks for BCIT (both word marks and stylized), the earliest of which is Canadian official mark number 909,271, registered March 12, 1997, also including Canadian trade mark number TMA540,077, registered January 23, 2001, and claiming a first use in Canada since 1964 (the “Trade Mark”).
The Respondent is Domain Vault, Domain Vault, LLC. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on November 27, 2002. The website at the Disputed Domain Name features pay-per-click (“PPC”) links relating to educational courses and trade schools.
5. Parties’ Contentions
The Complainant makes the following submissions:
Identical or Confusingly Similar
The Complainant owns registered trade marks and official marks for BCIT. The Disputed Domain Name is identical to the Trade Mark.
Rights or Legitimate Interests
The Respondent cannot demonstrate any rights or legitimate interests in the Disputed Domain Name for the following reasons:
- The Trade Mark is not a generic term or dictionary word.
- The Respondent is not commonly known by “BCIT”. The Respondent’s name has no correlation to the Disputed Domain Name. The Disputed Domain Name resolves to a PPC link website which contains links to educational institutions. These educational institutions directly compete with the Complainant.
- The Respondent has not made preparations to use, and is not using, the Disputed Domain Name in connection with any good faith offering of goods or services.
- The Respondent is not making a legitimate noncommercial use of the Disputed Domain Name. Instead, the Respondent is making a commercial use of the Disputed Domain Name by hosting a website with PPC links to the Complainant’s competitors, and deriving a financial benefit from the web traffic that is diverted to the associated sites. This is not is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the Disputed Domain Name.
- There is no relationship between the Complainant and the Respondent that would establish any licence or permission by which the Respondent could own or use any domain name incorporating the Trade Mark.
Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name almost 40 years after the Complainant began providing educational services using the Trade Mark. As a result of this extensive use, the Trade Mark was well known in Canada and the United States prior to the Respondent’s registration of the Disputed Domain Name. It is likely the Respondent was aware of the Trade Mark at the time the Disputed Domain Name was registered, given the PPC links on the website at the Disputed Domain Name relate to the Complainant’s competitors. Furthermore, the Respondent has engaged in a bad faith pattern of abusive registrations.
The Respondent is using the Disputed Domain Name in bad faith. The Respondent is attempting to derive an economic benefit from the Disputed Domain Name as it is being used to host PPC links to competing educational institutions. The Respondent is attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s sites, business or services. The Respondent is also attempting to disrupt the Complainant’s business and redirect its potential students to competitors’ websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements remains on the Complainant even though Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Disputed Domain Name is identical to the Trade Mark. The Trade Mark is incorporated into the Disputed Domain Name in its entirety and no additional terms have been added.
The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name displays PPC links to educational courses and institutions, some of which may compete with the Complainant. In the circumstances, such use is not bona fide.
- The Complainant has not licensed or otherwise authorized the Respondent to use the Disputed Domain Name.
- The Respondent is a privacy service. There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has any registered or common law rights in the Disputed Domain Name.
- As submitted by the Complainant, it is likely that the Respondent is profiting from the PPC advertising on the website at the Disputed Domain Name. In the absence of any evidence from the Respondent to the contrary, the Panel is of the view that this does not amount to a bona fide use for the purposes of the Policy.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has been operating for over 50 years. It is clearly a well-known, respected and established educational institution. The Respondent registered the Disputed Domain Name over 40 years after the Complainant began operating under the Trade Mark.
Given the content of the website at the Disputed Domain Name, it is clear that the Respondent registered the Disputed Domain Name with the Complainant in mind. The website displays PPC links to the Complainant’s competitors. The Disputed Domain Name is not descriptive of the services advertised via the PPC links. There is no other obvious reason for the Respondent to register this particular Disputed Domain Name other than for the purpose of attempting to trade off the Complainant’s goodwill in the Trade Mark.
The Panel considers that, in the circumstances of this case, the most likely source of traffic that the Disputed Domain Name would generate is from Internet users who type the Disputed Domain Name into their Internet browser, who would likely be expecting to find the Complainant’s website. As such, the Panel considers that the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, affiliation or endorsement of the website. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy.
In some circumstances, where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the Respondent sought to make use of the reputation of the Complainant and registered the Disputed Domain Name in bad faith.
The Respondent’s use of a privacy service, in these circumstances, reinforces the Respondent’s bad faith registration and use.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.
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 <bcit.com> be transferred to the Complainant.
Date: December 10, 2018