The Governing Council of the University of Toronto v. Polanski

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Governing Council of the University of Toronto v. Polanski

Case No. D2001-0670

1. The Parties

The Complainant in this administrative proceeding is the Governing Council

of the University of Toronto, a 50-member body duly established by provincial

legislation (The University of Toronto Act, 1971 (Ontario)), and having

its principal place of business in Toronto, Ontario, Canada.

The Respondent is Polanski, c/o Register Help Co.UI. Shevchenko 26, Kiev, Russia 21100.

2. The Domain Name and Registrar

This dispute concerns the domain name <utoronto.com> ("Domain Name").

The registrar with which the Domain Name is registered is Bulkregister.com,

Inc., a corporation based in Baltimore, Maryland, U.S.A. (the "Registrar"),

an ICANN-accredited registrar.

The Domain Name was registered on October 17, 2000.

3. Procedural History

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the

Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy

("the Rules") both of which are implemented by ICANN on October 24,

1999, was received by the Center in electronic format on May 18, 2001, and in

hardcopy on May 22, 2001. Payment in the required amount to the Center

has been made by the Complainant.

On May 25, 2001, a request for registrar verification was sent to the Registrar

requesting confirmation that it had received a copy of the complaint from the

Complainant, that the Domain Name was currently registered with it and that

the policy was in effect, and requesting full details of the holder of the Domain

Name and advice as to the current status of the Domain Name.

On May 28, 2001, the administrative proceeding began.

On June 18, 2001, a notification of respondent default was sent to the Respondent.

No response was received.

On, June 25, 2001, notification of appointment of an administrative Panelist

and projected decision date ("the appointment notification") was sent

to the Complainant and the Respondent. In accordance with the Complainant’s

request, the appointment notification informed the parties that the administrative

Panel would comprise of one Panelist, Clive Elliott and advised that the decision

should be forwarded to WIPO by July 10, 2001.

On July 9, 2001, a decision was made.

4. Factual Background

The Complainant is the owner of six trademarks registered pursuant to section 9

of the Canadian Trade Marks Act (the "Act") (the "Registered

Marks"). Subsection 9(1)(n)(ii) of the Act provides that no person

shall adopt in connection with a business, as a trademark or otherwise, any

mark consisting of, or so nearly resembling as to be likely to be mistaken for,

among other things, any badge, crest, emblem or mark of any university. The

following trademarks constitute the Registered Marks:

Trademark

Date

Filed

Application

#

THE

UNIVERSITY OF TORONTO

September

9, 1988

0903497

UNIVERSITY

OF TORONTO & DESIGN

September

9, 1988

0903449

UNIVERSITY

OF TORONTO & DESIGN

September

9, 1988

0903389

UNIVERSITY

OF TORONTO & DESIGN

September

9, 1988

0903388

UT

& DESIGN

September

9, 1988

0903390

UT

DESIGN

September

9, 1988

0903381

5. Parties’ Contentions

A. Complainant

The University says it registered the Domain Name on October 18, 1996.

Unfortunately, due to clerical error, the University’s registration of the Domain

Name was not renewed. The Complainant recently became aware that the Domain

Name had been registered by the Respondent

The Complainant states that the University was founded in 1827 and, based on

its total full time and part time enrolment, is the largest university in North

America (based on Fall 1997 enrolment figures from the National Center for Education

Statistics). As of November 1, 2000, the University had 55,154 undergraduate

and graduate students, and a research population (excluding graduate students)

of 5,725 in September 2000. The University is comprised of numerous schools,

colleges and faculties and has three campuses in the cities of Toronto and Mississauga,

in the Province of Ontario, Canada. The University also offers distance education

through its School of Continuing Studies, which offers, among other things,

online courses through the University’s main web site located at "http://www.utoronto.ca".

The Complainant alleges that the Domain Name is confusingly similar to the

common law trademarks "U TORONTO" and "U OF T", both names

by which the University is commonly known and colloquially referred to. It says

that within academia, "U" is frequently used, in conjunction with

another component of a university’s name, as a short form for "University".

