WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Chancellor, Masters and Scholars of the University of Cambridge v. Kirkland Holdings LLC
Case No. D2015-1278
1. The Parties
The Complainant is The Chancellor, Masters and Scholars of the University of Cambridge of Cambridge, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Kirkland Holdings LLC of Brookline, Massachusetts, United States of America (“United States”), represented by John Berryhill, Ph.d., Esq., United States.
2. The Domain Name and Registrar
The disputed domain name <cambridge.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2015. On July 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 July 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2015. On August 17, 2015, the Respondent requested an extension of the Response due date and, subsequent to the receipt of the Complainant’s reply to this request, on August 18, 2015, the Center extended the Response due date to August 22, 2015. The Response was filed with the Center August 22, 2015. The Complainant filed an unsolicited supplemental filing on September 2, 2015.
The Center appointed Luca Barbero, Richard G. Lyon and Tobias Malte Müller as panelists in this matter on September 14, 2015. The Panel finds that it was properly constituted. Each member of 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.
The Respondent submitted an unsolicited reply to the Complainant’s Supplemental Filing on September 22, 2015.
On September 23, 2015, the Panel, having reviewed the case file, issued an Administrative Panel Procedural Order (“Panel Order No. 1”), by which it admitted the Complainant’s Supplemental Filing to the extent only that it replied to the Respondent’s application under paragraph 18(a) of the Rules to terminate or suspend this proceeding, and the Respondent’s Supplemental Filing as to parts I and IV. The Panel thereby also extended the decision due date to October 9, 2015.
4. Factual Background
The Complainant is the University of Cambridge, which was founded over 800 years ago and is a world-renowned institution of excellence in the fields of academia, teaching, research and culture.
The Complainant is the owner of several trademark registrations incorporating the term “Cambridge”, including the following:
- International Trademark registration No. 000088179 for CAMBRIDGE (word mark), registered on April 1, 1996, in classes 9 and 16;
- Community Trade Mark registration No. 000774026 for CAMBRIDGE (word mark), registered on July 15, 2002, in classes 9, 16 and 41;
- United Kingdom Trademark Nos. UK00001567796 for CAMBRIDGE (word mark), registered on October 31, 1994, in class 16; UK00002023166 for CAMBRIDGE (word mark), registered on June 8, 1995, in class 9; UK0002145422B for CAMBRIDGE (word mark), registered on September 19, 1997, in classes 9, 16 and 41;
- United States Trademark Nos. 1365532 for CAMBRIDGE (word mark), registered on October 15, 1985, in class 16; 4445668 for CAMBRIDGE ENGLISH (word mark), registered on December 10, 2013, in classes 9,16 and 41; and 1396708 for CAMBRIDGE UNIVERSITY PRESS (word mark), registered on June 10, 1986, in class 16.
The Respondent is the owner of the United States trademark application Nos. 86299705 for CAMBRIDGE.COM EVERYTHING CAMBRIDGE, UK (word and device), filed on June 4, 2014, in International class 35, and 86299704 for CAMBRIDGE.COM EVERYTHING CAMBRIDGE, US (word and device), filed on June 4, 2014, in International class 35.
On May 7, 2015, the Complainant filed with the United States Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) the first of successive extensions of time to oppose the Respondent’s applications. On August 5, 2015, the Complainant filed Oppositions against said applications.
The disputed domain name <cambridge.com> was first registered on September 21, 1992. According to the historical WhoIs searches conducted by the Complainant and as confirmed by the Respondent, the disputed domain name was owned by entities other than the Respondent prior to 2010.
At the time of the drafting of the decision, the disputed domain name is pointed to a website providing a wide variety of information from different areas (such as tourism, accommodation, restaurants, education etc.), related to the cities of Cambridge, United Kingdom, and Cambridge, Massachusetts, United States.
5. Parties’ Contentions
A. Complainant
The Complainant claims to be the owner of extensive rights in the trademark CAMBRIDGE and in various other trademarks incorporating the term “Cambridge”, including but not limited to the trademark registrations attached listed in Annex 3 to the Complaint.
