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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Imperial College of Science, Technology and Medicine v. Zahid Khan (for Imperial College Management School Alumni Association - ICMSAA)
Case No. D2000-1079
1. The Parties
The Complainant is Imperial College of Science, Technology and Medicine, represented by Dechert of 2, Serjeants' Inn, London EC4Y 1LT, United Kingdom.
The Respondent is Zahid Khan, who is President of, and who registered the name on behalf of, the Imperial College Management School Alumni Association (ICMSAA).
2. The Domain Name and Registrar
The domain name at issue is "imperialcollege.com".
The Registrar is Network Solutions, Inc.
3. Procedural History
The Complaint was received by email on August 16, 2000, and in hard copy on August 22, 2000, by the WIPO Arbitration and Mediation Center [the Center]. In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules] as approved by ICANN on October 24, 1999, and the Center's own Supplemental Rules in effect as of December 1, 1999 [the Supplemental Rules], the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by ICANN on October 24, 1999 [the Policy], the Rules and the Supplemental Rules. The Complaint was submitted in English and, both parties being located in England, the proceedings have been conducted in English.
The Center transmitted the requisite Registrar Verification request to Network Solutions, Inc. on August 28, 2000, and received a response on August 31, 2000, by email from Network Solutions, Inc., confirming that the Respondent, Zahid Khan, is the current registrant of the domain name "imperialcollege.com". Owing to some confusion over the increase in the fee levied by the Center, the specified fee was not paid to the Center in full until October, 2000. Proceedings in this case were then formally commenced on October 3, 2000, when the Center sent a copy of the Complaint to the Respondent at the email address email@example.com recorded as the Respondent's email address in the Administrative Contact details for the domain name at issue. A hard copy of the Complaint was also sent by courier to the Respondent's postal address. The notification to the Respondent advised that a Response would need to be submitted to the Center no later than October 22, 2000, to be sure of being considered in these proceedings.
On October 4, 2000, the Center received an email from the Respondent advising of the Respondent's intention to make a defence against the Complainant's claim and noting that the Respondent had purchased the domain name for use by the ICMSAA. The Center replied the same day, confirming the Response deadline and clarifying aspects of the Rules.
On October 5, 2000, the Center received an email reply from the Complainant's representative, asserting that the Respondent had "nothing to do" with the Complainant and noting that the ICMSAA was not authorised or endorsed by the Complainant.
On October 17, 2000, the Center received an email from the Respondent denying the Complainant's assertion and noting that the ICMSAA had previously been supported by the Complainant.
On October 18, 2000, the Center received from the Complainant's representative a supplemental filing by facsimile with additional exhibits which it requested should be referred to the Administrative Panel.
On October 19, 2000, the Center received the Respondent's initial formal Response by email, which was duly acknowledged on October 20, 2000. The hard copy was received by the Center on October 23, 2000.
On October 23, 2000, the Center received further Supplemental Filings from the Complainant addressing various issues raised in the initial Response.
On October 24, 2000, the Center received a supplementary Response from the Respondent to the Supplemental Filings
On October 23, 2000, the Center invited Mr. Keith Gymer to serve as single Panelist in these proceedings. The Panelist advised the Center of a concern over a possible conflict, which was brought to the attention of both Parties, each of whom agreed that they had no objection to the Panelist's appointment. The Center duly appointed Mr. Gymer as Panelist and notified the Respondent and the Complainant of this appointment by email on October 26, 2000.
The Panelist subsequently received the hard copy of the Complaint and Supplementary Filings, which included various supporting evidence not previously sent by email. Owing to email, transport and weather problems in the UK, the Panelist was unable to access the complete email copies of the Respondent's submissions until November 6, 2000. The Panelist accordingly advised the Center that the Decision in this case would be delayed a few days beyond the originally projected date. The Panelist apologises to the Parties for this delay.
4. Factual Background
The Complainant is Imperial College of Science, Technology and Medicine, an educational college, originally established by the merger of the former Royal College of Science, the Royal School of Mines and the City and Guilds College in 1907, it is presently part of the University of London. It runs a Management School which awards MBA degrees. The College operates a website at www.ic.ac.uk, and the Management School website is at www.ms.ic.ac.uk.