The University’s educational services are provided in association with these

common law marks.

The Complainant also says it has rights in numerous additional marks under

the Act and at common law. In particular, through extensive use on the Internet

and its precursors, the University has trademark rights to the common law mark

UTORONTO as it has provided educational services in association with this mark

since at least as early as December 1, 1985.

In March 1988, once it became possible to do so, the Complainant says that

it registered the Internet domain name, UTORONTO.CA. Since 1993 it has used

this domain name extensively, first in connection with its gopher site and,

since 1994, in connection with the University’s Internet web sites.

The Complainant says the Respondent has used the Domain Name to redirect Internet

users to pornographic, gambling and/or other commercial websites (printouts

of some of these pages have been provided). As of May 1, 2001, the Domain

Name was directed to an Internet portal site entitled "CenterFind.com-The

Heart of the Internet!!!" and located at "http://www.centerfind.com". Once

this site has loaded in the user’s main browser window, it caused the automatic

appearance of a pop-up window containing the home page for an online casino

entitled "ClubDice Casino".

Evidence is led that since at least as early as December 1, 1985, the

University used the name UTORONTO as its node name on the NetNorth/BITNET/EARN

network, a precursor to the Internet. The University’s electronic mail addresses

on the NetNorth/BITNET/EARN network took the form: NAME at UTORONTO. The word

"at" was used then, instead of the "@" symbol currently

used for Internet e-mail addresses.

It is asserted that virtually all of the University’s schools, colleges, faculties

and other organizations have subsites within the UTORONTO.CA domain. In total,

over 31,000 host computers use the UTORONTO.CA domain.

The Complainant notes it is unaware of any evidence of the Respondent’s use

of the Domain Name or any name or trademark corresponding to the Domain Name,

as a trademark on any of these pages.

The Complainant also notes it is unaware of any evidence of the Respondent’s

use of, or demonstrable preparations to use, the Domain Name or a name corresponding

to the Domain Name in connection with a bona fide offering of goods or services.

Information posted at the Domain Name contains no evidence that the Respondent

is commonly known by the Domain Name or any corresponding name.

The Complainant says it does not have access to a searchable database of trademarks

registered in the Ukraine or Poland. However, its searches of Canadian and U.S.

trademark databases indicate that the Respondent has not registered or applied

to register the trademark, <utoronto.com> or a corresponding mark in either

country.

The Complainant puts forward examples demonstrating what it asserts is a prior

history of bad faith by the registrant/contact. These are as follows:

· Polanski, Mr. Victor Lashenko (the

Administrative and Technical Contact for the Domain Name) and Mr. Alex Vorot

(apparently an associate of Mr. Lashenko), have been involved in at least three

prior disputes brought before WIPO arbitrators under the Policy. In each case,

the registrant was found to have registered and used a domain name in bad faith,

and ordered to transfer the domain name to the complainant.

· In Inter-IKEA v. Polanski,

WIPO Arbitration and Mediation Center, Case

No. D2000-1614 (January 22, 2001), the domain name <ikeausa.com>

was, like the Domain Name, registered to Polanski. It had been used to redirect

Internet users to a gambling web site. As in the present case, the administrative

and technical contact for <ikeausa.com> was Mr. Lashenko. The complainant

stated that prior to commencing its complaint, it delivered a cease and desist

letter to Polanski and Mr. Lashenko. No response was received from either. In

that case the panel found that Polanski, the registrant of the domain name,

had registered and used the domain name in bad faith contrary to paragraph 4(b)(iv)

of the Policy.

· In Geoffrey, Inc. v. Babys

Russian/Russian Baby, WIPO Arbitration and Mediation Center, Case Nos. D2000-1010

(October 14, 2000) and D2000-1011 (October

13, 2000), a wholly-owned subsidiary of Toys "R" Us, Inc. filed a

complaint against the registrant of the domain name <babysrus.com>, who

was using the domain name to redirect Internet users to gambling web sites.

