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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The University of Windsor v. Modern Empire Internet Limited

Case No. D2006-1238

 

1. The Parties

The Complainant is The University of Windsor, Windsor, Ontario, Canada, represented by James H. Cooke, Canada.

The Respondent is Modern Empire Internet Limited, Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The disputed domain name <uwindsor.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 25, 2006. On September 26, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 29, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2006.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on December 14, 2006. 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 known under the name University of Windsor and has various trademark registrations which include the word WINDSOR combined with other elements. First such registrations by the Complainant were filed as early as 1965. The Complainant has five trademark registrations in Canada covering educational services.

The Complainant registered the domain name <uwindsor.ca> since 1990 and has been using it since that time in connection with providing educational services.

The Respondent registered the disputed domain name <uwindsor.com> in 2002. The disputed domain name contains links to various other websites.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- It is one of the largest universities in Canada and that the disputed domain name is confusingly similar to the common law trademark UWINDSOR owned by the Complainant.

- In addition to its common law rights in the trademark, the Complainant has various trademark registrations in Canada.

- It has been providing its educational services in connection with the aforesaid trademark.

- It registered a domain name <uwindsor.ca> in 1990, which is used be the various schools and colleges of the Complainant.

- The disputed domain name is used for commercial purposes and is identical or confusingly similar to its trademark.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name because there is no evidence that the Respondent uses the domain name or the corresponding trademark or has shown any evidence of preparation of use in connection with a bona fide offering of goods or services, nor does there seem to be any evidence that it was commonly known by the disputed domain name or any corresponding name.

- The Respondent does not have trademark registrations for UWINDSOR in the countries where the Complainant has conducted a search.

- The Respondent is not making a legitimate non commercial or fair use of the disputed domain name.

- The disputed domain name was registered and is being used in bad faith since it intends to attract commercial gain by creating a likelihood of confusion with the trademark and domain name of the Complainant.

- The Respondent had been involved in domain name disputes in which decisions were rendered not in its favor and this demonstrates the bad faith of the Respondent.

For all the above reasons, the Complainant requests the disputed domain name to be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is known under the name University of Windsor since its establishment in 1962 as seen from its act of incorporation. The Complainant has registered the domain name <uwindsor.ca> in 1990, and has registered various trademarks including the words “University of Windsor” with design as evidenced by the copies of trademark registrations issued by the Canadian Intellectual Property Office. The oldest among these registrations date back to 1965.

Windsor is the name of a city in Canada and the Panel thought it necessary to consider to which extent an entity can have trademark rights in a geographical name. After reviewing various domain name decisions, the Panel is satisfied that a certain institution may have trademark rights in the name of a city when such name is associated and used along with the other words that simply reflect a particular type of institution. The Panel referred to a case that was brought forward in connection with the name of the city Zurich, in which the Panel stated:

The domain name <zurich-banque.com> contains the word ZURICH in full as the first and dominant part of the domain name. To this part is added the descriptive French word “banque” and the suffix “.com”. Under these circumstances the domain name must be considered to be confusingly similar to the trademark ZURICH in which the Complainant has rights.

See Zurich Insurance Company v. Assurebank, WIPO Case No. D2001-1364. Based on the above, the Panel believes that the Complainant has trademark rights in the term “University of Windsor” or the term “uwindsor” as the letter “u” refers to university.

The disputed domain name includes the word term “uwindsor” which is identical to the domain name used by the Complainant and includes the trademark owned by the Complainant. The disputed domain name reflects the name of the Complainant since the letter “u” is used for universities and “uwindsor” is the abbreviated name of the Complainant and its registered trademark.

The addition of the generic top level domain “.com” which is the only part of the disputed domain name that is different from the domain name of the Complainant and of its trademark does not constitute a differentiating element. Top level domains do not constitute distinctive elements and hence do not eliminate the possibility of confusion. “Since it is clear that the “dot.com” element of a domain name is to be ignored for the purpose of assessing similarity…” See Skipton Building Society v. Peter Colman, WIPO Case No. D2000-1217.

