utoronto.com

WIPO Arbitration and Mediation Center

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.

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.

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.

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:

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

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.

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.

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.

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.

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

Clive L. Elliott
Sole Panelist

Dated: July 9, 2001