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Imperial College v. Christophe Dessimoz [2004] GENDND 662 (30 June 2004)

1. The Parties

Complainant is the IDEA League which has delegated this action to Imperial College, Exhibition Road, South Kensington, London, United Kingdom of Great Britain and Northern Ireland, represented by Dechert LLP, London, United Kingdom of Great Britain and Northern Ireland.

Respondent is Christophe Dessimoz, Cheseaux-Noreaz, Switzerland.

2. The Domain Names and Registrars

The disputed domain names <idealeague.com>, <idealeague.info>, <idealeague.net> and <idealeague.org> (hereinafter “Domain Names”) are all registered with Gandi SARL.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2004. On May 3, 2004, the Center transmitted by e-mail to Gandi SARL a request for registrar verification in connection with the Domain Names. On May 4, 2004, Gandi SARL transmitted its verification response by e-mail to the Center confirming that the Respondent is listed as the registrant and providing the administrative, billing, and technical contact details. Complainant filed an amendment to the Complaint on May 27, 2004. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 2, 2004. In accordance with the Rules, paragraph 5(a), the date due for Response was June 22, 2004. The Response was filed with the Center on June 4, 2004.

The Center appointed Anna Carabelli as the sole panelist in this matter on June 10, 2004, indicating that, absent exceptional circumstances, the decision would be due June 24, 2004.

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.

On June 22, 2004, the Panel issued a procedural order according to paragraph 12 of the Rules, requesting further documents/statements from Complainant to clarify the statement contained in the Complaint “ …The IDEA League, an unincorporated association which has delegated this action to Imperial College London” and to determine the legal entity which is legitimately entitled to receive the transfer of the Domain Names, in the event the decision should be in favour of Complainant, by specifying:

- whether (i) the IDEA League is a legal entity distinct from its members, capable of acting on its own and entitled to be owner of trademark rights and domain names and, if so, (ii) the ground on which Imperial College is acting in the proceedings;

- the position of the other three academic institutions that set up the IDEA League vis-à-vis the Complaint, in case the IDEA League has no capacity to act;

- whether paragraph V.12.A. “The Complainant’s domain name” refers to the IDEA League (i.e.: Complainant as identified in the Complaint) or to the Imperial College which results to be the registrant of the domain name “theidealeague.org.”

To this purpose, the Panel postponed the decision due date to June 30, 2004.

On June 29, 2004, Complainant, in compliance with the Panel’s order, submitted the following statement:

The IDEA League has been created by some of the world’s most prestigious technological universities to deal with development of science and technology learning. Institutions created by statute are not ideally suited to incorporating joint ventures or indeed creating EIGs. An informal flexible alliance suits much more appropriately the development of this kind of programme.”

4. Factual Background

By the Memorandum of Understanding attached to the Amendment to the Complaint as Annex F, on October 6, 1999, Complainant Imperial College and three other European academic institutions, ETH Zürich, Delft University of Technology and RWTH Aachen, set up a strategic alliance, called the IDEA League which is an unincorporated association under English law, as explained by the representative of Complainant by its submission dated June 28, 2004.

As attachment to Annex D, Complainant provided a copy of a press release dated December 5, 2000, regarding the establishment of this alliance. The IDEA League is meant to enable and encourage post-graduate studies at one of the other member institutions, exchange of ideas and expertise as well as development of joint activities between the member institutions.

The web site “www.theidealeague.org” reports the strategic alliance purpose, scholarship programs, activities undertaken as well as the background and developments since 1999, of the IDEA League (Annexes E and H to Amendment to the Complaint).

Complainant also provided a copy of the IDEA League newsletters of August 2002, and March 2004, which – amongst others –informs about a new partnership with international industries BP and Roche (Annex G to Amendment to the Complaint).

Complainant also submitted printouts of the Whois database according to which, as confirmed in the registrar verification response, Respondent registered the Domain Names from September 2001 through November 2003 (i.e.: on September 7, 2001, <idealeague.com> and <idealeague.org>, on November 3, 2003, <idealeague.net>, and on November 4, 2003, <idealeague.info> (Annex A to the Complaint).

