The Governing Council of the University of Toronto v. MetCap Living Management Inc.
Case No. D2008-1490
1. The Parties
Complainant is The Governing Council of the University of Toronto, Toronto, Ontario, Canada, represented by Cassels Brock & Blackwell, LLP, Canada.
Respondent is MetCap Living Management Inc., Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The domain name in dispute <universityoftorontohousing.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2008. On October 2, 2008, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name in dispute. On October 2, 2008, Tucows Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 27, 2008.
The Center appointed Ross Carson as the sole panelist in this matter on November 17, 2008. 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.
4. Factual Background
Complainant oversees the academic, business and institutional affairs of The University of Toronto (the “University”). The University was founded in 1827 and currently has 61,210 full time equivalent students, 9,219 faculty and staff and 421,506 alumni. The University is the 15th largest employer in the Greater Toronto Area (“GTA”) and, as of 2005-06, its overall estimated economic impact on the GTA economy was 5.4 billion Canadian dollars. Complainant has used its trademarks for or including UNIVERSITY OF TORONTO as common law trademarks in relation to educational services in Canada from a date preceding the confederation of Canada. Complainant's trademarks for or including UNIVERSITY OF TORONTO are well known in relation to educational services throughout Canada and throughout the GTA.
Respondent registered the domain name in dispute <universityoftorontohousing.com> on June 22, 2004.
5. Parties' Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant submits that it is the owner of at least thirty four (34) trade-marks registered pursuant to section 9 of the Canadian Trade-Marks Act (the “Act”), which are relevant to this proceeding on the basis that they include Complainant's name, “University of Toronto”.
Subsection 9(1)(n)(ii) of the Canadian Trade-marks Act provides that no person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for any badge, crest, emblem or mark of any university, in respect of which the Registrar of Trade-Marks has, at the request of the university, given public notice of its adoption and use.
This provision of the Canadian Trade-marks Act applies to the following five (5) trade-marks (the “Registered Marks”) which are of particular relevance to this proceeding on the basis that they do not include any words other than the Complainant's name. The Registered Marks are as follows: UNIVERSITY OF TORONTO & DESIGN, Application No. 0903380, advertised January 4, 1989; UNIVERSITY OF TORONTO & DESIGN, Application No. 0903389, advertised January 4, 1989; UNIVERSITY OF TORONTO & DESIGN, Application No. 0903449, advertised February 22, 1989; THE UNIVERSITY OF TORONTO, Application No. 0903496, advertised March 8, 1989; and THE UNIVERSITY OF TORONTO, Application No. 0903497, advertised March 8, 1989.
Complainant states that the domain name in dispute is confusingly similar to Complainant's registered trademarks for or including UNIVERSITY OF TORONTO. The domain name in dispute incorporates the Complainant's name and all of the words contained in the Registered Mark, UNIVERSITY OF TORONTO. Complainant further states that numerous decisions under the Policy relate to circumstances where panels have been required to address whether a domain name is confusingly similar to a trade-mark, where the domain name in dispute includes a trade-mark in its entirety, along with additional words. The generally held view of the panels is that the addition of generic or descriptive words to Complainant's trademark does not distinguish the domain name and that, as a result, the domain name is confusingly similar to the trade mark for the purposes of the Policy. See, Berlitz Investment Corporation v. Katelin Adkins,
WIPO Case No. D2007-0008, “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to Complainant's registered mark.”(citing Trip.com, Inc. v. Daniel Deamone,
WIPO Case No. D2001-1066). The Respondent's addition of the generic designation ‘languagecourse' does not prevent the domain name from being confusingly similar to the BERLITZ mark.”
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that according to the WHOIS search results Respondent registered the domain name in dispute on June 22, 2004. The advertisement dates of Complainant's Registered Marks is well prior to the date on which Respondent registered the domain name in dispute.
Currently, the contents of the web site at the domain name in dispute are specifically targeted at students of Complainant, advertising student accommodation in seven apartment buildings managed by Respondent that are located in downtown Toronto. On the first page of the web site, Respondent makes two specific references to the intended reader as a student of Complainant:
“Attending the University of Toronto is easy.... when you live at Continental Tower, Castellena, Wellesley Square, Sherwood Apartments, Gardenview Apartments or Sherbourne Estates.”
“Are you a prospective or current student of U of T? Do you want to live near campus but not in a residence?”
The web site contains detailed information about each of these apartment buildings including the distance of the apartment building from the downtown campus of the University of Toronto, contact information for building managers, monthly rental rates, and detailed information about amenities of the building and of individual apartments. The information provided on the web site is a sub-set of information posted at Respondent's main Internet site, at “www.metcap.com”, which provides information about its rental properties across Canada.
Complainant submits that Respondent's web site does not contain any information that would indicate that Respondent has any right or legitimate interest in respect of the domain name in dispute. Complainant states this would be logically impossible, given the rights of Complainant in the marks UNIVERSITY OF TORONTO and UNIVERSITY OF TORONTO HOUSING.
