WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The University of British Columbia v. Registration Private, Domains By Proxy, LLC / Michael Wasko
Case No. D2018-2642
1. The Parties
The Complainant is The University of British Columbia of Vancouver, Canada, internally represented.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Michael Wasko of Los Angeles, California, United States.
2. The Domain Name and Registrar
The disputed domain name <ubcneurology.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2018. On November 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 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 November 20, 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 November 23, 2018.
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 “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 November 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2018.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 4, 2019. 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 one of the largest universities in Canada, established under statute and originally founded in 1915. Its notable alumni include eight Nobel prize winners, 71 Rhodes scholars and three Canadian Prime Ministers.
The Complainant is the owner of Canadian registered trademark No. TMA715904 registered on June 4, 2008 and United States registered trademark no. 3098134 registered on May 30, 2006, both for the word mark UBC, in several use classes. Among various uses, such marks are deployed by the Complainant in association with providing educational and research services, including in the field of neurology. In addition to its registered marks, the Complainant maintains a website at “www.ubc.ca”, the domain name for which was registered by the Complainant on October 5, 2000. The Complainant has a Division of Neurology which operates a web page at the said domain name under the uniform resource locator “neurology.med.ubc.ca”. The said web page provides details of the clinical, research and educational activities of the Division of Neurology along with the faculty profile of Dr. J[…], a Professor of Neurology and Canada Research Chair in Neuroethics at the Complainant.
Little is known regarding the Respondent other than that it appears to be a natural person based in Los Angeles, California, United States. The disputed domain name was created on April 27, 2017. Screenshots of the website associated with the disputed domain name obtained by the Complainant’s counsel on October 22, 2018 show a title of “UBC Health” and feature various articles attributed to “Dr. J[…]” relating to the use of supplements to improve mental health, methods of penis enlargement, testicular cancer, and osteoporosis as it pertains to men. The Complainant also exhibits a screenshot from the said website featuring the heading “About” which states “Who is Dr. J[…]?” and provides a biography of the Complainant’s Dr. J[…] which makes reference to her work at the Complainant’s university. The Complainant states that the attribution of the Respondent’s articles to Dr. J[…] is false.
The Complainant engaged in pre-Complaint email correspondence with the Respondent. The Complainant’s initial email of August 24, 2018 took the form of a cease and desist notice and requested transfer of the disputed domain name. The Respondent replied on the same day stating that the website would be taken down from the disputed domain name, which would then be pointed to a domain parking page. By email of August 28, 2018, the Complainant repeated its request that the disputed domain name be transferred to it. On the same date, the Respondent replied stating that it was extremely unlikely that an administrative panel would order the transfer of the disputed domain name, but did not provide any specific reasoning for this stance. The Respondent also indicated that it was willing to sell the disputed domain name to the Complainant and invited an offer. On August 30, 2018, the Respondent sent a further email to the Complainant indicating that it was still waiting for an offer from the Complainant. On September 16, 2018, the Respondent emailed the Complainant again seeking an offer for the disputed domain name and indicating that it would be willing to “sell it back” for USD 100,000, otherwise it would sell it to another buyer. On September 25, 2018, the Respondent sent a final email to the Complainant enquiring as to whether it was “still interested” in purchasing the disputed domain name. There is no evidence that the Complainant replied to any of the Respondent’s emails from and after August 28, 2018.
The Complainant provides evidence indicating that, after contact from the Complainant, the Respondent changed the website associated with the disputed domain name to attribute articles previously attributed to the Complainant’s member of staff to “Dr. T[…], MD”, noted on said site as being “Professor of Neurology and Canada Research Chair in Neuroethics at Stanford University”. The Complainant produces an extract of the personnel listing from the website of Stanford University’s Neurology and Neurological Sciences Faculty and notes that this does not list “Dr. T[…], MD” as a member of staff.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant points to its registered trademarks as noted in the factual background section above and asserts that the disputed domain name contains its UBC mark in its entirety coupled with the descriptive word “neurology”. The Complainant suggests that the use of the said descriptive word is intended to suggest a connection to the Complainant’s Division of Neurology and indicates that the content of the associated website supports this notion due to the original presence of articles falsely attributed to a member of the Complainant’s staff working in such Division.
The Complainant asserts that it has never given permission to the Respondent to use its trademarks in the disputed domain name or otherwise, that there is no business relationship or affiliation between the Complainant and the Respondent, that the Respondent does not assert any rights or legitimate interests in the disputed domain name in its correspondence with the Complainant and that the Respondent sells no products and services via the website associated with the disputed domain name. The Complainant argues that the Respondent uses the disputed domain name and associated website to provide credibility to certain health products and devices by falsely attributing approval by the Complainant’s member of staff as further emphasized by the use of her biography. The Complainant indicates that the Respondent’s revised endorsement is of no consequence because “Dr. T[…]” does not appear to exist and Stanford University, which it notes is located in California, is unlikely to offer a “Canada Research Chair” in any subject.