The Complainant states that it has a significant reputation and has built up a vast amount of goodwill in the CAMBRIDGE trademark in the United Kingdom and abroad, and submits the following to support its allegations:
- The publishing business of the University of Cambridge, Cambridge University Press, is the world’s oldest publisher and has made the name “Cambridge” well-known worldwide for publishing and publications, both paper and electronic;
- Through the Cambridge English Language Assessment and the Cambridge International Examinations, the name “Cambridge” has become an extremely high profile name worldwide in association with language teaching and assessment for all ages from five years to adult;
- The University has an extensive licensing program marketing CAMBRIDGE merchandise worldwide, including clothing, stationery, gifts and home-ware;
- The annual Oxford-Cambridge boat race in London is televised and draws a huge amount of attention and publicity, as a feat of real sporting excellence;
- Every Christmas Eve, BBC Radio 4 broadcasts on its World Service (available worldwide) a Festival of Nine Lessons and Carols from the University of Cambridge Kings College Chapel, whose choristers are recognized as among the finest in the world;
- Many world-famous actors and comedians are well-known to be Cambridge University graduates who developed their early talent in the University’s Footlights drama club. Former presidents of the club include such household names as Eric Idle, Peter Cook, Hugh Laurie and David Mitchell;
- The University is internationally famous as one of the world’s oldest and most prestigious seats of learning.
The Complainant contends that the disputed domain name <cambridge.com> is identical to its CAMBRIDGE trademarks and similar to its registered trademarks including “Cambridge” alongside other elements.
With reference to the Respondent’s rights or legitimate interests in the disputed domain name, the Complainant states that the Respondent’s United States trademark applications for CAMBRIDGE.COM EVERYTHING CAMBRIDGE, UK and device and CAMBRIDGE.COM EVERYTHING CAMBRIDGE, US and device do not endow the Respondent with rights or legitimate interests in the disputed domain name since:
- The applications were filed in June 2014, 12 years after the registration of the disputed domain name, and the timing of the filing coincides with the Respondent’s attempts to sell the domain, via an agent, to the Complainant, this circumstance highlighting that the Respondent planned to use the trademark applications not for genuine trade purposes but to enhance the value of the disputed domain name so that a higher than usual price could be sought;
- The Respondent wanted to use the trademark applications to secure for itself a right in the disputed domain name before contacting the Complainant so that the Complainant would be deterred from filing a UDRP complaint;
- The Complainant has filed for extensions of the opposition deadline in respect of both trademark applications and intends to file opposition so that the applications are refused, on the basis of the Complainant’s extensive trademark rights, thus the trademark applications will never become registrations, and will never constitute a right or legitimate interest in respect of the disputed domain name;
- The specification of the services for the trademark applications states that the intention is to “generate sales traffic via hyperlinks to other websites”, in other words the purpose of the disputed domain name is to operate as a “pay-per-click” (“PPC”) site, not as a business in itself;
- The trademark applications specifically disclaim any exclusive right in “cambridge.com”.
The Complainant also states that the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services, neither have there been any demonstrable preparations to use the disputed domain name in such a way since it is primarily used and intended to be used to divert Internet traffic away from the Complainant, as well as away from other parties.
The Complainant further alleges that the Respondent does not appear to be operating any legitimate business using the disputed domain name, as it resolves to a website that provides links to other parties’ genuine businesses, including links related to goods and services in respect of which the Complainant has trademark value, such as education, e-learning, colleges, Cambridge University and books. The Complainant also submits that the information about the United Kingdom and United States cities of Cambridge included in the Respondent’s website has been added purely to bulk out the website and give it the veneer of a genuine business, but on closer inspection it is clear that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
With reference to the circumstances evidencing bad faith, the Complainant contends that, at the time of the registration of the disputed domain name by the Respondent, the Complainant had established international trademark rights and enjoyed international fame and an international reputation in its trademark rights, in particular in connection with the publications of its Press, Cambridge University Press. In view of this fact and of the circumstance that the Respondent’s website refers frequently to the Complainant, the Complainant concludes that it is impossible that the Respondent did not know of the Complainant’s rights at the time of the registration of the disputed domain name.
