The University of Durham v. Amit Matalia / C.I.T.
Claim Number: FA1311001529420
Complainant is The University of Durham (“Complainant”), represented by Paulina Lubacz, United Kingdom. Respondent is Amit Matalia / C.I.T. (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cem11plus.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2013; the National Arbitration Forum received payment on November 12, 2013.
On November 12, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <cem11plus.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2013 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@cem11plus.com. Also on November 13, 2013, 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.
A timely Response was received and determined to be complete on December 2, 2013.
On December 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant , Respondent uses the disputed domain name to sell educational materials and services which Respondent suggests are helpful to members of the public who intend to take (or have their children take) any of the tests supplied by Complainant. Complainant argues that Respondent has never legitimately used the term “CEM” to refer to anything other than Complainant and that Respondent would have no reason for using the term CEM in its domain name, but for Complainant’s reputation and provision of services. Complainant also considers that Respondent’s use of disclaimers on its website is not adequate to eliminate confusion on the part of Internet users, as users who search for Complainant online but are instead misdirected to Respondent’s site have already experienced initial interest confusion.
Finally, Complainant considers that the disputed domain name was registered and being used in bad faith and raises the following arguments:
a. Respondent’s former use of the <cem11plus.co.uk> domain name was to deliberately disrupt, damage, compromise, and undermine Complainant’s business. Respondent used the <cem11plus.co.uk> domain name to target Complainant’s clients in launching campaigns against the use of the Complainant’s services, attempting to discover the confidential contents of test papers supplied by Complainant and advertising what Respondent believes to be the contents, and encouraging individuals to use unnecessary third-party test opportunities as “mock” tests for their children to prepare for the tests administered by Complainant. Complainant has reason to believe that Respondent will use the disputed domain name to disrupt Complainant’s business through similar methods.
b. Respondent has registered the domain in question so as to be confusingly similar to Complainant's marks, for the purpose of confusing consumers seeking information relating to Complainant and its testing into instead visiting Respondent’s site, in the hope that consumers will subsequently be convinced to purchase Respondent’s services, thus allowing Respondent to achieve a commercial gain.
B. Respondent
Respondent considers that the disputed domain name is comprised of two generic terms and that the “CEM” acronym has multiple meanings in the UK and worldwide. Respondent argues that CEM stands for “Children’s Educational Material” in the context of the disputed domain name. Respondent considers that the true mark Complainant has used over the years is “CENTRE FOR EVALUATION & MONITORING” and not CEM. Respondent considers the disputed domain name not to be similar to this mark.
Respondent considers having rights or legitimate interests in the disputed domain name, as Respondent began using the brand “CEM 11+” before Complainant applied for a trademark to the common acronym “CEM,” and as Respondent has been known for products branded CEM 11+ for many months. Respondent also argues that he has used the disputed domain name in connection with a bona fide offering of goods or services from the day of registration and that any possible likelihood of confusion with Complainant is quashed by the disclaimers on Respondent’s website linked to the disputed domain name.
Respondent continues by refuting bad faith registration and use. According to Respondent there is nothing to suggest an intention on Respondent’s part to disrupt Complainant’s business. There would also neither be any evidence of disruption nor any reason to disrupt. Respondent contends that he has registered the disputed domain name before Complainant applied for the trademark “CEM” and that he could thus not have acquired this domain name with knowledge of Complainant’s rights in the “CEM” mark. Respondent also contends that he has no intention to divert consumers from Complainant’s site to Respondent’s site and there would be no evidence that Respondent’s use of the disputed domain name harms the goodwill of Complainant’s mark either for commercial gain or with intent to tarnish or disparage the mark by increasing a likelihood of confusion. In this respect, Respondent refers to a disclaimer that is posted on the website associated to the disputed domain name.
Finally, Respondent contends that Complainant is guilty of laches by allowing Respondent to use the disputed domain name without objection for over 9 months, during which time Respondent was acquiring rights to the disputed domain and that Complainant has engaged in reverse domain hijacking.
Complainant, the University of Durham, offers education services and has acquired the Centre for Evaluation and Monitoring for which it uses the abbreviation ‘CEM’. CEM is an independent provider of educational assessment and monitoring systems. Through CEM, the Complainant delivers paper and computer-based services to schools, trusts and local authorities in the United Kingdom. Those services include ’11 plus’ tests for ten and eleven-year old children, as part of the selection process for grammar school entry.
In connection with those services, the Complainant uses its CEM trademark which it has registered as a word mark with the UKIPO under number 00002654219 on February 8, 2013 in classes 41 and 42. Complainant also uses its figurative CEM Centre for Evaluation & Monitoring trademark which it has registered with the UKIPO under number 00002620085 on 4 May 2012.
The disputed domain name has been registered by Respondent on February 6, 2013.
Through the website linked to the disputed domain name, the Respondent offers services to prepare children for ‘11 plus’ tests against payment. The website contains the following disclaimer: “This is NOT the official website of CEM Centre for Evaluation & Monitoring® or the University of Durham® and this site has no connection or association with either organisation. The CEM Centre for Evaluation & Monitoring® does NOT sell any preparation material to the public nor does it endorse any products and it does not deal directly with the public.”
Complainant has previously challenged with success the registration and use by Respondent of the domain name <cem11plus.co.uk>.
Paragraph 15(a) of the Rules instructs this 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.