The Complainant claims to have a number of relevant trade mark registrations and applications, including the words "IMPERIAL COLLEGE", in various jurisdictions and submitted a privately compiled schedule of such registrations and applications. For reasons explained below, for the purposes of these proceedings, the Panelist is only prepared to consider UK registrations 1572164 (Class 16), 1544894 (Class 36), 1544895 (Class 41) and 1544896 (Class 42) for IMPERIAL COLLEGE as a word mark.
The Respondent registered the domain name imperialcollege.com on October 21, 1999, as shown in the Network Solutions WHOIS record for this domain name.
The ICMSAA was established (evidently as an unincorporated association) in 1990 as a volunteer body of graduates from the Imperial College Management School. Mr. Khan is acknowledged as the President of ICMSAA.
Otherwise, the Complainant has made a number of further contentions by way of a Statement of Case in the Complaint and in its Supplemental Filings, whilst the Respondent has submitted various answers to the points raised in the Complaint and Supplemental Filings in his Response and Supplementary Response. These are summarised below.
5. Parties’ Contentions
- The Complainant claims that it is the owner of goodwill and reputation in the mark IMPERIAL COLLEGE.
- The domain name imperialcollege.com is alleged to be identical or confusingly similar to the name by which the Complainant is known and to the trade marks for that name in which the Complainant has legitimate rights.
- At the date of the Complaint, the domain name is alleged not to have been actively used by the Respondent, and this is said to suggest that the Respondent did not acquire the domain name for any legitimate purpose.
- The Complainant goes on to assert that the Respondent "personally" did not appear to have any legitimate interest in the mark, IMPERIAL COLLEGE and that the Respondent did not appear to have previously conducted any commercial enterprise or non-commercial activity under the name IMPERIAL COLLEGE; that the Respondent personally is not known by the name IMPERIAL COLLEGE; and, more pertinently, that the Complainant had not licensed or otherwise permitted or authorised the Respondent personally to use its trade mark or to apply for any domain name incorporating any such mark.
- Accordingly the Complainant submits that the registration of the domain name in the personal name of the Respondent was made in bad faith and that the "non-use of the domain name amounts to bad faith use" [sic].
- The Complainant further alleges that the Respondent appears to be a former student of the Complainant and that he is the President of an unauthorised association, Imperial College Management School Alumni Association ("ICMSAA") which was alleged to have a website at <imperialmba.com>, a domain name also not authorised by the Complainant. [Note: The domain name imperialmba.com was the subject of a separate Complaint WIPO D2000-1146.]
- The Complaint states that the Complainant had instructed Solicitors to write to the Respondent requiring the ICMSAA to cease using the names Imperial College Management School Alumni Association and Imperial MBA and any address, map, e-mail, logo, letter-head or any other representation which suggests expressly or impliedly any authorised connection with or approval by Imperial College. A copy of the letter was subsequently submitted with the Complainant's Supplemental Filing of October 18, 2000 by facsimile.
- The Complainant submitted a copy of a briefing sheet allegedly produced by the ICMSAA referring to the services ICMSAA intended to provide with reference to a website at http://www.imperialmba.com. The fact that this particular document did not refer to imperialcollege.com is said to be evidence that "even if the domain name was registered for the ICMSAA, it has never been proposed to use the domain name and this is sufficient to constitute bad faith registration and bad faith use [sic] of the domain name."
- The Complaint claims that the Respondent has apparently acquired the domain name imperialcollege.com primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant (including the unauthorised ICMSAA) for valuable consideration in excess of the Respondent (Registrant)’s out-of-pocket costs of registration. These acts are also alleged to be sufficient to constitute bad faith registration and bad faith use of the domain name. [No evidence was provided to support the purported intent to sell the registration for excess consideration to any party.]
- By registering the domain name the Respondent (Registrant) was also alleged to be preventing the Complainant from reflecting is trade mark in all possible corresponding domain names and in particular the most popular top level generic domain.
- It is claimed that consumers and internet users who type <imperialcollege.com> as an attempt to view the Complainant’s web-site are likely to be confused by any web-site that appears at the domain name. By creating a likelihood of confusion between the domain name and the Complainant’s trade marks, consumers and internet users are likely to conclude that the web-site is in some way associated with the Complainant, contrary to the fact, particularly if the web-site purports to be for the confusingly similar but unauthorised ICMSAA.