The Complainant also submits that the disputed domain name was registered by the Respondent in bad faith for the purpose of selling it and, until then, by parking it and using it to generate revenue through PPC traffic, as the specification of the Respondent’s trademark applications would demonstrate, and to disrupt the Complainant’s business by diverting Internet traffic seeking the Complainant’s websites and routing it to other sites via the PPC links. The Complainant also asserts that the publication of PPC links serves the dual purpose of generating revenue for the Respondent and increasing the Complainant’s fears that the disputed domain name in the Respondent’s hands is doing harm to the Complainant’s business, thus enabling the Respondent to seek a very high price for the sale of the disputed domain name to the Complainant.
The Complainant informs the Panel that the Respondent’s sales representative made contact with the Complainant, which was then attempting to purchase the disputed domain name, and also offers the disputed domain name for sale on its website at the minimum asking price of USD 750,000. The Complainant thus concludes that the Respondent acquired the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
The Complainant also states that the website published at the disputed domain name targets the Complainant’s business, since there are pages specifically titled “books”, “E-learning”, “Cambridge University”, “online colleges”, “learning languages” as well as English Language Assessment products of the Complainant. Therefore, the Complainant concludes that the Respondent is also attempting to divert Internet traffic away from the Complainant and other parties, by creating a likelihood of confusion with the Complainant’s name and trademarks as to the source, sponsorship, affiliation, or endorsement of the website and the products and services listed in the links, and in this way profit from its PPC advertising that targets the main goods and services for which the Complainant is known.
The Complainant also contends that the publication of small disclaimers at the bottom of the pages about the Complainant’s colleges and publisher is additional evidence of the Respondent’s bad faith.
B. Respondent
The Respondent states that this dispute concerns a geographic term which was registered and extensively used by the Respondent consistent with its significance as a location in the United Kingdom and in Massachusetts, United States, and that it has expended considerable effort and expense developing the disputed domain name since acquiring it in 2010 for USD 85,000.
The Respondent first requests that the Panel terminate the proceeding under Rules, paragraph 18(a), asserting that this proceeding is an attempt to obtain a prejudicial advantage in the opposition brought by the Complainant prior to the filing of the Complaint before the USPTO in connection with two United States trademark applications filed by the Respondent for CAMBRIDGE.COM EVERYTHING CAMBRIDGE, UK (word and device) and CAMBRIDGE.COM EVERYTHING CAMBRIDGE, US (word and device).
The Respondent states that its trademark applications are evidence of both bona fide use and substantial preparations to use the disputed domain name consistent with its geographical meaning, and highlights that the term “Cambridge” is disclaimed in the applications and is a geographic descriptor used by the Respondent for a wealth of information about the cities of Cambridge in the United Kingdom and United States, which are both coincidentally associated with educational institutions and are also tourist attractions.
The Respondent claims to be using the disputed domain name to provide guides to the cities of Cambridge, in the United Kingdom and United States, comprising over 1,000 pages on a wide variety of relevant subjects. The Respondent underlines that the site is supported by a range of advertising for flight bookings, hotel bookings, and the Respondent’s specifically contracted advertisers in addition to “Adsense” inclusions provided by Google on an automated basis.
The Respondent highlights that its trademark applications were filed for “Marketing services, namely, providing informational web pages designed to generate sales traffic via hyperlinks to other websites; Providing information about and making referrals in the field of consumer products and services for retail services concerning products, services, events, activities, attractions and facilities in particular geographic locations”, and that the USPTO, having examined the applications and specimens of use, determined the Respondent to be using the Respondent’s marks in commerce for the recited purposes, found, upon conducting a search, no conflicting registered marks, and passed the application to allowance.
In view of the above, the Respondent contends that its use of the disputed domain name is bona fide and non-infringing.
The Respondent denies to have registered the disputed domain name in bad faith and states that it intended to obtain geographically descriptive domain names in his locality and develop them as local advertising supported platforms for visitor information and resource guides. Since he was born in Brookline, he acquired <brookline.com> in July 2010 for USD 50,000 and, afterwards, bought the disputed domain name for USD 85,000, in September 2010, registering it using its informal business name “MHL” and its postal and email addresses, afterwards amending the data with the ones of its company, which is the present Respondent.
The Respondent therefore highlights that it developed, used and filed for registration the “CAMBRIDGE.COM” logos in June 2014 to protect the value invested in developing the corresponding website.