A.3 Registered and Used in Bad Faith
Complainant submits that as illustrated by the materials reproduced at Annex “E”, Complainant's website for students contains detailed information about housing services Complainant offers to its students. These materials use the trademark UNIVERSITY OF TORONTO along with the word, “housing”. They describe university-owned residences located on campus, as well as options for affordable and convenient housing close to its campus. With respect to off-campus housing, Complainant provides students with detailed information about housing options, and their rights and responsibilities as tenants. At “www.housing.utoronto.ca/off-campus”, Complainant provides information about: sharing housing, students' relationships with landlords, finding safe housing, and answers to frequently asked questions.
At the same time, the University's Student Housing Service provides landlords in Toronto with the opportunity to advertise their rental accommodations to students at “www.housing.utoronto.ca/landlord.”
Complainant further submits that through the use of the domain name in dispute, Respondent is obtaining commercial benefit from potential student customers who seek rental housing accommodation that is in close proximity to the University's St. George Campus in downtown Toronto. As noted above, Respondent's web site contains detailed information about seven specific buildings managed by the Respondent located in downtown Toronto, specifically advertised to prospective or current students of the Complainant. Through the use of the domain name in dispute Respondent is associating its rental properties with Complainant and its registered marks. This constitutes “bad faith” either under paragraph 4(b)(iii) or 4(b)(iv) of the Policy.
Paragrath 4(b)(iii) of the Policy states that a panel shall make a determination of bad faith where there is evidence that Respondent has “registered the domain name primarily for the purpose of disrupting the business of a competitor”. As described above, Complainant provides housing services to its students, and advertises these services in association with it's registered marks for or including UNIVERSITY OF TORONTO and the word “housing”. As such, Complainant and Respondent are competitors with respect to the provision of rental accommodations provided to the Complainant's students in downtown Toronto.
In the alternative Complainant submits that Respondent's use of the domain name in dispute contravenes paragraph 4(b)(iv) of the Policy, which states that bad faith will be found to exist where Respondent has “intentionally attempted to attract for commercial gain, Internet users... by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location.”
Complainant submits that through the use of the domain name in dispute Respondent is intentionally attempting to attract, for Respondent's commercial gain, Internet users who are prospective or current students of Complainant for the purpose of providing rental accommodation to them. The use of the corresponding website and the domain name in dispute creates a likelihood of confusion, specifically that Complainant has an affiliation with Respondent or that it has sponsored or endorsed the rental accommodation services provided by Respondent. No such sponsorship, affiliation or endorsement exists. Complainant is extremely concerned about the mistaken impression its students may have received, and may continue to receive, based on the contents of Respondent's web site associated with the domain name in dispute.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
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 in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM,
WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant relies on three different bases to support a claim to trademark rights in a trademark for or including UNIVERSITY OF TORONTO as the distinctive element. The first basis is that the Registrar of Trademarks in Canada has accepted a request of the University to give public notice of the adoption and use of five marks for or including UNIVERSITY OF TORONTO as Prohibited Marks pursuant to Section 9 (i)(n)(ii) of the Canadian Trademarks Act. Secondly, Complainant relies on use of UNIVERSITY OF TORONTO HOUSING as a common law trademark in relation to housing rental services. Thirdly, Complainant relies on the long and extended use of UNIVERSITY OF TORONTO as a common law trademark in relation to the provision of educational services.
The Panel following previous UDRP decisions finds Complainant may rely on the following Prohibited Marks as establishing rights in Canada in relation to the mark UNIVERSITY OF TORONTO & DESIGN, Application No. 0903380, advertised January 4, 1989; UNIVERSITY OF TORONTO & DESIGN, Application No. 0903389, advertised January 4,1989; UNIVERSITY OF TORONTO & DESIGN, Application No. 0903449, advertised February 22,1989; THE UNIVERSITY OF TORONTO, Application No. 0903496, advertised March 8, 1989; THE UNIVERSITY OF TORONTO, Application No. 0903497, advertised March 8, 1989. In the decision reported as Government of the Province of Alberta v. RolloverNow, Inc.,
WIPO Case No. D2006-0163, the panel stated in respect of the official marks “Canada Alberta+ Device” and “Alberta- Canada” that: “Although these official marks are descriptive in nature, there is also no reason for the Panel to dispute that under Canadian trademark law these marks are treated as analogous in all material aspects to a trademark or service mark and that the Canadian Trademarks Act prohibits the adoption and use by others of marks closely resembling official marks (See Government of Canada, on behalf of her Majesty the Queen in Right of Canada v. David Bedford, British Columbia International Commercial Arbitration Centre (May 27, 2003), made under the Canadian Internet Registration Authority Domain Name Dispute Resolution Policy (for .ca domain names)). See also: Canadian Hockey Association v. Mrs. Jello, LLC,WIPO Case No. D2005-1050.
