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ADMINISTRATIVE PANEL DECISION
The Board of Governors of the University of Alberta v. Michael Katz d.b.a. Domain Names for Sale
Case No. D2000-0378
1. The Parties
Complainant: The Board of Governors of the University of Alberta of 610, Students’ Union Building, Edmonton, Alberta, Canada. Represented by Field Atkinson Perraton of 2000, 10235 101 Street, Edmonton, Alberta, Canada T5J 3G1.
Respondent: Michael Katz d.b.a. Domain Names for Sale, 844 King Street West, Toronto, Ontario, Canada MV5 1P1
2. The Domain Name(s) and Registrar(s)
Registrar: Network Solutions Inc
3. Procedural History
The Complaint was filed on May 3, 2000. WIPO has verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with paragraph 2 (a) of the Rules. However, a Response was not filed by the due date. A late Response was filed on June 5, 2000, the same date as Notification of Respondent Default. E-mails were sent by the Complainant and Respondent to WIPO on June 6, 2000. A supplemental Submission was filed by the Complainant on June 9, 2000.
The administrative panel was properly constituted on June 13, 2000. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The date scheduled for the issuance of the Panel’s decision is June 26, 2000.
As a preliminary issue the panelist must determine whether or not the late Response should be considered. The Complainant protested at the submission of the late Response by the Respondent. However, after consideration of Talk City Inc, v. Robertson ICANN Case No. D2000-0009, the panelist has considered the contents of the late Response on the grounds that it was only one day late and was received before the panelist was appointed and before any substantive review was begun.
As a further preliminary issue the Panelist must decide whether or not to accept the addendum to the Complaint filed June 9, 2000, after receipt of the late Response. The addendum to the Complaint seeks to add the names albertauniversity.com and uofalberta.com to the Proceedings on the basis that they were registered after the Complaint was filed. The Respondent asserts and the panelist has independently verified that albertauniversity.com was, in fact, registered on January 14, 2000, before the original Complaint was filed. Further, the panelist is of the view that the additional names cannot be added into the proceedings as the Respondent has not been given a fair opportunity to put its case with regard to these names, the addendum being filed after the formal Response. In any event, the panelist has regard to the previous decision Easyjet Airline Co. Limited v. Steggles ICANN Case No. D2000-0024 and Paragraph 12 of the Rules which hold that additional submissions are only allowable at the Panel’s request in its sole discretion. The addendum to the Complaint was not requested by the panelist and will not be admitted.
4. Factual Background
The Complainant is the governing body of the post-secondary institution the University of Alberta, a university founded and operated continuously under that name in Edmonton, Alberta since 1908.
The Complainant is also the owner of UALBERTA, a registered trade mark in Canada and an application in the United States for, inter alia, educational and research services.
The Complainant is the registered proprietor of the following domain names:
The Respondent is not associated with the Complainant’s institution, has not sought the consent of the Complainant for Registration of the Domain Names and does not operate a university in Alberta. The Respondent’s trading name is "Domain Names for Sale".
The Respondent attached to the UNIVERSITYOFALBERTA.COM name a page indicating this name was for sale. The site also linked to a "domain names for sale" service.
Both Domain Names were linked to a site owned by the Respondent UC411.com which promotes information, goods and services directed towards post secondary students.
On March 29, 2000, a representative of the Complainant sent an e-mail to the Respondent inquiring about obtaining the UNIVERSITYOFALBERTA.COM name. The Respondent’s Reply said "just following up re your request for universityofalberta.com. Thanks Michael Katz."
5. Parties’ Contentions
The Complainant submits that the Domain Names are identical or confusingly similar to its trade marks, that the Respondent has no rights or legitimate interest in respect of the Domain Names and finally that the Domain Names have been registered and used in bad faith.
The Complainant asserts that because no party other than the Complainant can have a legitimate right to use the Domain Names under Section 54(2) of the Universities Act of Alberta, RSA 1980 and Section 9 (1) (n) (ii) of the Trade Marks Act of Canada, RSC 1985, the marks cannot be used by any other party than the Complainant. Accordingly, the only purpose the Respondent could have by registering them would be to sell them to the Complainant. Indeed, the Respondent is in the domain name speculation business.
Further, the Complainant argues that the overlap between the goods and services of the Complainant and Respondent increases any likelihood of confusion in the minds of the public due to use of the Domain Names and demonstrates that the Respondent has intentionally used the marks of the Complainant to attract Internet users to the Respondent’s web site and to create a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site and the commercial activities carried on therein. The Complainant says that the Respondent’s activities are commercial and therefore cannot be fair use.
The Complainant says that the lack of a stated price for the domain in the e-mail reply from the Respondent to the Complainant and the attempt to maintain the anonymity of the registrant of the Domain Names is surreptitious.
The Respondent admits it is possible that the Domain Names are identical or confusingly similar to the Complainant’s trademarks. He does, however, assert that he makes it clear that his site is not affiliated with any school or institution.
The Respondent states that it did not register the Domain Names in an effort to sell them to the Complainant nor did he register them to sell merchandise bearing the Complainant’s logos. The Respondent says that he registered the names to use them in relation to his web site UC411.com "The Ultimate University and College Info-Site" which contains information related to the Schools and Colleges of Canada for students and their parents. He says the site will offer a place for students to chat and to find the various sites of educational establishments. He says that he is offering a very valuable service to the education seeking population.
The Respondent says that the fact that he sells domain names is irrelevant to this case. He says the strange nature of his e-mail Reply to the Complainant is explained by the fact that he had obviously confused two e-mails and that this was an error.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
(i) The 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 domain name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
The Domain Names are confusingly similar to the Complainant’s trademarks. The Respondent concedes in his Response that it is possible that confusion could be caused between them.
B. Rights or legitimate interest of the Respondent
The panel finds that since the Domain Names could not be used by anyone except for the Complainant under Canadian law, the Respondent cannot have any rights or legitimate interests in the Domain Names.
C. Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith as follows:
(i) the Respondent has registered or has 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 trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct: or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its web site or location or of a product or service on its web site or location.
The Respondent is clearly in the business of domain name speculation. The registered proprietor of both Domain Names is recorded as "Domain Names for Sale". This is sufficient without considering the use of the sites to convince the panelist that the Respondent registered the Domain Names primarily for the purpose of selling the names for a profit and in bad faith.
The Respondent was obviously aware of the existence of the Complainant and must have known that registration of the Domain Names would prevent them from similarly reflecting their name and disrupt their business. His registration of more than one University of Alberta related domain name and his business of domain name speculation suggests a pattern of conduct.
The Respondent must have known that his site would attract people looking for the official site of the Complainant and admits that the Domain Names may be confusingly similar. Disclaimers, especially disclaimers in small type are not always effective to dispel confusion and the disclaimer from the Respondent’s site reproduced in the Appendix to the Response is small and appears at the end of a long list of information.
Accordingly, having considered the Complaint and Response the panelist is of the view that the Respondent has registered and used the Domain Names in bad faith.
This decision will not prevent the Respondent from carrying on his business under his main domain name UC411.com.
In the light of the foregoing the panelist decides that the Domain Names are confusingly similar to the Complainant’s trade marks and the Respondent has no rights or legitimate interests relating to the Domain Names which were registered and used in bad faith.
Accordingly, in the light of the above, the panelist requires that the registration of the Domain Names UNIVERSITYOFALBERTA.COM and ALBERTAU.COM BE TRANSFERRED to the Complainant.
Dated: June 22, 2000