- The Complainant concludes that the Respondent had registered the domain name with a view to disrupting the Complainant’s business and/or that any realistic use of the domain name to link to the web-site for ICMSAA would only be done intentionally to attempt to attract internet users for commercial gain. Again, this is asserted to be sufficient to constitute bad faith registration and bad faith use of the domain name.
On the basis of its evidence and assertions, and "[i]n accordance with Paragraph 4(b)(i) of the Policy" [sic] the Complainant requests that the domain name imperialcollege.com should be transferred to the Complainant. [Note: Paragraph 4(b)(i) of the Policy refers to certain circumstances which are evidence of the registration and use of a domain name in bad faith - the Panelist assumes the Complainant actually meant to refer to Paragraph 3(b)(i) of the Rules which is relevant to submission for a decision.]
The Respondent for himself and for ICMSAA submitted a number of specific answers to the claims made by the Complainant. The Respondent admits that the domain name was registered by the Respondent and is held for ICMSAA as the beneficial owner.
- The Respondent asserts that the Complainant supported the ICMSAA and part funded it until January 2000 when ICMSAA officially launched its websites. During this time the Complainant’s marks and insignia endorsed publications of the ICMSAA as ‘official’. ICMSAA is said to have subsequently "stopped using the marks of the Complainant" on request from the Complainant's solicitors.
- The ICMSAA was established to provide a forum for networking for graduates of the Complainants Management School and associated services. Implicit in this was that the good name of the Complainant was imperative to maintain, as it was a reflection on ICMSAA members' good name and vice-versa.
- Lack of sufficient support (by way of facilities and services) accorded to foreign alumni prompted the ICMSAA strategy of ‘Global Reach’ with the intention of breaking down cultural and ethnic barriers and bringing MS Alumni closer together for the purposes of networking and career progression.
- Global Reach did this by hosting its first event (Global Reach phase 1 Asia) on January 25th 2000. This was also the date on which the websites <imperialcollege.com> and <imperialmba.com> were officially launched.
- The domain name <imperialcollege.com> was chosen for a number of reasons:
1. ImperialCollegeManagementSchoolAlumniAssociation> was too cumbersome.
2. Imperial College were the first two words in the ICMSAA's official name.
- The website at <imperialcollege.com> was on-line for several months before and after the January 25th 2000 event publicising the first Global Reach event.
- At all times the Respondent intended to launch the website <imperialcollege.com> to offer services to ICMSAA members. (Respondent's emphasis).
- The Respondent had several meetings with the Director of the Imperial College Management School, Professor David Norburn, articulating the Global Reach Strategy and the launch of the website <imperialcollege.com>. At a meeting held on January 17th 2000 at the Management School Boardroom in South Kensington, UK. Professor David Norburn indicated that he wished to buy the domain name <imperialcollege.com> from the ICMSAA and asked that the domain names should be transferred to the Complainant. The Respondent notified him that it was not for sale.
- The ICMSAA asserts that as official academic websites are hosted with the suffix <.ac>, there can be no real confusion with a <.com> website. The domain name <imperialcollege.com> is not confusingly similar to the name by which the Complainant is known. There are many ‘Imperial Colleges’ throughout the world and there are many domain names associated with these colleges bearing the words ‘Imperial College’. (The Respondent attached a list of domain names apparently including the words "imperial college"). There has been an active website at the address <imperialcollege.com> and it has been used to advertise official events of the ICMSAA including the Global Reach event. The site was taken down by the Respondent's service provider because of the stance that the Complainant was taking and their hostility towards the ICMSAA. The Respondent Registrant acquired the domain name on behalf of the ICMSAA for the legitimate purposes of promoting the interests of the ICMSAA. It was active in promoting the legitimate interests of the ICMSAA. Moreover it clearly differentiated itself as belonging to the ICMSAA and even gave a link to the Complainants main site at <ic.ac.uk>.
- The Respondent is President of the Imperial College Management School Alumni Association. He has been involved in the running of the Association since its inception in 1990 and therefore does have a legitimate interest in <imperialcollege.com> Imperial College being the first part of the ICMSAA’s legitimate and rightful name.
- The Respondent has conducted non-commercial activity under the name Imperial College (Management School Alumni Association). The ICMSAA has used trademarks by consent of the Complainant. Copy for publications was passed through the Complainant’s Management School Administrator, but now that the ICMSAA is ‘unauthorised’ ICMSAA has pledged that it will not use such trademarks in future. The Respondent notes however that no valid reason has been given by the Complainant as to how and why the ICMSAA became ‘unauthorised’.