Mr. Vorot, the former administrative and technical contact for <babysrus.com>

changed the administrative and technical contact to Mr. Lashenko (the contact

for the Domain Name) after initial communications had taken place between the

complainant and Mr. Vorot. At the time of the panel’s decision, Mr. Vorot was

the administrative contact for the domain name used by Mr. Lashenko for his

e-mail address. The complainant sent an e-mail to Mr. Lashenko as the new

administrative and technical contact for <babysrus.com>, but no response

was received. The panel found that the registrant had registered and used the

domain name in bad faith contrary to paragraph 4(b)(iv) of the Policy.

· In Nokia Corporation v. Private,

WIPO Arbitration and Mediation Center, Case

No. D2000-1271 (November 3, 2000), the domain name <wwwnokia.com>

had been registered by "Private" and used to direct Internet traffic

to a commercial portal site. Mr. Vorot was the administrative and technical

contact for this domain name. He did not respond to correspondence from the

complainant. Once again, the panel found bad faith registration and use, contrary

to subparagraph 4(b)(iv) of the Policy.

B. Respondent

No response was received from the Respondent

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each

of the following:

- The domain name is identical or confusingly similar to the trademark; and

- The Respondent has no right or legitimate interest in respect of the domain

name; and

- The domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that,

if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii)

referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that,

if proved, constitute evidence of a right or legitimate interest as described

in paragraph 4(a)(ii) referred to above.

Domain Name Identical or Confusingly Similar

It is clear from the evidence that the Complainant has registered the Registered

Marks in Canada and that such registrations pre-date the registration of the

Domain Name. Likewise, it is asserted, without contest, that the Registered

Marks are well known in Canada. It can be reasonably inferred that as one of

the world’s largest universities, the Registered Marks are well known to a large

number of students and academics around the world.

The Complainant uses the Registered Marks with a range of other descriptive

terms to identify various aspects of its very substantial and long established

activities. The Domain Name is clearly a combination of words/letters associated

with the Complainant and identifying its activities and location. Likewise,

it has registered and used the domain name <utoronto.ca> and has a presence

on the Internet through this name.

In view of the above it is found that the Registered Marks are trademarks in

which the Complainant has rights and that the Domain Name is confusingly similar

if not identical thereto.

No Right or Legitimate Interest

Given what seems on the evidence to be the specific meaning of the Registered

Marks and the fact of their registration, a presumption arises that the Complainant

alone has rights in these trademarks and certainly in the classes of interest

to it. Whether the Complainant's rights extend to all manners of use of the

Registered Marks is a matter which is less certain. However, the Respondent

has chosen not to assert any legitimate claim to the Registered Marks and in

the absence of such an assertion the Panel has to draw whatever inferences it

can from the assertions made and evidence filed.

In the absence of any evidence from the Respondent the Panel has to accept

the prima facie case put forward by the Complainant and likewise find that there

is no apparent right or interest which the Respondent might have in such a specific

and distinctive trademark.

Domain Name Registered and Being Used in Bad Faith

It appears that there has been no bona fide use of the Domain Name by the Respondent.

The only use made appears to be to direct users to commercial porn and gambling

sites. The use of the identical or very similar trademark to direct users to

web sites in this way amounts to a prima facie case of improper motive/bad faith.

Unsurprisingly, such use is not asserted to be in good faith and it hardly could

be.

Given the absence of any explanation and the prima facie case that the Complainant

has put forward, it is found that the Domain Name was registered and is being

used in bad faith.

Finally, the Complainant has asserted, with some force, that the Respondent

(or those associated with it) has a prior history of bad faith. This is not

denied and should properly be taken into account.

Accordingly, the Complainant makes out its case on all three grounds.

7. Decision

In view of the above the Domain Name should be transferred to the Complainant.

Clive L. Elliott

Sole Panelist

Dated: July 9, 2001

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