Therefore, the Panel finds the disputed domain name is identical or confusingly similar to the trademark of the Complainant.

B. Rights or Legitimate Interests

As per paragraph 4(c) of the Policy, a Respondent’s rights or legitimate interest in the disputed domain name can be evidenced by various means, of which paragraph 4(c) enlists three examples:

(i) before any notice to you [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 [Respondent] (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 [Respondent] 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 Panel verified the site of the disputed domain name and found it to be used for the purpose of enlisting various categories of products and services that are offered by third parties, including car insurance, games, houses for sale, etc. When the visitor of the website clicks on any of these categories, he or she will be directed to a page which shows a list of various links related to the chosen item. These are sponsored links among which the visitor can choose the service or product provider of his choice. The website is clearly a search portal which allows the visitor to conduct a search in any area of his or her choice. For instance, when typing the word “education”, the Panel was directed to a page that lists various links related to the word “education”.

It is clear to the Panel that the site of the disputed domain name does not meet the requirement of a bona fide offering of goods or services. There is no evidence that the Respondent was commonly known by the disputed domain name.

The Panel does not find any association between the Respondent’s name and the disputed domain name which may indicate that the Respondent has been commonly known by the disputed domain name. The Respondent cannot rely on Paragraph 4 (c)(iii) of the Policy to argue that the disputed domain name was being used for “legitimate non-commercial or fair” purposes since the Respondent is using the disputed domain name to direct the public to websites which sell various goods and services.

The Panel also noted here that the Respondent failed to respond to this Complaint. While failure to respond does not present conclusive evidence against the Respondent, the Panel did consider this factor as further proof of the Respondent’s failure to demonstrate its rights or legitimate interests in the disputed domain name.

Based on all of the above factors, the Panel finds no rights or legitimate interests for the Respondent in the disputed domain name.

C. Registered and Used in Bad Faith

In order to establish bad faith of the Respondent, it is enough, by virtue of Paragraph 4(b)(iv) of the Policy, to show that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. The Panel notes that the disputed domain name is used in connection with a website that offers various links. On a balance of probabilities, the Panel is convinced that the Respondent obtains commercial gain from the display of these links on the website and hence the test of registration and use in bad faith is satisfied.

There are other indications of bad faith in this case. A demonstration of bad faith lies in the fact that the trademarks of the Complainant were registered long before the registration of the disputed domain name by the Respondent. The domain name of the Complainant was also registered prior to the registration of the disputed domain name.

Another indication of bad faith is the fact that the Respondent does not appear to have any connection with the city of Windsor which may justify the use of its name. The Panel refers here to a similar case which involved the name of the city “Skipton”. (See Skipton Building Society v. Peter Colman, WIPO Case No. D2000-1217), in which the Panel noted under the discussion of “bad faith”:

...by his own admission, Mr. Colman took advantage of the “first come first served” policy of the domain name registrars to obtain a wide range of registrations, including a number of well-known English football clubs, and other substantial commercial entities, including WH Smith, and Thames Water. The latter two registrations are particularly telling, as there can be no legitimate geographical or other justification for the registrations.

The Panel also believes that the Respondent was probably aware of the existence of the University of Windsor because the University of Windsor seems to be an important landmark in the city of Windsor. For example, when researching the word “Windsor” in Wikipedia Encyclopedia, the University of Windsor is highlighted in the Education section of the article that contains information about the city.

A last indication of bad faith in the Panel’s view is the decisions previously issued against the Respondent. The Complainant submitted various domain name decisions rendered by WIPO panelists in cases that were brought forward against the Respondent. In these decisions, the Respondent had registered domain names which are used for websites that offer links to third parties selling goods and services. The Panel believes that this is an indication that the Respondent is engaged in the activity of registering domain names that include trademarks belonging to third parties most likely for commercial gain.

Based on the above, the Panel finds that the disputed domain name was registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <uwindsor.com> be transferred to the Complainant.


Nasser A. Khasawneh
Sole Panelist

Dated: December 28, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1238.html

 

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