As Annex to Response, Respondent submitted a printout of Respondent’s web site “www.idealeague.org” that shows the operation of an e-mail service primarily addressed to students or persons “related with universities of the IDEA League network.” At the bottom of the web page a disclaimer states: “idealeague.org is independent from the network of schools “IDEA League”, whose web site can be accessed here” (link to Complainant’s web site “www.theidealeague.org”).

In April 2003, there was an exchange of correspondence between Respondent and Dr.  Niedermann, a member of the IDEA League Advisory Group and Deputy Rector at the ETH Zürich. In reply to Dr. Niedermann’s request of April 1, 2003, to release the Domain Name <idealeague.org> (Annex to Response), Respondent offered to hand over the Domain Name in consideration of CHF 7,800 (see Respondent’s letter dated April 8, 2003, Annex C to the Complaint).

On January 7, 2004, Complainant’s solicitors wrote to Respondent requesting him, among others, to refrain from using the name THE IDEA LEAGUE and to transfer the Domain Names to Complainant in exchange for reimbursement of reasonable charges incurred.

Respondent is or was a student at ETH Zürich (which is a member academic institution of the strategic alliance the IDEA League), this fact being not contested by Respondent in his Response.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- since the set up of the IDEA League, which dates back to the Memorandum of Understanding of October 6, 1999, Complainant established “through a range of promotional work” international goodwill and reputation in the name of THE IDEA LEAGUE;

- such goodwill and reputation, in particular in the international academic field, is evidenced by the presentation of the IDEA League given on the occasion of the Institutional Management in Higher Education conference held in Paris in the year 2002, by the Organization of Economic Cooperation & Development (OECD) (Annex G to Amendment to the Complaint);

- the primary means of communication and promotion of this strategic alliance is the Internet, which enhances contacts with high profile industries, like BP and Roche, and this, again, proves the esteem in which the IDEA League is held (Annex G to the Complaint);

- in addition to such external reputation, the IDEA League increased also its internal goodwill and reputation among students attending its member academic institutions, who are entitled to take part in scholarship programs and international sports days (Annex H to Amendment to the Complaint);

- Complainant has established trademark rights in the name THE IDEA LEAGUE;

- the Domain Names are confusingly similar to the name and trademarks in which the Complainant has rights, the only difference lying in the absence of the word “the”;

- Respondent has no right or legitimate interest in the Domain Names since: (1) he was neither licensed nor otherwise permitted or authorized to use Complainant’s trademark; (2) there is no evidence of the Domain Names being used in connection with a bona fide offering of goods and services; (3) he does not make a legitimate non-commercial or fair use of the Domain Names, as the only active web site at the domain name <idealeague.org> is used to divert Internet users from Complainant’s web page; and (4) the disclaimer on Respondent’s web site does not remedy the infringing use of Complainant’s trademark;

- Respondent is a student of ETH Zürich, which is a member academic institution of the IDEA League;

- the Domain Names have been registered and are being used in bad faith since the Respondent: (1) intentionally created a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of his web site, in order to attract Internet users to it; (2) in accordance to paragraph 4(b)(i) of the Policy, registered the domain name <idealeague.org> primarily for the purpose of selling it to Complainant for valuable consideration in excess of costs directly related to the Domain Name; (3) intentionally created an initial interest of confusion to divert Internet users to his web site, which may harm the Complainant’s goodwill; and (4) pursuant to paragraph 4(b)(iii) of the Policy, registered the domain primarily for the purpose of disrupting the Internet users’ attention towards a competitor.