- The Respondent alleges that the reason why the ICMSAA became ‘unauthorised’ was that the ICMSAA REFUSED to sell back the domain names <imperialcollege.com> and <imperialcollege.com>. The Respondent claims that the Complainant is using ‘Reverse Domain Name Hijacking’, as the Complainant knows that the ICMSAA launched their websites with official services offered by the ICMSAA.
- The Respondent has received notification that the ICMSAA should not use trademarks of the Complainant. The ICMSAA acknowledges this fact and will not use the trademarks of the Complainant.
- The briefing sheet attached to the Complaint was out of date. The Respondent submitted in evidence copies of a number of promotional flyers and related documentation clearly making reference to the web address www.imperialcollege.com.
- Neither the Respondent nor any of the other officers of the ICMSAA have purchased domain names for the purposes of ‘cybersquatting’ i.e. purchasing domain names for financial gain by selling back to those that have a legitimate interest in them. Such a practice would be extremely foolish bearing in mind the Respondents line of work. Moreover neither the Respondent nor any other officers of the ICMSAA has ever approached the Complainant for the purpose of selling back the domain name. In-fact the ICMSAA have refused to enter into any negotiation regarding the sale of the domain name. It was purchased to promote the legitimate interests of the ICMSAA.
- The domain name was not used and will not be used in any way that can possibly show bad faith. The aims of the ICMSAA are to promote the good name (albeit indirectly) of the Complainant by emphasising the good standing of the Complainant’s Graduates in the business community.
- The domain name by which the Complainant is commonly known and which all common Internet search engines will report is the Complainant's main site at <ic.ac.uk>. The Complainant cannot have a monopoly on all names that bear the words Imperial and College – the words are just far too generic.
- he ICMSAA is at pains to differentiate itself from the Complainant as much as the Complainant is intent on differentiating itself from the ICMSAA. The Respondent attests that if anything, the ICMSAA site would properly serve to identify and route intended visitors to the Complainant’s site rather than mislead them. ICMSAA is after all an organisation of professionals who exist to serve their own interests and beliefs and not those of the Complainant.
- ICMSAA executive members who are responsible for the domain name <imperialcollege.com> will do everything reasonable in their power to ensure that the good name of the Complainant is not tarnished. Furthermore the executive members of ICMSAA have still not decided if the organisation will be commercial entity or a charity. Commercial gain was not even considered when ICMSAA was registering its domain name <imperialcollege.com>.
- The ICMSAA has stated that it wishes to work with the Complainant to provide services for its members. It has no wish to infringe any trademarks of the Complainant and has no desire to indulge in any kind of activity that would harm the Complainant. The Complainant has chosen however not to indulge in any kind of meaningful dialogue with the ICMSAA and has decided to threaten actions through its solicitors. To this date the Complainant has not even requested a meeting with the ICMSAA to talk. The ICMSAA is willing to talk with the Complainant if the Complainant indicates their willingness to do so.
The Respondent accordingly requests that the domain name <imperialcollege.com> remain with the Respondent.
C. Complainant's Supplementary Filings
In its Supplemental Filings, the Complainant replied to a number of points raised in the Response. In particular, the Complainant rejected the Respondent's assertions regarding the lack of potential for confusion with a <.com> domain name and reiterated its claim to enforceable registered trade mark rights in the name IMPERIAL COLLEGE. The Complainant further noted:
- IMPERIAL COLLEGE is the first part only of the ICMSAA’s (unauthorised) six word name. It is therefore misleading for the ICMSAA to refer to itself as simply IMPERIAL COLLEGE by way of a domain name or otherwise, just because this happens to be the first two words of its (unauthorised) six word name.
- The fact that <imperialcollegemanagementschoolalumniassociation.com> would be cumbersome is irrelevant (it would not in any event be permitted since it consists of more than 26 characters). [This limit is no longer correct - see below.]
- The ICMSAA is not in any event authorised by the Complainant to use the name IMPERIAL COLLEGE whether alone or in association with the words MANAGEMENT SCHOOL ALUMNI ASSOCIATION.
