President and Fellows of Harvard College v. Halil CIL / Union of Brands
Claim Number: FA1511001645647
Complainant is President and Fellows of Harvard College (“Complainant”), represented by Andrew J. Avsec of Brinks Hofer Gilson & Lione, Illinois, United States. Respondent is Halil CIL / Union of Brands (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harvardqualification.com>, <harvardqualification.info>, <harvardqualification.org>, <harvardqualification.net>, <harvardschool.net>, <harvardelt.com>, <harvardcolleges.com>, <harvardcolleges.org>, <harvardkids.org>, and <harvardpublisher.org>, registered with Godaddy.Com, Llc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 5, 2015; the Forum received payment on November 5, 2015.
On November 5, 2015, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <harvardqualification.com>, <harvardqualification.info>, <harvardqualification.org>, <harvardqualification.net>, <harvardschool.net>, <harvardelt.com>, <harvardcolleges.com>, <harvardcolleges.org>, <harvardkids.org>, and <harvardpublisher.org> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@harvardqualification.com, postmaster@harvardqualification.info, postmaster@harvardqualification.org, postmaster@harvardqualification.net, postmaster@harvardschool.net, postmaster@harvardelt.com, postmaster@harvardcolleges.com, postmaster@harvardcolleges.org, postmaster@harvardkids.org, and postmaster@harvardpublisher.org. Also on November 11, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
After appointment of the Panel, Respondent filed a late Response, asserting in an email to the Forum that it had not received a copy of the Complaint. Complainant then wrote to the Forum objecting to allowance of the late filed Response and on December 15, 2015 made more formal Additional Submissions
in a timely manner according to the Forum's Supplemental Rule #7.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in HARVARD and HARVARD COLLEGE and alleges that the disputed domain names are similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
As noted, the Response was filed out of time. A preliminary issue arises as to whether the out-of-time Response should be taken into account in reaching the Decision.
Whilst that determination is entirely at the Panel’s discretion, regard has been paid in part to factors which former UDRP panelists have regarded as influential, such as the reasons for the late response, the degree of lateness, and the character of the response.
The reason given for the late Response was that the Complaint allegedly never reached Respondent. Complainant objected, amongst other reasons stating that the Complaint had been emailed to 13 different addresses. Panel has no reason to think Respondent did not, or should not, have received the Complaint.
Nevertheless, the Response shows the existence of a UK registered company by the name of Harvard Publishers UK Ltd and so there is at least some possibility that Respondent has a legitimate interest in the domain names. For that reason Panel has allowed the Response.
Response does not address Complainant’s assertion of trademark rights. Instead, Respondent argues that none of the disputed domain names are confusingly similar to the word HARVARD since it is a place name and cannot be monopolized by a single trader. Respondent goes on to argue that there “is no likelihood of confusion and deception of consumers since Complainant’s services are for college students while Respondent’s are for kindergarden [sic] and primary school.”
Further, Respondent claims to be using a UK company name incorporating the word HARVARD and has “branches in Turkey” where it “is active in the field of publishing books and serving education to the students in Turkey.”
C. Additional Submissions
As stated, Complainant made additional submissions which have been taken into account by Panel but do not require mention here as they parallel Panel’s own view of the Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides educational services by reference to the registered trademarks HARVARD and HARVARD COLLEGE (United States Patent and Trademark Office (“USPTO”) Reg. No. 1,608,533, registered July 31, 1990, and Reg. No. 2,498,203, registered October 16, 2001);
2. the disputed domain names were all registered during 2014;
3. the domain names are either not in use or resolve to websites promoting educational services; and
4. there is no relationship between the parties.
Paragraph 15(a) of the Rules instructs Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registrations for HARVARD and HARVARD COLLEGE, the Panel is satisfied that it has trademark rights (see Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003), finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i); State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)).
For the purposes of comparison in this case, the various gTLDs can be disregarded and the lack of punctuation between words ignored (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The residual comparison is therefore between the trademarks and the terms,
harvardcolleges
harvardqualification
harvardschool
harvardelt
harvardkids
and harvardpublisher,
all confusingly similar to Complainant’s HARVARD trademark as they merely add descriptive or generic terms to the trademark, and in the case of harvardcolleges, all but identical with the HARVARD COLLEGE mark (see T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) finding addition of the letter “s” to a registered trademark not enough to avoid a finding of confusing similarity; Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) finding respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Panel notes here that Respondent’s argument that there “is no likelihood of confusion and deception of consumers since Complainant’s services are for college students while Respondent’s are for kindergarden [sic] and primary school” is, for the purposes of the Policy, an irrelevancy.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of all of the contested domain names.
Paragraph 4(c) of the Policy states that 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WHOIS information identifies “Halil CIL / Union of Brands” as registrant and so there is no prima facie evidence that Respondent might be commonly known by any of the domain names. There is no evidence that Respondent has any trademark rights. Complainant has not authorized Respondent to use its trademarks. Finally, the domain names or either not in use or used competitively with Complainant’s interests. Panel finds that Complainant has made out a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
Included in the Response is a copy of the Certificate of Incorporation of a UK company by the name of Harvard Publishers UK Ltd. Respondent is the sole director and shareholder. Panel observes, first, that of and by itself, that document does not show use of any name, still less that Respondent might be commonly known by that name; secondly, that evidence of use of that company name would only be relevant to possible interests in the domain name <harvardpublisher.org>; thirdly, there is no evidence provided to support Respondent’s claim that it is an active publisher of educational books.
Panel finds that Respondent has not shown any right to or interest in any of the domain names and so finds that Complainant has satisfied the second limb of the Policy (see Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”; see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 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 trademark or service mark from reflecting the mark in a corresponding domain name, provided that 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
In relation to the in-use domain names, Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv) above. Panel has already found all of the domain names to be confusingly similar to the trademark HARVARD. It follows that there is a likelihood of confusion unless Panel were to accept that the primary signification of the word Harvard is as a geographical place name and not the well-known provider of higher learning. In the circumstances the nature of the domain names all connote services provided by Complainant and Panel finds that confusion is inevitable. Panel also finds that the websites exist for commercial gain (see Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
In terms of the disputed domain names not in use, Panel finds registration and use in bad faith. Complainant’s reputation is ubiquitous. There is no respectable argument that Respondent struck upon the name HARVARD by accident and it is entirely reasonable to infer that Respondent registered the domain names in the knowledge of Complainant. Panel finds that it did so in bad faith. Further, given the notoriety of the trademark HARVARD, Panel finds that the “use” of those inactive domain names was also in bad faith following the reasoning first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Complainant has established the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the<harvardqualification.com>, <harvardqualification.info>, <harvardqualification.org>, <harvardqualification.net>, <harvardschool.net>, <harvardelt.com>, <harvardcolleges.com>, <harvardcolleges.org>, <harvardkids.org>, and <harvardpublisher.org>, domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 18, 2015
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