B. Respondent

Respondent contends that:

- Complainant has not registered the name IDEA LEAGUE or a similar one as a trademark;

- Complainant failed to give compelling evidence of its rights and reputation in said name so that it can be sufficiently deemed associated and identified with Complainant as an unregistered trademark, namely (i) despite the primary importance attached by Complainant to the Internet means, the domain name <theidealeague.org> has been registered only on October 25, 2002, a year later than the registration of Respondent’s domain names <idealeague.org> and <idealeague.com>; at the time of said registrations Complainant’s goodwill and reputation could not be widespread; (ii) even today THE IDEA LEAGUE name cannot be considered a trademark inasmuch the only proof given of external goodwill and reputation derives from the Complainant’s newsletters; and (iii) the alleged esteem of high profile industries should be rather traced back to the academic institutions standing behind the IDEA League than to the strategic alliance “the IDEA League” itself;

- Respondent has rights and legitimate interests in the Domain Names, since he has created an e-mail service at the web site “www.idealeague.org,” which proves his use of the above Domain Name in connection with a bona fide offering of goods and services according to paragraph 4(c)(i). With regard to the Domain Names <idealeague.com>, <idealeague.info> and <idealeague.net>, preventively registered by Respondent, the announcement “being under construction” must be considered sufficient evidence of use;

- the use of a disclaimer strongly contributes to reduce confusion;

- Respondent has not registered and is not using the Domain Names in bad faith since (i) his request of CHF7,800 for the transfer of the domain name <idealeague.org> was solicited by Complainant and therefore cannot constitute evidence of bad faith; (ii) the request for CHF7,800 hardly compensates for the overall costs of a domain name and should rather be deemed a sign of good faith; (iii) previous e-mails exchanged between Dr. Niedermann and Respondent have been omitted in the Complaint in breach of the certification of completeness and accuracy at paragraph 21 of the Complaint; and (iv) Complainant registered the domain name <theidealeague.org> more than one year after Respondent’s registration of the Domain Names, a circumstance which rules out Respondent’s intent to disrupt a competitor’s business.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to the complainant’s trademark or service mark; 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by respondent, shall be evidence of the respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar to a Trademark or Service Mark in which Complainant has Rights

Preliminary issue is whether Complainant has protectable rights in the mark to which it contends Respondent’s Domain Names are confusingly similar.

Complainant has not registered the name THE IDEA LEAGUE as a trademark, therefore the questions arise as to (i) whether the Policy applies to unregistered trademarks and (ii) whether the mark at issue has acquired sufficient distinctiveness through use and promotion to identify the source of this particular service with Complainant.

With regard to the first question, it is undisputed and accepted practice, that paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which the complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark. Further, the WIPO Final Report on the Internet Domain Name Process (The Management of Internet Names and Address: Intellectual Property Issues, April 1999), from which the Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. It is therefore open to conclude that the Policy is applicable to unregistered trademarks and service marks.” (The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; see also MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058).

Therefore, in the Panel’s view, the fact that in this case Complainant has no registered trademark or service mark for THE IDEA LEAGUE does not preclude a finding that it has established trademark or service mark rights in that name for the purpose of the Rules. Indeed, a fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered.

With regard to the second question (whether Complainant has common law trademark rights in the name THE IDEA LEAGUE), the Panel notices that common law trademark and service mark rights exist when a party proves that there is enough goodwill and reputation in and to a name and sufficient association of the same with the party itself, no matter how strong or weak those trademark and service mark rights may be (Action Sports Videos v. Jeff Reynolds, WIPO Case No. D2001-1239).

In the Panel’s view, based on the evidence provided (press release dated December 5, 2000, newsletters, printout of web pages from the idealeague.org), Complainant has successfully established that the name THE IDEA LEAGUE is being used since 1999, in connection with the strategic alliance made by four leading European universities to promote the development of joint activities and programs between the member institutions, thus reaching a sufficient level of goodwill at least within university circles and among students, especially those of the member institutions, who are the main addressees of the IDEA League program, together with industries engaged in scientific activities. In this connection, in the Panel’s opinion, conclusive evidence is given by the printout of Respondent’s web site page (attached to the Response) primarily addressing students related with the IDEA League alliance (“low cost, high performance, long term e-mail accounts to persons related with universities of the IDEA League network, in particular alumni students”), thus confirming wide spread reputation and goodwill of the IDEA League network at least among students, of which Respondent was certainly aware if he registered the Domain Names to operate an e-mail service specifically addressed to students related to the IDEA League network.