- The Respondent claims that the ICMSAA has pledged that it will not use the Complainant’s trade marks in the future and that it does not wish to infringe the Complainant’s trade marks. If that is the case then the Respondent and the ICMSAA should agree not to use the domain name <imperialcollege.com> since it is made up of only the Complainant’s trade mark IMPERIAL COLLEGE and it is the Complainant’s case that the continued registration and use of the domain name amounts to an infringement of the Complainant’s IMPERIAL COLLEGE trade mark
- The Complainant is not commonly known by any domain name. The Complainant is commonly known by the name IMPERIAL COLLEGE, whether on the internet or otherwise. It is not accepted that IMPERIAL COLLEGE is generic – it is distinctive of the Complainant and is a registered trade mark. It is alleged that the ICMSAA wish unfairly to take advantage of the Complainant’s IMPERIAL COLLEGE trade mark and the goodwill and reputation in that mark.
D. Respondent's Supplementary Response
The Respondent replied to various claims in the Complainant's Supplemental Filings, asserting in particular:
- That IMPERIAL COLLEGE is the first part only of the Complainant’s seven word name (Imperial College of Science Technology and Medicine). It is no more misleading for the ICMSAA to abbreviate its name by shortening it to two words than it is for the Complainant to do the same.
- The fact that <imperialcollegemanagementschoolalumniassociation.com> is cumbersome is not irrelevant as this is the reason why domain names are often abbreviations of real names. The Respondent does not accept that the ICMSAA is unauthorised. The ICMSAA is an independent association with its own governance and procedures, it has been established over ten years. In the past the ICMSAA had a close working relationship with the Complainant. Since the ICMSAA decided to pursue its own strategy of Global Reach the Complainant has become hostile to the ICMSAA. The ICMSAA does not understand why the Complainant has taken this position but one reason could be that Global Reach highlights deficiencies within the Complainants multiethnic policy towards Alumni. The ICMSAA is a positive forward thinking organisation and has no wish to confuse people over its identity.
- There is a historic link between the Alumni who are members of ICMSAA and the Complainant. The goodwill and reputation of the trademark of Imperial College has been established in part by the ICMSAA, whose members have studied there, contributed to knowledge and paid enormous fees for the privilege. The ICMSAA is entitled to capitalise on the fact that its members graduated from Imperial College of Science Technology and Medicine. The ICMSAA is taking advantage of no more than that.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that
(i) the contested domain name is identical or confusingly similar to a trademark 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.
6.1 Is the domain name identical or confusingly similar to a trademark or service mark in which the Complainant has rights?
In the Panelist's opinion, this requires the Complainant to satisfy the Panel on two points. Firstly that the domain name is identical or confusingly similar to a trademark or service mark claimed by the Complainant and, secondly, that the Complainant does indeed have rights in a relevant mark.
The first point may be established by comparison of the domain name at issue and the claimed mark(s).
Where the relevant mark is a registered trademark, the second point may readily be established and independently verified by reference to the applicable official Trade Marks Register. In such a case, presentation of an appropriately certified true copy of the registration details would plainly provide sufficient evidence of the existence of applicable rights. For example, under the UK Trade Marks Act 1994, (the TMA1994) Section 72, registration provides prima facie evidence of validity and hence of the registered proprietor's entitlement to the rights conferred under Section 9 of the TMA1994.
The Complainant has asserted that it has trade mark registrations and/or applications pending for the mark, IMPERIAL COLLEGE in the following countries:
A Schedule listing details of these alleged trade mark rights was included in the Complaint.
However, the Schedule did not comprise up-to-date information from official Registry records and was clearly insufficient in all cases to confirm ownership and subsistence of those rights to the Panelist's satisfaction. As on previous occasions, rather than dismiss the inadequately evidenced claims peremptorily, the Panelist sought to independently verify the Complainant's claims, where possible, by reference to those relevant Trade Marks Registry details which are conveniently accessible online.
In the Panelist's view, it is reasonable to expect that the standards to be applied to supporting evidence in cases brought under the Policy should be equivalent in form and extent to that which would be required in an opponent's evidence-in-chief in a trademark opposition brought on corresponding grounds. The Community Trade Marks Office has issued helpful guidelines entitled "INFORMATION ABOUT EVIDENCE" as an Annex to a notice on "Substantiation of Earlier Rights in Opposition Proceedings" (available as a .pdf file at http://oami.eu.int/pdf/marque/oppo3.pdf). These guidelines specify how to prove particulars required in an opposition case. In relation to prior registrations, the requirements include proof of ownership and validity and state expressly that "extracts from private records or databases are not acceptable". Acceptable proof may take the form "of extracts of records or official databases … either in paper or electronic form, provided they contain all the particulars of the registration."