As to the offer for sale made to the Complainant by a broker entrusted by the Respondent, the Respondent claims that the Complainant was only one of the possible interested parties contacted by the broker and that, therefore, the Complainant was not specifically targeted by the Respondent.
C. Complainant’s Supplemental Filing
The Complainant requested that its Supplemental Filing be admitted into the present proceeding since:
- The Complainant could not have known that the Respondent’s request for suspension or termination of the proceedings would be raised by the Respondent and could not therefore have addressed the issue in the original Complaint;
- It will severely impact on the Complainant’s ability to enforce its rights if the proceedings are suspended or terminated;
- The Respondent’s submissions suggest and imply that the Complainant’s motives for filing this Complaint are to prejudice the USPTO trademark oppositions but this is not the case.
The Complainant submits that its trademark oppositions relate to notional use of CAMBRIDGE.COM EVERYTHING CAMBRIDGE US & device and CAMBRIDGE.COM EVERYTHING CAMBRIDGE UK & device (which have specifically had the “cambridge.com” element disclaimed in each case) in respect of the class 35 services listed in the specification of each trademark application, while the present UDRP proceeding relates to the registration and actual use of the disputed domain name in respect of a specific range of subject matter, including books, e-learning, the Complainant’s own institutions, and the other goods and services targeted and offered at the Respondent’s website.
The Complainant alleges that the outcome of the UDRP case can in no way be prejudicial to the outcome of the trademark oppositions since the issues to be decided in each case, and the evidence produced for each case, are different.
The Complainant states that it wrote to the Respondent before filing the opposition to suggest that the parties could jointly agree to extend the opposition period for the trademarks for an additional 60 days, because the Complainant “takes the view that the outcome of the UDRP will inform them as to whether it is necessary or appropriate to oppose the trademark applications”, but the Respondent rejected that offer and the Complainant thus opted to file the oppositions.
The Complainant also claims that, in terms of a “first filed” principle, the UDRP Complaint was filed before the trademark oppositions, since the extension of the opposition deadline at the USPTO does not constitute an initiation of legal proceedings.
D. Respondent’s Supplemental Filing
In its Supplemental Filing, the Respondent underlines that, in accordance with the schedule set by the USPTO, the Respondent has filed answers in the respective opposition proceedings, along with a motion to consolidate the proceedings. The Respondent also states that the Parties are due to confer on a discovery plan by October 14, 2015.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Preliminarily, this Panel acknowledges its discretion to admit or reject supplemental submissions filed by the parties in accordance with the circumstances of the case (see WIPO - of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO - 2.0”), paragraph 4.2.). Whereas one of the main matters addressed by the Respondent referred to the applicability of Rules, paragraph 18(a), which was understandably not addressed in the initial Complaint, it is reasonable to allow the Complainant to present its arguments on this relevant matter. As a result, there are no reasons to reject the supplemental submissions presented by the Complainant on September 2, 2015, whose argumentation is restricted to only the application of that Rule. Similarly, in attention to the imperatives of equity and fair opportunity, this Panel also admits the reply to the Supplemental Submissions filed by the Respondent on September 22, 2015.
Further, this Panel has to consider the application of Rules, paragraph 18(a), which provides that “in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”. As stated in the record, there are two oppositions filed by the Complainant at the TTAB against Respondent’s trademarks. Although these oppositions should be considered as “legal proceedings” under the abovementioned Rule, this Panel agrees with the Complainant that the TTAB proceedings will only be marginally impacted by the decision on the merits in this proceeding, if at all, since the issues to be decided in each case are different and the evidence produced for each case is likely to be different. This case essentially deals with the transfer of the disputed domain name in accordance with paragraph 4(a) of the Policy, and this issue will not be addressed by the USPTO in the course of its proceedings. Furthermore, although this Panel recognizes the importance of procedural economy, the mere possibility of filing further administrative or judicial proceedings cannot by itself justify the suspension of the UDRP proceedings, especially when the Panel considers that it already has enough information to make a decision on the merits, as in this case.
