WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karolinska Institutet v. Michael Ghali
Case No. D2020-2609
1. The Parties
The Complainant is Karolinska Institutet, Sweden, represented by SILKA AB, Sweden.
The Respondent is Michael Ghali, United States of America.
2. The Domain Name and Registrar
The disputed domain name <karolinskainstitute.org> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2020, 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 8, 2020, 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 amendment to the Complaint on October 8, 2020.
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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on October 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2020.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on November 6, 2020. 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, Karolinska Institutet, was founded by King Karl XIII of Sweden in 1810 and is today Sweden’s single largest center of medical academic research. As a university, it offers the country’s widest range of medical courses and programs with approximately 6,000 full time students who are taking educational and single subject courses at Bachelor and Master levels.
The Complainant is the owner of trademark registrations for KAROLINSKA INSTITUTET in several jurisdictions, including the following:
European Union Trademark (“EUTM”) Registration No. 004884185, KAROLINSKA INSTITUTET, registered on April 24, 2007, and International Trademark Registration No. 895242, KAROLINSKA INSTITUTET, registered on July 24, 2006.
The disputed domain name <karolinskainstitute.org> was registered on May 15, 2020, and at the time of writing this decision it does not relate to any website. Searches in Google under the disputed domain name lead to the Complainant’s website.
The Respondent was involved in a previous domain name dispute concerning the almost identical domain name, <karolinskainstitutet.org>, in which the UDRP panel ordered the transfer of the disputed domain name to the Complainant (see Karolinska Institutet v. Michael Ghali, WIPO Case No. D2020-1183).
5. Parties’ Contentions
The Complainant claims that KAROLINSKA INSTITUTET is a well-known trademark amongst medical universities. The disputed domain name is identical and confusingly similar with the trademark KAROLINSKA INSTITUTET in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
The disputed domain name previously connected to the website <www.mgzakighali.co>. The content on the website was removed after the Complainant contacted the hosting provider. The website contained information about a neurosurgeon called Michael G Z Ghali who falsely claimed to be affiliated to the Complainant.
The Respondent is not known by the disputed domain name and there is no evidence that the Respondent holds any trademark rights, whether registered or not, in the disputed domain name.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved that it has rights in the trademark KAROLINSKA INSTITUTET.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel considers that the disputed domain name is confusingly similar with the Complainant’s trademark KAROLINSKA INSTITUTET.
The disputed domain name contains the Complainant’s trademark in its entirety with only difference of the deletion of the last letter “t” in the disputed domain name to have the English version of Karlolinska Institutet. As set forth in section 1.7 of WIPO Overview 3.0: “[…] in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark […]”. See also, e.g., Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903, where the UDRP panel stated “[…] the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy […].”
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement (section 1.11 of WIPO Overview 3.0). Thus, for the test for confusing similarity the
Panel shall disregard the “.org” gTLD included in the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar with the trademark KAROLINSKA INSTITUTET in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to or legitimate interests in a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
- before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
- the respondent (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has proved that it is the owner of the KAROLINSKA INSTITUTET mark. There is no indication that it has licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it permitted the Respondent to apply for or use any domain name incorporating its mark.
As sustained by the Complainant, there is no evidence in the present case that the Respondent is commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein. The name of the Respondent does not resemble the disputed domain name in any manner.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other element to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name.
As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry […] Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation”. In this respect, the Panel notes that the disputed domain name is almost identical to the Complainant’s trademark.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark KAROLINSKA INSTITUTET mentioned in Section 4 above (Factual Background) when it registered the disputed domain name on May 15, 2020.
The disputed domain name was registered many years after the Complainant had registered and used its trademark KAROLINSKA INSTITUTET. The Complainant’s earliest KAROLINSKA INSTITUTET trademark registration predates the disputed domain name by almost 14 years.
This is not the first time in which the Respondent has targeted the Complainant and its KAROLINSKA INSTITUTET trademark. As mentioned above, the Respondent has been involved in a previous UDRP dispute concerning the domain name <karolinskainstitutet> and continues to target the Complainant’s mark, which is well known amongst medical universities (see Karolinska Institutet v. Michael Ghali, supra).
The fact that prior to the Complainant contacting the hosting provider, the site to which the disputed domain name connected contained information about a neurosurgeon called Michael G Z Ghali who falsely claimed to be affiliated to the Complainant constitutes further evidence of bad faith on the part of the Respondent.
The Panel finds that the Respondent has registered and used the disputed domain name intentionally to attempt to attract - for the purposes of the Respondent’s own professional self-promotion (see Karolinska Institutet v. Michael Ghali, supra) and commercial gain - Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) of the Policy. The fact that disputed domain name does not currently resolve to any website does not prevent a finding of bad faith.
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 <karolinskainstitute.org> be transferred to the Complainant.
Miguel B. O'Farrell
Date: November 19, 2020