In the present case, the Panelist has been able to consult on-line official databases for marks in the UK, Australia, the US and the Community. For the purposes of these proceedings, therefore, the Panelist has not considered any alleged rights in other jurisdictions. The Complainant's rights in the US and Australia are for marks including the College crest in which the device element is so dominant that the domain name could not reasonably be said to be confusingly similar. The Community application for IMPERIAL COLLEGE is shown as still subject to opposition (which suggests that the Complainant's claim to exclusive rights may not perhaps be as extensive as it would like). This leaves four potentially relevant UK registrations 1572164 (Class 16), 1544894 (Class 36), 1544895 (Class 41) and 1544896 (Class 42) for IMPERIAL COLLEGE as a word mark, which the Panelist has been able to verify are officially recorded as in force and registered in the Complainants name.
For the purposes of the Policy, therefore, the question boils down to whether imperialcollege.com is identical or confusingly similar to IMPERIAL COLLEGE (as registered).
The Respondent ICMSAA has alleged that no confusion would arise; that there are other users of the name "Imperial College" and that the Complainant cannot have applicable rights to the words "Imperial" and "College" as they are "far too generic". These assertions are of no assistance to the Respondent. The Respondent has adopted a domain name which plainly does not serve to differentiate the Complainant, Imperial College, from the Alumni Association. (It appears to the Panelist that there may be other reasons for this, which are considered further at 6.3 below, but these do not justify the Respondent's assertions.) That there may be other domain names including the words "imperial college" is irrelevant. There is nothing to show that these names have been registered with the approval of the Complainant and they may well also be in dispute. Of the results in a general internet search carried out by the Panelist for "Imperial College" all the principal links and references were to the Complainant except for one to an Imperial College in Toronto. In any event, by the Respondent's own admission, the "Imperial College" in "imperialcollege.com" is intended to refer to the Complainant.
Accordingly, having regard to all the circumstances, the Panelist considers that the domain name at issue is indeed confusingly similar to a service mark in which the Complainant has rights and that the first requirement of Paragraph 4(a)(i) of the Policy is met.
6.2 Does the Respondent have no rights or legitimate interests in respect of the domain name?
On this issue, the Complainant's case relies principally on the claim that the Complainant has "not licensed or otherwise permitted or authorised the Respondent personally to use its trade mark or to apply for any domain name incorporating any such mark".
The relevance of this factor is clearly dependent on whether or not a legitimate use might reasonably be expected to require such a licence.
Paragraph 4(c) of the Policy also helpfully provides some guidance as to some factors, which, if present, may serve to demonstrate a legitimate interest in a domain name. Conversely, the absence of such factors may therefore be indicative of a lack of such an interest. The relevant indications are:
(i) before any notice to you [the Respondent] 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.
In the Panelist's view, the evidence in this case does not support the Respondent's claims in relation to any of these factors.
The evidence shows that there have been demonstrable prior preparations for operating a website using the domain name and referring to "Imperial College Management School" and "The Management School Alumni Association" in a manner which would manifestly cause confusion and potentially misrepresent the nature of the Respondent's connection with the Complainant. Indeed, the Respondent itself admits that the website has been in operation and was always intended to be used for offering ICMSAA services (i.e. not services necessarily authorised by the Complainant). The Panelist does not believe that such use can be considered as being for a "bona-fide" purpose in relation to the particular domain name at issue. Had the domain name referred directly to "alumni" (e.g. as say "imperialcollegemsalumni.com"), the case for legitimacy might have been defensible, since a visitor might not necessarily expect an alumni association to be officially connected with a college in the same way they would surely expect "imperialcollege.com" to be so connected.
The Respondent has plainly not been commonly known by the domain name alone - the Respondent has provided no evidence that anyone would seriously expect the Alumni Association to use such a radical abbreviation of its name so as to be identical to that of the College itself; and the Respondent is not making any evident fair use (for the reason that the expressed intention is for a site for "alumni" and not for the "Imperial College" itself).
