The Complainant is West Coast University Inc, Delaware, United States of America, which claims to be doing business as West Coast University International, Inc. with an address in California, United States of America. The Complainant is represented by Muhammad Shahid, United States of America.
The Respondent is West Coast University Inc, of Panama City, Republic of Panama, represented by La Duke & Co, Republic of Panama.
The disputed domain name, <westcoastuniversity-edu.com> (the “First Domain Name”), is registered with Tucows Inc. The disputed domain name, <westcoastuniversity.edu.pa> (the “Second Domain Name”), is registered with Nic Panama. Together the disputed domain names are hereinafter referred to as the “Domain Names”.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2009. On July 20, 2009, the Center transmitted by email to Tucows Inc and Nic Panama a request for registrar verification in connection with the Domain Names. On July 20, 2009, Nic Panama transmitted by email to the Center its verification response and Tucows Inc transmitted by email to the Center its verification response on July 21, 2009.
In response to notifications by the Center that the Complaint was administratively deficient, the Complainant filed amendments to the Complaint on July 27, 2009 and July 28, 2009.
The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2009. The Response was filed with the Center on August 25, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 3, 2009. 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.
This proceeding is a sequel to WIPO Case No. D2009-0683, a proceeding between the same parties and in respect of the same domain names, a case about which the Panel has no information save that it was terminated at an early stage “without prejudice” to the filing of another complaint. The Complaint in the current proceeding relies upon some of the evidence exhibited to the complaint filed in the earlier proceeding.
There is a potential procedural issue relating to the language of this administrative proceeding insofar as it concerns the Second Domain Name, the registration agreement for which is in the Spanish language. Ordinarily this would mean that the language of the proceeding in relation to that domain name should be Spanish. However, following the Center's communications in relation to the language of the proceeding, the Respondent has not taken the point and has communicated fluently in the English language in relation to both domain names. The Panel is satisfied that there has been no prejudice to the Respondent in the proceeding having been conducted in the English language. Moreover, it is a convenient result given that the language of the registration agreement for the First Domain Name is English.
The Complainant was incorporated in Delaware on February 20, 2004. It claims to be doing business as West Coast University International, a company incorporated in California on August 29, 2005.
The Complainant (in the form of the Californian corporation) is the registered proprietor of United States service mark registration no. 0989917 (filing date December 10, 2008) for “education services, namely, providing courses of instruction at the post-secondary level”. The mark is a device mark comprising a shield and, beneath the shield, a ribbon. The shield features the letters, “WCU” and a block of 5 cubes. The ribbon features the words, “In God We Trust”, and between the shield and the ribbon is the word “International”. The mark is in the supplemental register1 and contains a disclaimer in respect of “WCU”.
The Complainant (in the form of the Californian corporation) is also the registered proprietor of United Kingdom trade mark registration no. 2504397 (filing date December 10, 2008), a substantially identical mark to the above United States service mark. It was registered on June 26, 2009.
The First Domain Name was registered on May 1, 2004 and the Second Domain Name was registered on January 18, 2007 if one relies upon Nic Panama's verification response to the Center or March 26, 2008 if one relies upon the information provided by the Respondent in paragraph A.1. of the Response. .
On September 6, 2005 the Complainant (in the form of the Delaware corporation, but using the address of the Californian corporation) registered the domain name, <westcoastuniversity.ie> in the name of “West Coast University of Delaware”2.
On May 18, 2008 the Complainant (in the name of West Coast University of Delaware) registered the domain name, <westcoastuniversityonline.us> in the name of the Californian corporation3.
On December 10, 2008 the Complainant (in the form of the Californian corporation) applied to register the United States service mark and United Kingdom trade mark referred to above.
On May 15, 2009 the Complainant's representative, writing on behalf of the Californian corporation, sent to the Respondent and others what is described as a legal notice alleging that the addressees have on the websites connected to the Domain Names infringed the Complainant's trade mark rights and demanding that the addressees cease and desist forthwith.
On May 16, 2009 the Complainant's representative, again writing on behalf of the Californian corporation, sent to the Respondent and others a further legal notice alleging that the addressees have defamed the Complainant on the Respondent's website connected to the First Domain Name and demanding inter alia an apology.
On June 26, 2009 the above-mentioned United Kingdom trade mark was registered.
On July 20, 2009 the Center wrote to the Complainant's representative drawing attention to a number of apparent inconsistencies in the original Complaint and seeking clarification. Amongst other things, the Center drew attention to the fact that the Complainant (in the form of the Delaware corporation) is a different legal entity and with a different address from the Californian corporation, the registered proprietor of the Complainant's claimed registered service mark rights, and invited the Complainant's representative to “provide any comment on these apparent differences and/or any additional supporting evidence for its claim of ownership of such marks (or assignment by, or license from, the listed owners, if applicable) it may wish to have put into the record”.