On the other hand, even if Complainant’s mark THE IDEA LEAGUE acquired goodwill and reputation only in a limited academic field, this would still be sufficient to establish common law trademark rights within the meaning of paragraph 1(a)(i) of the Policy. The Panel endorses the following observation of the Administrative Panel in Funskool (India) Ltd. v. funschool.com Corporation, WIPO Case No. D2000-0796, wherein it was stated as follows: “The Policy places no limitation on the operative extent of a trademark, which the Complainant must show the disputed domain name to be identical or confusingly similar to.”

Finally, the generic nature of the component word parts THE IDEA LEAGUE does not affect the specific secondary meaning acquired by the disputed mark through use and advertising by the Complainant (Eurobet Uk Ltd. v. Intergate, WIPO Case No. D2001-1270).

In the light of the above, the Panel accepts that Complainant has provided adequate grounds for a finding that it holds common law trademark and service mark rights in the name THE IDEA LEAGUE. That being stated, there is no doubt on the similarity of the Domain Names with Complainant’s common law trademark THE IDEA LEAGUE, the only difference lying in the absence of the definite article “the.”

B. Rights or Legitimate Interests

Paragraph 4(c) sets out in particular but without limitation three circumstances which if proved by respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to the respondent, the respondent’s use of, or demonstrable preparation 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial 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.

It has been consistently and repeatedly established by WIPO panels that “once a complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of proof on this factor shifts to respondent to rebut the showing” (see among others, Ditting Maschinen AG v. I.C.T. Company, WIPO Case No. D2003-0170; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784).

In the case at hand, it is clear that Complainant has never authorized or licensed Respondent to use Complainant’s trademark THE IDEA LEAGUE. Furthermore, Respondent does not contend that it has been commonly known by the Domain Names and has offered no explanation for his choice of that name.

Respondent contends that the creation of a low cost e-mail service at the web page “www.idealeague.org” constitutes evidence of the use of the domain name <idealeague.org> in connection with a bona fide offering of goods or services. In the Panel’s view, however, the bona fide which must characterize the offer of goods and services under paragraph 4(c)(i) of the Policy, completely fails here. The Panel cannot ignore the fact that Respondent, as a student of ETH Zürich, knew of the existence of Complainant’s trademark when he registered the Domain Names. In the Panel’s view, registering a domain name in such circumstances reveals Respondent’s intent to divert the public from Complainant to Respondent’s web page, to create a false impression of association with Complainant and to take commercial advantage of the potential for confusion. This cannot give rise to a right or legitimate interest in respect of the Domain Names.

With regard to the disclaimer, the mere fact that users, once so diverted or attracted, are confronted with a disclaimer, does not cure the initial and illegitimate diversion. As stated in Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, “Having attracted Internet traffic to his site by trickery, the Respondent cannot resort to disclaimers at the web site, however explicit, […] to clothe the domain name with legitimacy.” (see also Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869).

For the foregoing reasons, the Panel concludes that the second element under paragraph 4(a) has been established.

C. Registered and Used in Bad Faith

Under the Policy, Complainant is also required to prove the third element provided for in paragraph 4(a)(iii), namely that the Domain Names have been registered and are being used in bad faith.

As extensively set forth under paragraph B of this decision, the Panel agrees that Respondent has registered the Domain Names for the purpose of attracting for commercial gain Internet users to his web site by creating an initial interest confusion with Complainant’s mark as to its source, sponsorship, affiliation or endorsement, as stated in paragraph 4(b)(iv) of the Policy. In fact, Respondent, by using Complainant’s common law trademark, can derive a potential business opportunity from those visiting the web site “www.idealeague.org” expecting to find Complainant’s site.

Therefore the Panel concludes that also the third element under paragraph 4(a) has been established.

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 Names <idealeague.org>, <idealeague.com>, <idealeague.info> and <idealeague.net> be transferred to Complainant.

Anna Carabelli
Sole Panelist

Dated: June 30, 2004