The fact is that IMPERIAL COLLEGE is a registered trade mark of the Complainant and it is plainly inconsistent for the Respondent to suggest that it will respect the Complainant's trade marks whilst proposing to carry on using imperialcollege.com.
In the Panelist's opinion, any active use of the domain name in the UK would almost inevitably lead to confusion with the Complainant's registered name, and the Panelist therefore also concludes that the Respondent can have no rights or legitimate interests in the domain name without the Complainant's authorisation, which it does not have. The requirements of Paragraph 4(a)(ii) of the Policy are therefore met.
6.3 Has the domain name been registered and is it being used in bad faith?
This is the question which has given the Panelist the greatest cause for concern and for extended consideration and deliberation, notably because, in this case in particular, there would appear to be a great deal more behind this dispute which has not been revealed by either side, and the real explanation for the parties' actions may well lie in what has been left unsaid.
It is important for the Parties to be aware that the various circumstances cited in Paragraph 4(b) of the Policy as evidence of registration and use in bad faith, which the Complainant has essentially reproduced regardless of their realistic relevance to the case at hand, are merely exemplary. A finding of registration and use in bad faith for the purposes of the Policy may be based on other circumstances, the actual facts and the applicable law in each particular case. Consequently, the Panelist does not propose to comment on all the various allegations and counter-assertions made by each side in these proceedings where these are not realistically supported by any of the evidence. The nonsensical distortions of meaning presented on behalf of the Complainant in its submissions on the issue of bad faith use, in particular, add nothing to the credibility of the Complainant's case in this regard. What the Complainant expected to gain from such manifestly absurd contentions as "non-use of the domain name amounts to bad faith use" [sic], is difficult to imagine. The justification for making an allegation that the Respondent registered the domain name with the intention of selling it for excess consideration to the Complainant, when the evidence suggests that the Complainant in fact knew very well that the Respondent had no such intention (the Panelist notes that the Complainant did not challenge the Respondent's Response on this point in its own Supplemental Filings), would also seem doubtful to say the least.
The evidence suggests that the dispute over the domain name in this case is just one manifestation of a general falling-out between what was undeniably a legitimate Alumni Association and the College whose alumni comprise the Association. It does seem to the Panelist that, as such, it would surely have been preferable for the parties in this case to have sought to resolve all the issues in the overall dispute through some form of private mediation or arbitration rather than through selective public proceedings such as under the Policy. The Panelist nevertheless recognises it is not for him to mandate mediation, but to decide this Complaint on its merits regardless of how it reflects on the parties.
In this case, a number of the demands and assertions made on behalf of the Complainant go somewhat beyond what the Panelist would have expected to see in the circumstances, leading the Panelist to further concerns over the respective merits of each Party's position in these proceedings.
The Complainant, in Solicitor's correspondence, and as inferred in its Supplemental Filings, has effectively demanded that the ICMSAA should cease to refer to itself as such (either as Imperial College Management School Alumni Association or by its initials). The Association has apparently been known and referred to in those terms for 10 years and has been acknowledged by the Complainant as being independent of the Complainant. The term "Imperial College Management School Alumni" is clearly directly and legitimately descriptive of such Alumni. It is perhaps reasonable to expect that an Association of Alumni which is no longer formally recognised by the College should clearly identify itself as "unofficial" or as "independent" of the College (to the extent that this may not be well known to the relevant audience). However, it seems to the Panelist that any Association of such Alumni has no meaningful alternative but to use the words "Imperial College Management Association" as part of its name in some way, provided always that it does so "in accordance with honest practices in industrial or commercial matters" to meet the requirements of Section 11(2) of The Trade Marks Act 1994. (The interpretation of this proviso has been the subject of judgements in the UK (AB Volvo v. Heritage(Leicester) Ltd.,  FSR 227) and in the European Court of Justice (BMW v. Deenik, C-63/97)).
Why, the Panelist is led to consider, did the Respondent not choose to register and use a domain name which more accurately reflected its established name? Since December, 1999 it has been possible to register a domain name of up to 67 characters in length, so the likes of:
were all potentially registrable as valid domain names before the ICMSAA launch of its Global Reach event in January 2000. Even before then, names with up to 26 characters were registrable, which would have allowed:
Of course, logically, if the Association had been seeking a convenient domain name to reflect its recognised identity, one might have thought "icmsaa.com" would have been the obvious candidate. Curiously, neither the Complainant nor the Respondent made any reference to this most likely option. A simple inspection reveals, however, that the Respondent could not have adopted this domain name when the evidence suggests it was looking to register a domain name in October 1999, because that domain name, together with "icmsaa.net" and "icmsaa.org" had already been registered on September 29, 1999 by the Complainant.