On July 25, 2009 the Complainant's representative replied “This is also our address of office in California for west coast university international and also Delaware office is to handle all legal matters relating to our correspondence. I hope it is now clear to you. Should you need further clarification, please feel free to contact me”. Needless to say, the response provided little clarification and further correspondence ensued, but to no practical effect.
The Complainant contends that the Domain Names are identical or confusingly similar to their trade marks (registered and unregistered).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant contends that none of the circumstances set out in paragraph 4(c) of the Policy is applicable.
The Complainant further contends that the Domain Names were registered and are being used in bad faith. The Complainant contends that “the sole purpose for registering and using the Domain Name [sic] is to trade on the goodwill associated with the Complainant's service marks and trade name and mislead the public into believing Respondent is a real school.” The Complainant goes on to contend that the Respondent is a fake school selling fake degrees and refers to evidence filed in WIPO Case No. D2009-0683 in support of that contention.
The Respondent does not deny that the Domain Names are similar to “the service mark allegedly owned by the Claimant [sic]”. However, the Respondent draws attention to the fact that the Domain Names were both registered before the service mark was applied for. The Respondent also points out that the Complainant's registered mark does not include the name “West Coast University”, but merely the initials “WCU”.
The Respondent observes that the Complainant has filed no evidence in support of its claim to common law rights in respect of the name “West Coast University” apart from its “.ie” and “.us” domain name registrations referred to in section 4 above.
The Respondent contends that it has been offering educational services since 2004 and produces various documentation purporting to show that it has been trading under its name in Panama since 2005. It acknowledges that its logo is substantially identical to the logo in respect of which the Complainant claims service mark rights, but contends that it is the Complainant, which is the plagiarist, and produces evidence which purports to show how the logo was derived from a logo originally used by an Australian company, West Coast Institute of Management & Technology, back in 1996. This Australian company is said to be a member of the group of companies of which the Respondent is a part.
The Respondent contends that it is making a legitimate and fair use of the Domain Names and denies that it is a fake school as alleged.
The Respondent denies that the Domain Names were registered and are being used in bad faith and contends that none of the sub-paragraphs of paragraph 4(b) of the Policy is applicable.
The Respondent contends that the Complaint was brought in bad faith and seeks a finding to that effect pursuant to paragraph 15(e) of the Rules.
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Names are 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 interest in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following passage, namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”
The first task for the Complainant is to establish that it has relevant trade mark or service mark rights. The Complainant claims both registered and unregistered rights.
As indicated in section 4 above there is an issue as to the nature of the association between the Delaware corporation in whose name the Complaint has been filed and the Californian corporation under whose name the Complainant claims to be doing business and which is the registered proprietor of the Complainant's service mark registrations upon which the Complainant relies. The Center invited the Complainant's representative to clarify the position. The response which is set out in section 4 above adds little by way of clarification, but for the purposes of this decision the Panel will assume that the two entities are closely associated and treats them as one.
The United States service mark registration upon which the Complainant relies is, of itself, of little assistance to the Complainant. The registration is in the United States Supplemental Register. Registrations in the Supplemental Register have been regarded by panelists as of little value in establishing trade mark or service mark rights under paragraph 4(a)(i) of the Policy in the absence of evidence of acquired distinctiveness.
“Where a mark is registered on the Supplemental Register, previous decisions under the Policy have found that a “Complainant must show that the mark is used as a trademark or service mark and in such use, the mark has acquired distinctiveness for the Complainant's goods or services” because “Registration on the Supplemental Register is an indication that the mark has not acquired distinctiveness, at least at the time of the registration.” Kip Cashmore v. URLPro, WIPO Case No. D2004-1023 (internal punctuation and citation omitted); see also The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438. As in Kip Cashmore, “[t]he record is devoid of any declarations of unaffiliated parties attesting that the mark of Complainant serves as an identifier of origin of services.” In this proceeding, the Complainant has provided no evidence to establish that the mark at issue has acquired distinctiveness.” [Doheny Plumbing, Inc. v. PAO Industries, Inc, WIPO Case No. D2007-1827]
More fundamentally, the mark in question is a device mark, which does not feature the name “West Coast University”, merely the acronym “WCU”4 and the Panel is somewhat surprised that the Respondent “will not argue that the domains registered by the Respondent are not similar to the service mark allegedly owned by the Complainant, we accept such allegation to be true.” The Panel does not regard the Domain Names and the “WCU” shield and ribbon device as being remotely similar.
