THE UNIVERSITY OF ALBERTA
V.
MICHAEL KATZ d.b.a. DOMAIN NAMES FOR SALE
[Indexed as University of Alberta v. Michael Katz]
[Indexed as: UNIVERSITYOFALBERTA.COM et al.]
WIPO Arbitration and Mediation Center
Case No: D2000 0378
Commenced: 3 May 2000.
Judgment: 22 June 2000.
Presiding Panelist: Dawn Osborne
Domain name - Domain name dispute resolution policy - Trademark - Identical - Confusingly similar - Late response - Addendum to complaint - No legal right is no legitimate right - Presumption of bad faith where respondent is in business of speculation regardless of use.
Complainant is the owner of the trademark University of Alberta. Respondent registered ALBERTAUNIVERSITY.COM, UOFALBERTA.COM, UNIVERSITYOFALBERTA.COM, AND ALBERTAU.COM. Complaints were only registered against the last two. Respondent filed response late but was accepted, addendum to complaint adding missing domain names was not. Respondent is in the separate business of domain name speculation and creating a site for university students.
Held, Name Transferred to Complainant.
The late response was accepted because the response was only one day late and received before any substantive review of the case began, and before the panelist was appointed.
Complainants addendum to Complaint adding ALBERTAUNIVERSITY.COM and UOFALBERTA.COM to the proceedings was rejected on the grounds that the Respondent did not have a fair time to respond. Further, the addendum was partially incorrect (one site only was confirmed to have been registered after the complaint was filed), Rules and past decisions allows additional submissions at the sole discretion of the panelist.
The Domain names and trademark is confusing is obvious and conceded. No legitimate right or interest to the trademark could exist where both countries are governed by the same law denying such right to anyone but the registered holder.
Bad faith use and registration established when acquired primarily for the purpose of selling or renting the trademark for consideration in excess of the Respondents costs. As the respondent owned a domain name speculation business this purpose is reasonable to conclude. Furthermore, knowledge that confusion would occur is evidence of bad faith registration. The presence of a disclaimer to dispel confusion was irrelevant as it was inconspicuous.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Registration Agreements referred to
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Cases referred to
Talk City Inc, v. Robertson ICANN Case No. D2000-0009
Easyjet Airline Co. Limited v. Steggles ICANN Case No. D2000-0024
Panel Decision referred to
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1. The Parties
Complainant: The Board of Governors of the University of Alberta of
610, Students Union Building, Edmonton, Alberta, Canada. Represented by
Field Atkinson Perraton of 2000, 10235 101 Street, Edmonton, Alberta, Canada
T5J 3G1.
Respondent: Michael Katz d.b.a. Domain Names for Sale, 844 King Street
West, Toronto, Ontario, Canada MV5 1P1
2. The Domain Name(s) and Registrar(s)
Domain Names:
universityofalberta.com
albertau.com
Registrar: Network Solutions Inc
3. Procedural History
The Complaint was filed on May 3, 2000. WIPO has verified that the
Complaint satisfies the Rules and the Supplemental Rules and that payment
was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with paragraph 2
(a) of the Rules. However, a Response was not filed by the due date. A
late Response was filed on June 5, 2000, the same date as Notification
of Respondent Default. E-mails were sent by the Complainant and Respondent
to WIPO on June 6, 2000. A supplemental Submission was filed by the Complainant
on June 9, 2000.
The administrative panel was properly constituted on June 13, 2000.
The undersigned panelist submitted a Statement of Acceptance and Declaration
of Impartiality and Independence. The date scheduled for the issuance of
the Panels decision is June 26, 2000.
As a preliminary issue the panelist must determine whether or not the
late Response should be considered. The Complainant protested at the submission
of the late Response by the Respondent. However, after consideration of
Talk City Inc, v. Robertson ICANN Case No. D2000-0009, the panelist has
considered the contents of the late Response on the grounds that it was
only one day late and was received before the panelist was appointed and
before any substantive review was begun.
As a further preliminary issue the Panelist must decide whether or
not to accept the addendum to the Complaint filed June 9, 2000, after receipt
of the late Response. The addendum to the Complaint seeks to add the names
albertauniversity.com and uofalberta.com to the Proceedings on the basis
that they were registered after the Complaint was filed. The Respondent
asserts and the panelist has independently verified that albertauniversity.com
was, in fact, registered on January 14, 2000, before the original Complaint
was filed. Further, the panelist is of the view that the additional names
cannot be added into the proceedings as the Respondent has not been given
a fair opportunity to put its case with regard to these names, the addendum
being filed after the formal Response. In any event, the panelist has regard
to the previous decision Easyjet Airline Co. Limited v. Steggles ICANN
Case No. D2000-0024 and Paragraph 12 of the Rules which hold that additional
submissions are only allowable at the Panels request in its sole discretion.
The addendum to the Complaint was not requested by the panelist and will
not be admitted.
4. Factual Background
The Complainant is the governing body of the post-secondary institution
the University of Alberta, a university founded and operated continuously
under that name in Edmonton, Alberta since 1908.
The Complainant is also the owner of UALBERTA, a registered trade mark
in Canada and an application in the United States for, inter alia, educational
and research services.
The Complainant is the registered proprietor of the following domain
names:
UNIVERSITYOFALBERTA.NET
UNIVERSITYOFALBERTA.ORG
UALBERTA.COM
UALBERTA.CA
The Respondent is not associated with the Complainants institution,
has not sought the consent of the Complainant for Registration of the Domain
Names and does not operate a university in Alberta. The Respondents trading
name is "Domain Names for Sale".