Given the Complainant's own admission that the ICMSAA is independent of the Complainant, it seems to the Panelist that, had the ICMSAA chosen to do so, it would have had very reasonable grounds to question the Complainant's basis for appropriating these domain names to itself, particularly as the Complainant itself is not known by the name ICMSAA and evidently does not use the names in any website offering goods and services. Indeed, the ICMSAA might well have been able to make a case for bringing proceedings against the College under the Policy to have those names transferred to it.
What the Respondent and ICMSAA do not have, however, in the Panelist's view, is any right to go about appropriating other domain names (whether in reaction to the Complainant's own apparently preemptive action or not), to which the Complainant does plainly have a strong legitimate claim.
The Panelist does not accept that the ICMSAA is entitled to capitalise on the fact that its members graduated from Imperial College, as Mr. Khan claims, by using the domain name "imperialcollege.com" without the consent of the College. The ICMSAA may well have a legitimate claim to have established its own reputation and goodwill independent of the College but, if so, that would be in relation to the use of "ICMSAA" and/or "Imperial College Management School Alumni Association" in full, and not "Imperial College" alone. Again, if ICMSAA considers it has a claim to have established such goodwill, the Respondent would surely be on firmer ground questioning the Complainant's acquisition of icmsaa.com etc. rather than attempting to justify a claim to "imperialcollege.com", which it cannot legitimately sustain.
As it is, the Policy provides a potential remedy for a Complainant which is based in contract not equity - the fact that there may be evidence of some unexplained, even possibly provocative, conduct by the Complainant, does not disentitle it to relief if the Respondent is found to have breached the applicable rules.
The evidence is that the domain name in dispute has clearly been in use. It was also used for commercial purposes such as promoting the sale of tickets for the ICMSAA Global Reach event. It may not have been actively directed at interfering with the Complainant's business, but it was clearly a potentially misleading use and the Complainant was within its rights to object to its use in such circumstances.
The Respondent, Mr. Khan, has asserted that the Complainant "is using ‘Reverse Domain Name Hijacking’" by pursuing these proceedings. This contention is clearly unsupportable and the Panelist rejects it absolutely.
As Aldous L.J stated in the One in a Million case (British Telecommunications & Ors. v. One in a Million Ltd. & Ors. Court of Appeal - full judgement available at http://www.nic.uk/news/legal/oiam-appeal-judgement.html), first in relation to Marks & Spencer in that case:
"The placing on a register of a distinctive name […] makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of [the registrant] and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered."
Further, in this Panelist's opinion, and consistent with the views expressed in the High Court and Court of Appeal, which considered the issue of whether an inactive domain name could be considered as "used" for the purposes of trade mark infringement, the fact that a domain name may only be passively "in use" insofar as it is on the register in an unauthorised Registrant's name, may still be sufficient to cause confusion and effect a misrepresentation regarding the status of the connection of the Registrant with the legitimate owner of rights in the relevant name.
Mr. Khan has made the argument that as "ICMSAA members have been educated in good faith and business ethics and good management by the Complainant. If the Complainant doubts the ability of their own graduates to exercise good management and business practice in the market place they must surely look at themselves and their teachings." This argument is apparently intended to suggest that it is therefore inconceivable that the Respondent could be considered to have acted in bad faith.
Unfortunately, however, sometimes even the best may overstep the mark and it is the Panelist's view that the Respondent did so in this instance. For the narrow purposes relevant to the Policy, the Panelist is satisfied that the Respondent did act unjustifiably and without authorisation in registering and using the domain name at issue
The Panelist accordingly concludes that, in the context of the Policy, the domain name has been registered and is being used in bad faith and the requirements of Paragraph 4(a)(iii) of the Policy are met.
For the reasons explained in Section 6 above, the Panelist concludes that each of the requirements of Paragraph 4(a) have been met. Accordingly, the Panelist requires that the domain name "imperialcollege.com" be transferred to the Complainant.
Dated: November 16, 2000