The United Kingdom registration was introduced into the evidence by way of a supplemental filing. It does not suffer the same disadvantage as a mark registered on the United States Supplemental Register, but it does suffer the same fundamental flaw referred to in the previous paragraph in that it does not feature the name “West Coast University” or any name similar to “West Coast University”.
Accordingly, there being no relevant registered rights, the Complainant needs to be able to demonstrate the existence of common law or unregistered trade mark or service mark rights in respect of the name “West Coast University”. How can this be done? The answer is to be found in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which is available for inspection on the Center's website. Paragraph 1.7 of the Overview reads as follows:
“1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
Relevant decisions: Uitgeverij Crux v. W. Frederic Isler D2000-0575, Transfer Skattedirektoratet v. Eivind Nag D2000-1314 Transfer Amsec Enterprises, L.C. v. Sharon McCall D2001-0083, Denied Australian Trade Commission v. Matthew Reader D2002-0786, Transfer Imperial College v. Christophe Dessimoz D2004-0322 among others, Transfer”
The Complainant's claim to common law rights follows a very different course from that described in the above quote from the Overview. The relevant passage from the Complaint reads as follows:
“Moreover, Complainant has common law trade mark rights to WEST COAST UNIVERSITY due to the fact West Coast University Inc. was incorporated on 02.20-2004 whereas Respondent incorporated West Coast University Inc. in Panama on April 18, 2004.”
As the Respondent has correctly observed, the Complainant has produced no evidence to verify the length and extent of its use of the name “West Coast University”. It has produced documentation to show when the Delaware and Californian corporations were incorporated under their “West Coast University” names and it is also not in dispute that it registered the domain names <westcoastuniversity.ie> and <westcoastuniversityonline.us> on September 6, 2005 and May 18, 2008 respectively.
However, certificates showing dates of incorporation/registration give no information as to the nature and extent of the use of the names in question. The Panel has nothing before it to support a finding that the Complainant has common law or unregistered trade mark or service mark rights in respect of the name “West Coast University” or any similar name.
The Complainant has failed to satisfy the Panel that the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
In light of the finding under paragraph A above it is unnecessary for the Panel to address this issue.
In light of the finding under paragraph A above it is unnecessary for the Panel to address this issue.
The Respondent contends that the Complaint was made in bad faith. To succeed in this claim the Respondent must show that the Complainant has used the Policy, knowing that the Complaint was defective and ought to fail and with the intention of depriving the Respondent of the Domain Names unjustly.
Certainly, the Complaint was fatally flawed. The Complainant's service mark registration is not for the mark WEST COAST UNIVERSITY as asserted in the Complaint, but for a device mark featuring the acronym “WCU”. Furthermore the registration was applied for in December 2008, some 4 years after the date of registration of the First Domain Name and over 8 months after the date of registration of the Second Domain Name. The Complainant's claim to common law rights is woefully inadequate.
The Respondent contends that it has long been trading under and by reference to the West Coast University name and using its logo, the origins of which can be traced back to 1996. The Respondent contends that the Complainant, which is using a copy of the Respondent's logo, knew from the outset that its allegations were false and that the Complainant “has wasted everyone's valuable time by filing this Claim that has no other purpose than to try and misappropriate the domain names and the service mark of the Respondent.”
On the papers before him the Panel can see the force of the Respondent's contentions in this regard. The Panel has also been very concerned at the quality of the Complaint, which appears to have been drafted by someone with a less than complete mastery of both the English language and the papers in the case. The Complainant claims rights in respect of two service mark registrations, yet only refers to one of them in the Complaint, the evidence relating to the second coming in by way of a supplemental filing. The exhibits identified in the Complaint do not all match up to the numbers given for them. The heading “Registered and Used in Bad Faith” appears twice in the document and under the second such heading (at 7.1) there is a reference to a “section ‘7.A.3 above”, but there is no such section. There is also a reference to a reply to the Complainant's ‘cease and desist' letter in which the Respondent “effectively conceded to the cancelation of the two domain names”, but no such reply has been put before the Panel. The Complaint is also littered with some very serious allegations (including allegations as to criminal behaviour) about the Respondent, which are not supported by anything like the level of evidence that such allegations demand.
The Panel considered issuing a procedural order giving the Complainant a chance to respond to the allegation that the Complainant had been launched in bad faith and also to clarify some of the infelicities in the Complaint, but having seen the responses of the Complainant's representative to requests for clarification from the Center (one of which is quoted in section 4 above), the Panel is not persuaded that it would serve a useful purpose.
In these circumstances the Panel is of the view that the most expeditious way forward is for the Panel to issue the decision without further delay and to record the Panel's regret that the Complaint was issued in such a fundamentally flawed state. Whether this was due to intentional bad faith or mere incompetence, the Panel is unable to judge.
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: September 17, 2009