Complainant provides evidence of its trademark registrations with the IPO for the CEM mark (e.g., Reg. No. 2,654,219 registered August 2, 2013) and the CEM CENTRE FOR EVALUATION & MONITORING mark (Reg. No. 2,620,085 registered May 4, 2012). These trademarks are used by Complainant in connection with its services. In light of these registrations, the Panel considers that Complainant has established rights in the CEM and CEM CENTRE FOR EVALUATION & MONITORING marks under Policy ¶ 4(a)(i). See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant considers Respondent’s <cem11plus.com> domain name confusingly similar to Complainant’s CEM mark, as the domain name incorporates the mark combined with a term that relates directly to Complainant’s business. The Panel observes that the disputed domain name appends the term “11plus,” as well as the generic top-level domain (“gTLD”) “.com,” to Complainant’s CEM mark. According to Complainant, the term “11plus” in the disputed domain name refers to services Complainant provides related to “11 plus” tests administered to ten- and eleven-year-old children in the United Kingdom as part of the selection process for grammar school entry. The Respondent acknowledged that the term “11plus” refers to these types of tests. As a result, the additional term found in the disputed domain name is descriptive of services Complainant provides under a mark in which it has rights. Therefore, the Panel finds that Respondent’s <cem11plus.com> domain name is confusingly similar to Complainant’s CEM mark within the meaning of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent’s contentions that the <cem11plus.com> domain name is comprised of common and descriptive terms and its registration of the <cem11plus.com> domain name predates Complainant’s alleged rights in the mark, are not relevant under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)). See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has never legitimately used the term “CEM” to refer to anything other than Complainant, and that but for Complainant’s reputation and provision of services, Respondent would have no reason for using the term CEM in its domain name. Complainant also implies that Respondent has no connection to Complainant, and has not been given permission to use Complainant’s mark in a domain name. The Panel observes that there is insufficient evidence in the record to support the idea that Respondent is commonly known by the <cem11plus.com> domain name. In view of the above, Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent claims that it began using the brand “CEM 11+” before Complainant even applied for a trademark to the common acronym “CEM,” and that it has been known for products branded CEM 11+ for many months. However, the Panel observes that Complainant has been using the CEM sign already well before the registration of the disputed domain name and that Complainant’s ’11 plus’ tests are known as ‘CEM 11+ assessment’ or ‘CEM 11+ entrance assessment’.
Complainant asserts that Respondent uses the disputed domain name to sell educational materials and services which Respondent suggests are helpful to members of the public who intend to take (or have their children take) any of the tests supplied by Complainant. Complainant contends that Respondent intentionally choose a confusingly similar domain name for the purpose of tricking consumers who are seeking information relating to Complainant and its testing services into instead visiting Respondent’s site, in the hope that consumers will subsequently be convinced to purchase Respondent’s services. The Panel finds that such use of a confusingly similar domain name qualifies as neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <cem11plus.com> domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) (See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001), where the panel found no rights or legitimate interests in a disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to the resolving website offering credit card services unrelated to those services legitimately offered under the complainant’s mark.)
Complainant acknowledges Respondent’s use of a disclaimer on the website associated with the disputed domain name, but argues that such disclaimer does not negate the illegitimate nature of Respondent’s use of the disputed domain. Complainant urges that Respondent’s disclaimer is not adequate to eliminate confusion on the part of Internet users, as users who search for Complainant online but are instead misdirected to Respondent’s site have already experienced initial interest confusion. Previous panels have employed similar reasoning. See, e.g., AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”). The Panel agrees that Respondent’s use of a disclaimer does not insulate Respondent from an adverse finding pursuant to Policy ¶ 4(a)(ii).
Complainant asserts that Respondent formerly held the <cem11plus.co.uk> domain name, and used the domain to deliberately disrupt, damage, compromise, and undermine Complainant’s business. Complainant alleges that Respondent used the <cem11plus.co.uk> domain name to target Complainant’s clients in launching campaigns against the use of the Complainant’s services, attempting to discover the confidential contents of test papers supplied by Complainant and advertising what Respondent believes to be the contents, and encouraging individuals to use unnecessary third-party test opportunities as “mock” tests for their children to prepare for the tests administered by Complainant. Complainant argues that Respondent will use the <cem11plus.com> domain name to disrupt Complainant’s business through similar methods. Absent any evidence that Respondent has actually used the at-issue domain name in any of the above ways, however, the Panel declines to find that Respondent has exhibited bad faith under Policy ¶ 4(b)(iii) with regard to the at-issue domain name.
Complainant next alleges that Respondent has registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv). Complainant contends that Respondent has purposefully registered the domain in question so as to be confusingly similar to Complainant's marks, for the purpose of confusing consumers seeking information relating to Complainant and its testing into instead visiting Respondent’s site, in the hope that consumers will subsequently be convinced to purchase Respondent’s services, thus allowing Respondent to achieve a commercial gain. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel found evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv) where the respondent was appropriating the complainant’s mark in a confusingly similar domain name for commercial gain. The Panel here similarly finds that Respondent has exhibited Policy ¶ 4(b)(iv) bad faith with respect to Respondent’s registration and use of the <cem11plus.com> domain name.
While conceding that Respondent has included a disclaimer on its website, Complainant argues that such disclaimer does not negate Respondent’s bad faith in registering and using the <cem11plus.com> domain name. The Panel agrees that the initial interest confusion suffered when users searching for Complainant are instead redirected to Respondent’s site outweighs the effect of Respondent’s disclaimer. Therefore, the Panel concludes that the disclaimer cannot absolve Respondent of bad faith registration or use for the purposes of Policy ¶ 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
Doctrine of Laches
The Respondent argues that Complainant is guilty of laches by allowing Respondent to use the disputed domain name without objection for over 9 months. However, the Panel finds that the doctrine of laches does not apply as a defense, and correspondingly chooses to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Finally, as the Complainant has successfully proven bad faith registration and use, Respondent’s allegation of reverse domain name hijacking is without any merit.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cem11plus.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion Panelist
Dated: December 19, 2013
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