The Respondent attached to the UNIVERSITYOFALBERTA.COM name a page
indicating this name was for sale. The site also linked to a "domain names
for sale" service.
Both Domain Names were linked to a site owned by the Respondent UC411.com
which promotes information, goods and services directed towards post secondary
students.
On March 29, 2000, a representative of the Complainant sent an e-mail
to the Respondent inquiring about obtaining the UNIVERSITYOFALBERTA.COM
name. The Respondents Reply said "just following up re your request for
universityofalberta.com. Thanks Michael Katz."
5. Parties Contentions
A. Complainant
The Complainant submits that the Domain Names are identical or confusingly
similar to its trade marks, that the Respondent has no rights or legitimate
interest in respect of the Domain Names and finally that the Domain Names
have been registered and used in bad faith.
The Complainant asserts that because no party other than the Complainant
can have a legitimate right to use the Domain Names under Section 54(2)
of the Universities Act of Alberta, RSA 1980 and Section 9 (1) (n) (ii)
of the Trade Marks Act of Canada, RSC 1985, the marks cannot be used by
any other party than the Complainant. Accordingly, the only purpose the
Respondent could have by registering them would be to sell them to the
Complainant. Indeed, the Respondent is in the domain name speculation business.
Further, the Complainant argues that the overlap between the goods
and services of the Complainant and Respondent increases any likelihood
of confusion in the minds of the public due to use of the Domain Names
and demonstrates that the Respondent has intentionally used the marks of
the Complainant to attract Internet users to the Respondents web site
and to create a likelihood of confusion with the Complainants marks as
to the source, sponsorship, affiliation or endorsement of the Respondents
web site and the commercial activities carried on therein. The Complainant
says that the Respondents activities are commercial and therefore cannot
be fair use.
The Respondent says that the lack of a stated price for the domain
in the e-mail reply from the Respondent to the Complainant and the attempt
to maintain the anonymity of the registrant of the Domain Names is surreptitious.
B. Respondent
The Respondent admits it is possible that the Domain Names are identical
or confusingly similar to the Complainants trademarks. He does, however,
assert that he makes it clear that his site is not affiliated with any
school or institution.
The Respondent states that it did not register the Domain Names in
an effort to sell them to the Complainant nor did he register them to sell
merchandise bearing the Complainants logos. The Respondent says that he
registered the names to use them in relation to his web site UC411.com
"The Ultimate University and College Info-Site" which contains information
related to the Schools and Colleges of Canada for students and their parents.
He says the site will offer a place for students to chat and to find the
various sites of educational establishments. He says that he is offering
a very valuable service to the education seeking population.
The Respondent says that the fact that he sells domain names is irrelevant
to this case. He says the strange nature of his e-mail Reply to the Complainant
is explained by the fact that he had obviously confused two e-mails and
that this was an error.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure
Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade
mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect
of the domain name; and
(iii) The Domain Name has been registered and is being used in bad
faith.
A. Identical or confusing similarity
The Domain Names are confusingly similar to the Complainants trademarks.
The Respondent concedes in his Response that it is possible that confusion
could be caused between them.
B. Rights or legitimate interest of the Respondent
The panel finds that since the Domain Names could not be used by anyone
except for the Complainant under Canadian law, the Respondent cannot have
any rights or legitimate interests in the Domain Names.
C. Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which
shall be evidence of the registration and use of a domain name in bad faith
as follows:
(i) the Respondent has registered or has acquired the domain name primarily
for the purpose of selling, renting, or otherwise transferring the domain
name registration to the complainant who is the owner of the trade mark
or service mark or to a competitor of that complainant for valuable consideration
in excess of the Respondents documented out-of-pocket costs directly related
to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent
the owner of the trade mark or service mark from reflecting the mark in
a corresponding domain name, provided that the Respondent has engaged in
a pattern of such conduct: or
(iii) the Respondent has registered the domain name primarily for the
purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted
to attract, for commercial gain, Internet users to its web site or other
on-line location, by creating a likelihood of confusion with the complainants
mark as to the source, sponsorship, affiliation, or endorsement of its
web site or location or of a product or service on its web site or location.
The Respondent is clearly in the business of domain name speculation.
The registered proprietor of both Domain Names is recorded as "Domain Names
for Sale". This is sufficient without considering the use of the sites
to convince the panelist that the Respondent registered the Domain Names
primarily for the purpose of selling the names for a profit and in bad
faith.
The Respondent was obviously aware of the existence of the Complainant
and must have known that registration of the Domain Names would prevent
them from similarly reflecting their name and disrupt their business. His
registration of more than one University of Alberta related domain name
and his business of domain name speculation suggests a pattern of conduct.
The Respondent must have known that his site would attract people looking
for the official site of the Complainant and admits that the Domain Names
may be confusingly similar. Disclaimers, especially disclaimers in small
type are not always effective to dispel confusion and the disclaimer from
the Respondents site reproduced in the Appendix to the Response is small
and appears at the end of a long list of information.
Accordingly, having considered the Complaint and Response the panelist
is of the view that the Respondent has registered and used the Domain Names
in bad faith.
This decision will not prevent the Respondent from carrying on his
business under his main domain name UC411.com.
7. Decision
In the light of the foregoing the panelist decides that the Domain
Names are confusingly similar to the Complainants trade marks and the
Respondent has no rights or legitimate interests relating to the Domain
Names which were registered and used in bad faith.
Accordingly, in the light of the above, the panelist requires that
the registration of the Domain Names UNIVERSITYOFALBERTA.COM and ALBERTAU.COM
BE TRANSFERRED to the Complainant.