The Complainant narrates the terms of the Parties’ correspondence and indicates that the Respondent’s offer of sale of the disputed domain name to the Complainant for the sum of USD 100,000 constitutes textbook bad faith pursuant to paragraph 4(b)(i) of the Policy. The Complainant adds that the false affiliation of the Respondent’s website with the Complainant via the prior use of the Complainant’s member of staff’s name and biography and the use of the Complainant’s mark in the disputed domain name also constitutes bad faith and demonstrates that the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights and interests. The Complainant argues that the use of its university name, its mark and the use of its member of staff’s name to add credibility to claims of the efficacy of penis enlargement devices and techniques or unverified claims about health benefits of certain supplements tarnishes the reputation of the Complainant.
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 listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The first element of the Policy requires the Complainant to demonstrate rights in a trademark and that the disputed domain name is identical or confusingly similar to such trademark. In the present case, the Complainant relies upon its UBC registered trademark which is identical to the first and most dominant element of the second level of the disputed domain name. The second element of such second level is the dictionary term “neurology” which, in the opinion of the Panel, does not serve to distinguish the disputed domain name from the Complainant’s mark.
It should also not go unremarked that one particular focus of the Respondent’s website content was a member of staff at the Complainant’s university. The Complainant asserts, and the Respondent does not deny, that the various attributions of articles to that person are false. It therefore appears to the Panel, prima facie, that the Respondent was seeking to target the Complainant’s trademark via the disputed domain name (on the fact that this may be relevant to the assessment of confusing similarity, see section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The generic Top-Level Domain (“gTLD”), in this case “.com”, is typically disregarded in the comparison exercise under the first element of the Policy on the grounds that this is wholly generic and required for technical purposes only.
In all of the above circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and thus that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel considers that the Complainant has established the requisite prima facie case by way of its submissions that it has never given permission to the Respondent to use its UBC trademark, that there is no business relationship or affiliation between the Complainant and the Respondent, that the Respondent has not asserted any rights or legitimate interests in the disputed domain name and that the Respondent has falsely attributed approval of certain health products and devices to the Complainant’s member of staff. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of any rights or legitimate interests which it might have in the disputed domain name.
The Respondent has failed to engage with the administrative proceeding and has not therefore provided any material from which its rights or legitimate interests, if any, might have been identified. There is no evidence in the present record which would indicate that the Respondent has any rights or legitimate interests in the disputed domain name. In particular, there is nothing before the Panel which suggests that the Respondent is entitled to associate its website with a domain name featuring the Complainant’s trademark or to attribute articles or biographical materials thereon to the Complainant’s member of staff. That the Respondent has done so leads to the reasonable inference that the Respondent has sought to benefit from confusion between the disputed domain name and the Complainant’s trademark and likewise from false attributions on the associated website. This cannot confer rights or legitimate interests upon it.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(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 web site or other online 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.”
In the present case, the evidence on the record strongly indicates that the disputed domain name was registered with knowledge of the Complainant’s rights and intent to target these. The Panel notes the use of the Complainant’s mark as the most prominent part of the disputed domain name. The Panel also notes the fact that this has been coupled with the dictionary word “neurology”, which enhances the likelihood of confusion with the Complainant’s trademark, because the Complainant maintains a Division of Neurology and operates a web page therefor under the uniform resource locator “neurology.med.ubc.ca”. More significantly, when first identified by the Complainant, the corresponding website contained what the Complainant asserts, and the Respondent does not deny, are false attributions to and a biography of a member of the Complainant’s staff who works in such division. These matters together point strongly in the direction of an intent to register and use the disputed domain name to target the Complainant’s rights in its UBC trademark and thus to registration and use in bad faith.
When the Complainant approached the Respondent to request a transfer of the disputed domain name, the Respondent replied with an offer to sell it for a significant amount of money and then repeatedly followed up on this despite the fact that the nature of the Complainant’s correspondence made it clear that the Complainant had no interest in purchasing the disputed domain name, nor did it approach the Respondent with, or discuss, any such proposals. In the Panel’s opinion, this further points in the direction of registration and use in bad faith, consistent with paragraph 4(b)(i) of the Policy.
The fact that, after receiving correspondence from the Complainant, the Respondent changed the content on its website to attribute it to another person, who may or may not exist, is of no consequence. The disputed domain name continues to use the Complainant’s trademark in a way which is likely to confuse Internet users, to whom the phrase “UBC neurology” would more probably than not indicate the division of the Complainant’s university and not the Respondent, its domain name or its website. Furthermore, some aspects of the content on the website associated with the disputed domain name are of a nature that previous panels have considered to be harmful to the business of a complainant and to indicate an intent to tarnish the complainant’s trademark, thus leading to a finding of registration and use in bad faith on that basis (see, for example, Turgut Can Elgiz v. Elif Öner, WIPO Case No. D2012-1299 and Accor v. See PrivacyGuardian.org Domain Administrator / Jimmy M. Nunez, WIPO Case No. D2017-2517. The Panel makes a similar finding in the present case.
In all of the above circumstances, the Panel finds that the disputed domain name was registered and has been used in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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, <ubcneurology.com>, be transferred to the Complainant.
Andrew D. S. Lothian
Date: January 18, 2019