Against this background, paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademarks containing the verbal element “Cambridge” isolated or combined with other elements. Reference is made, for instance, to International Trademark registration No. 000088179 for CAMBRIDGE (word mark), registered on April 1, 1996 and Community Trade Mark registration No. 000774026 for CAMBRIDGE (word mark), registered on July 15, 2002. The alphanumeric string in the disputed domain name consists therefore of the Complainant’s trademark in its entirety. According to a consensus amongst UDRP panels, the applicable Top-Level Domain suffix “.com” in the disputed domain name is generally to be disregarded under the confusing similarity/identity test.
In the light of the above, the Panel finds that the disputed domain name is identical to a trademark to which the Complainant has rights.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name.
First of all, the Panel emphasizes that the term “Cambridge” itself does not have a high degree of distinctiveness or originality, since it refers to geographical locations in the United Kingdom and the United States. Thus, the use of this term may not be forbidden to other companies, whether they are direct competitors of the Complainant, or active in other business branches. Since “Cambridge” is a well-known geographical reference, it is not terribly surprising that other companies may have an interest in using this term in their business or to register it as a compound of a domain name.
The evidence before this Panel demonstrates that, regardless of the date to be deemed as the beginning of the activities on the website (2010 or 2012), the Respondent has used the disputed domain name in the context of its travel and exchange-related business, offering information about education, accommodations, restaurants and courses etc. for interested consumers. The use of the disputed domain name for business purposes began before any notification from the Complainant regarding any possible illegal conduct by the Respondent.
In addition, it results from the evidence presented to the Panel that the content of the website, unlike the description presented by the Complainant, is not likely to misleadingly divert consumers or to tarnish the trademark at issue. In fact the website clearly differentiates between geographical areas covered by the Respondent’s business (Cambridge, United States and Cambridge, United Kingdom). Accessing the page “Cambridge, UK”, the user is faced with a wide variety of information from different areas (tourism, accommodation, restaurants, education etc.). There are no elements that lead the user to make a direct connection between the service available on the website and the Complainant, which is stressed by the fact that the Respondent expressly informs, in the texts related to the University of Cambridge, that there is no link between the website and the Complainant. Moreover, the content available on the website is merely informative, and there is no element that is likely to tarnish the Complainant’s trademark.
Against this background, this Panel is ready to acknowledge a legitimate interest of the Respondent in respect of the disputed domain name. For this reason, the Complainant is not deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel proceeds to the analysis of the third element even though the second UDRP element is already not proved to be present.
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
This Panel does not disregard that a continued attempt to sell a domain name for a price that indicates that the Respondent was targeting the Complainant may constitute an indication of bad faith by the domain name owner in the sense of paragraphs 4(a)(iii) and 4(b) of the Policy. However, the Panel has to consider all the evidence before it in order to find conclusions about the intentions of the Respondent and the above indication is not sufficient to effectively prove the Respondent’s bad faith.
Firstly, it is to note that the website presently available under the disputed domain name represents primarily a travel or travel-related website, while the Complainant’s activity is essentially related to education and publishing. Therefore, the first finding is that the Respondent is not a competitor of the Complainant for purposes of the Policy.
Secondly, the Complainant is not directly targeted in the Respondent’s website. As an informative site, the website available under the disputed domain name makes references to several other institutions and companies operating in different areas. The emphasis given to the University of Cambridge on the site is not surprising, since it is one of the best-known and most traditional parts of the city of Cambridge, United Kingdom.
Thirdly, the evidence presented by the Respondent (Annexes F and H to the Response) demonstrates that it created a similar site for his hometown of Brookline at “www.brookline.com” before proceeding with the works for the website under the disputed domain name. Furthermore, the Respondent apparently has made considerable investments in the acquisition and development of the website “www.cambridge.com”, which reinforces the view that the Respondent trusts (or trusted) the success of its business model. This Panel understands, therefore, that the commercial activity carried out by the Respondent is not exceptional nor is intended to cause harm to the Complainant.
Fourthly, the Respondent could also demonstrate that there is an economic rationale underlying the offer for a possible transfer of the disputed domain name to a third party. Indeed, whereas the term “Cambridge” refers to different and relevant geographical locations, it is plausible that there may be other market players potentially interested in acquiring the disputed domain name. The consequence of this competition for the disputed domain name is the elevation of the price of its transfer.
Finally, a general offer of sale in 2014 or 2015 does not by itself support the Complainant’s conjecture that the Respondent registered the disputed domain name four or five years earlier “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant.” Policy, paragraph 4(b)(i).
