The Complainant is United Church Schools Trust of Northampton, the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stone King LLP, United Kingdom.
The Respondents are (1) Global Domain Privacy LLC of Bergamo, Italy and (2) Dan Morgan of Manchester, United Kingdom.
The disputed domain name <unitedlearning.org> is registered with Register.IT SPA (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 4, 2015. On September 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Complainant filed an amended Complaint on September 9, 2015. Further to the Center's confirmation request of September 15, 2015, the Complainant filed an amendment to the Complaint on September 15, 2015.
The Center verified that the Complaint together with the amendment to the Complaint and amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 9, 2015.
The Center appointed Jane Lambert as the sole panelist in this matter on October 23, 2015. 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.
The Complainant is incorporated in England and Wales as a company limited by guarantee pursuant to the Companies Act 2006. As its name indicates, the Complainant is engaged in education. It has registered the words UNITED LEARNING as trade marks in the United Kingdom for a range of goods and services under various registration numbers. For example, it has registered those words as a trade mark for various types of printed matter in class 16 as well as several services in classes 35, 36, 38 and 41 under registration number UK00002625104.
The first Respondent offers a domain privacy service and the second Respondent is its customer. Nothing is known of the second Respondent other than the name and address confirmed by the registrar. It is not even known whether that name and address are genuine.
The disputed domain name, as confirmed by the Registrar, was registered on May 27, 2015, and redirects to the Complainant's website "www.unitedlearning.org.uk".
The Complainant requests the transfer of the disputed domain name on the following grounds.
First, it says that it is obvious that the disputed domain name <unitedlearning.org> is confusingly similar to domain name <unitedlearning.org.uk> and gives the impression that the domain name <unitedlearning.org> is associated with the Complainant's trade marks or is owned by the Complainant.
Secondly, the Complainant submits that the Second Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name for the following reasons:
a. there has been no evidence of the Second Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to that domain name in connection with a bona fide offering of goods or services;
b. the Second Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name, and has not acquired, as far the Complainant is aware, any trade mark or service mark rights in it.
c. the Second Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name, having instead an intent for commercial gain, for the reasons alleged in the next paragraph.
Thirdly, the Complainant says that the disputed domain name has been registered and is being used in bad faith and gives particulars of the following incident which it has reported to the police.
"1. On the 2 June 2015, a parcel was delivered to one of the Complainant's academies (i.e., schools) by courier UPS and signed for, addressed to 'John Gardener – Tech Centre'.
2. Within a short space of time after delivery was made, the Complainant received a call from someone purporting to be John Gardener (Mr Gardener), stating that he had been due in to the Complainant's academy for a meeting and so had arranged a delivery, but that the meeting was then cancelled.
3. Mr Gardener stated he would arrange a courier to collect the parcel. He was asked to put these details into an email and did so, the email address used was […]@tech-center.com. A local courier arrived later and collected the box.
4. On the 9 July 2015, the academy took a call from the supplier, chasing for payment of the item delivered. The supplier was informed that the Complainant was not aware of any order or payment due, as the supplier was not listed as a supplier on the Complainant's accounts system. The Complainant gathered the following information from the call:
a. The order was placed using what appeared to be an official United Learning purchase order.
b. The order was placed by someone called Dan Morgan (the order has him as the Complainant's business Manager), email address […]@unitedlearning.org.
c. The contact name was John Gardener, email address: […]@techcenter.com, telephone number (obtained from delivery label): […].
d. The supplier received an automated email response stating that the goods had been received and payment would be made on 2 July; the email address from which this was received was: […]@unitedlearning.org
e. A second order was placed within a short period of time of this first order, totaling GBP19,000. The academy was again named on the invoice address, but delivery was requested to Manchester Metropolitan University."
The Respondent did not reply to the Complainant's contentions.
Paragraph 4 (a) of the Policy requires the Complainant to prove that:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant must prove that each of those three elements is present.
Although its solicitors have gone about it in a roundabout way as a complainant is required to prove that a disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights and not that the disputed domain name is confusingly similar to its domain name, the Panel is satisfied that the Complainant has proved that the first element is present.
The solicitors have listed the trade marks that the Complainant is alleged to have registered in a table at paragraph 12. A. 1 of the amended Complaint. The table includes trade mark number UK00002625104 which is mentioned at paragraph 4 above. The sign that is registered under that trade mark number are the words "united learning" which differs from the disputed domain name only in immaterial respects. Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.
Paragraph 4(c) of the Policy lists a number of circumstances in which a respondent can prove that it has rights or legitimate interests in a disputed domain name. The Complainant says that none of those circumstances applies. The Respondent has not produced any evidence that he has any right or legitimate interest in the disputed domain name as he has not responded to the Complaint and the Panel has found no evidence from any other source that he does. Consequently, the Panel holds that the second element is present.
Paragraph 4(b) of the Policy sets out a number of circumstances which, if found to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. None of those circumstances fits the incident alleged in the amended Complaint. Probably the nearest are those in paragraph 4(b)(iii) and (iv). However, the absence of an exact fit does not matter because the circumstances listed in sub-paragraphs (i) to (iv) are without limitation.
If proved, the incident particularized in paragraph C to the amended Complaint would be an offense under the laws of England and Wales and other countries. There can be no doubt that the use of a domain name to perpetrate a crime would be "use" of that domain name in "bad faith". As the Panel has found that the Respondent has no rights or legitimate interests in the disputed domain name it may be inferred that the disputed domain name was registered and used for that purpose. The Panel therefore finds that the third element is present.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <unitedlearning.org> be transferred to the Complainant.
Jane Lambert
Sole Panelist
Date: October 27, 2015