In the light of the above, the Panel finds that the disputed domain name has not been registered and is not being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
D. Abuse of the Administrative Proceeding
Paragraph 15(e) of the Rules provides “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 an abuse of the administrative proceeding.” The Rules indicate that the Panel consider this issue even if the Respondent does not request such a finding. See WIPO - 2.0, paragraph 4.17; see also, e.g., Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603. Two circumstances of this case warrant such an inquiry.
As may be seen from sections 5A and part 6B above, the Complainant has seriously misdescribed to the Panel the content of the website maintained at the disputed domain name. The Complaint refers to three hyperlink references to educational services and summarizes the balance of the site as “There is some information about the UK city of Cambridge and about the city of Cambridge Massachusetts included in the website. It is clear that this information has been added purely to bulk out the website and give it the veneer of a genuine business.” (Complaint, paragraph 5). From reading the Complaint one might think that the site is mostly about the Complainant or its services, with fluff added only to deceive.1
A reader of the site will find quite different content. In fact there are only two references to educational services upon the Panel’s review of the website. One (entitled “Online Courses”) refers the reader to a proofreading course, the other (“Education”), to what appears to be a privately owned art gallery. Each such reference is accurately summarized in text accompanying the applicable link. In space they are less than one-sixth of a site devoted otherwise to tourism opportunities in the two cities named Cambridge. The only references to the Complainant on the site cite it as a tourist destination in the English city whose name it bears. That is a natural consequence of taking the city’s name and becoming a venerable and famous university, as the Complainant perforce acknowledges. The only references to the Complainant’s competitors are found on the site’s United States page, where Harvard University and the Massachusetts Institute of Technology are identified as supposed tourist sites. There is no link to either of these institutions. Taken as a whole the Panel considers this is mainly a tourism site. The individual references to “education” do not relate to the Complainant or its competitors, and it is misleading to label it a simple PPC site.
Misleading the Panel may be grounds for a finding of abuse, see WIPO - 2.0, paragraph 4.17 (identifying “the complainant… otherwise misled the panel” as grounds); Coöperatie Univé U.A. v. Ashantiplc Ltd / c/o Domain Name Privacy LLC, WIPO Case No. D2011-0636. While it may be natural for a mark owner to focus upon content it deems offensive or infringing, the Panel believes that the Complainant’s description here exceeds the bounds of advocate’s hyperbole.
That fact, a generally weak Complaint, the Complainant’s taking contradictory positions on whether a decision in this proceeding will impact its trademark opposition2 , and the timing of its delayed opposition in the USPTO raise an unhealthy aroma that the Complainant brought this proceeding with an ulterior motive – either to bolster its case before the TTAB or to use the UDRP as a second front in a broader campaign. Either of these is inconsistent with its representative’s undertaking that “this Complaint is not being presented for any improper purpose, such as to harass,” see Complaint, paragraph 22; Rules, paragraph 3(b)(xiv); just as its inaccurate description of the Respondent’s website is inconsistent with its undertaking that “the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate.” Ibid.
Sufficient grounds for a finding of abuse plainly exist. A finding of abuse, however, is always discretionary with the Panel, see Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081. Here the Panel chooses not to make one, while cautioning the Complainant (or perhaps more accurately, its advocate) in future to limit its invocation of the Policy to proper cases fully and fairly presented.
7. Decision
For the foregoing reasons, the Complaint is denied.
Luca Barbero
Presiding Panelist
Richard G. Lyon
Panelist
Tobias Malte Müller
Panelist
Date: October 5, 2015
1 Other statements in the Complaint similarly mislead by omission, for example “The Respondent does not appear to be operating any legitimate business using the domain name. The domain name resolves to a website that provides links to other parties’ genuine businesses, including that of the Complainant.” The reference to a link to the Complainant’s business has no evidence to support it.
2 Compare “The outcome of the UDRP complaint can in no way be prejudicial to the outcome of the trade mark oppositions.” (Supplemental filing, paragraph 2) with “the Complainant takes the view that the outcome of the UDRP will inform them as to whether it is necessary or appropriate to oppose the trade mark applications.” (Id. paragraph 4).