Complainant also alleges that it has common law trademark rights in the GTA in respect of the trademark UNIVERSITY OF TORONTO HOUSING. In support of its claim to common law rights in the trademark UNIVERSTY OF TORONTO HOUSING Complainant filed proof that it's web site for students contains detailed information about housing services offered to students as well as to landlords interested in renting premises to students at the University. These materials use the trademark UNIVERSITY OF TORONTO along with the word, “housing”. They describe university-owned residences located on campus, as well as options for affordable and convenient housing close to its campus. With respect to off-campus housing, Complainant provides students with detailed information about housing options, and their rights and responsibilities as tenants.
At “www.housing.utoronto.ca/off-campus”, Complainant provides information about: sharing housing, students' relationships with landlords, finding safe housing, and answers to frequently asked questions. At the same time, the University's Student Housing Service provides landlords in Toronto with the opportunity to advertise their rental accommodations to students at “www.housing.utoronto.ca/landlord.”
The proof submitted by Complainant discloses that the University's Students Housing Service provides both web sites and printed materials to its student's with respect to housing at the University of Toronto residences as well as off campus rentals in association with the trademark UNIVERSITY OF TORONTO HOUSING. The Panel finds that Complainant has common law trademark rights in the trademark UNIVERSITY OF TORONTO HOUSING.
The evidence submitted by Complainant supports a finding that UNIVERSITY OF TORONTO with over 60,000 current students, a multitude of graduates and as one of the top twenty employers in the GTA is a common law trademark of Complainant in relation to provision of educational and related services.
The domain name in dispute, <universityoftorontohousing.com>, consists of Complainant's trademark UNIVERSITY OF TORONTO in combination with the descriptive term “housing” and the top level domain descriptor “.com”. Numerous decisions under the Policy relate to circumstances where panels have been required to address whether a domain name is confusingly similar to a trade-mark, where the domain name in dispute includes a trademark in its entirety, along with additional words. The generally held view of the panels is that the addition of generic or descriptive words does not distinguish the domain name and that, as a result, the domain name is confusingly similar to the trade-mark for the purposes of the Policy. See, Berlitz Investment Corporation, supra.
UDRP panels have also repeatedly held that the specific top level of a domain name such as “.org,” “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see MagnumPiering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Alternatively the domain name in dispute incorporates Complainant's common law trademark UNIVERSITY OF TORONTO HOUSING and the top level domain indicator “.com”. The domain name in dispute is identical to Complainant's common law trademark UNIVERSITY OF TORONTO HOUSING.
The domain name in dispute comprised of Complainant's trademark UNIVERSITY OF TORONTO, and the descriptive term “housing” in combination with the top level domain descriptor “.com” is confusingly similar to Complainant's trademarks UNIVERSITY OF TORONTO and UNIVERSITY OF TORONTO HOUSING.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name in dispute.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant's trademarks UNIVERSITY OF TORONTO or UNIVERSITY OF TORONTO HOUSING.
The web page associated with the domain name in dispute displays a series of advertisements specifically targeted at students of Complainant, advertising student accommodation in seven apartment buildings managed by Respondent that are located in downtown Toronto. On the first page of the web site, Respondent makes two specific references to the intended reader as a student of Complainant:
“Attending the University of Toronto is easy.... when you live at Continental Tower, Castellena, Wellesley Square, Sherwood Apartments, Gardenview Apartments or Sherbourne Estates.”
“Are you a prospective or current student of U of T? Do you want to live near campus but not in a residence?”
The web site contains detailed information about each of these apartment buildings including the short distance of Respondent's rentals from the downtown campus of the University of Toronto, contact information for building managers, monthly rental rates, and detailed information about amenities of the building and of individual apartments. The information provided on the web site is a sub-set of information posted at Respondent's main Internet site, at “www.metcap.com”, which provides information about its rental properties across Canada.
The use of links on the web page associated with the domain name in dispute which links include Complainant's service marks do not, under the circumstances of this case, give rise to any rights or legitimate interests for purposes of the Policy. (MobileCommunication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304).
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain name in dispute e.g., pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the domain name in dispute. Once this showing is met, the burden of proof shifts to the Respondent to demonstrate its rights or legitimate interests in the domain name in dispute. Here, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.
C.1. Domain Name Registered in Bad Faith
Complainant has established that it is the owner of the prohibited mark UNIVERSITY OF TORONTO and common law trademarks UNIVERSITY OF TORONTO which is distinctive of Complainant in relation to educational services in the GTA and UNIVERSITY OF TORONTO HOUSING which is distinctive of housing services provided by Complainant for its students and faculty in the GTA. Complainant's prohibited mark and common law trademarks referred to above were distinctive of Complainant prior to the date of registration of the domain name in dispute on June 22, 2004. Complainant is the largest university in Canada and has been operating in Canada since its establishment in 1827.
The domain name at issue, <universityoftorontohousing.com>, consists of Complainant's prohibited trademark UNIVERSITY OF TORONTO, the descriptive term ‘housing” in combination with the gTLD “.com”. It is difficult to conceive how Respondent could have created the domain name in dispute without prior knowledge of Complainant's prohibited mark and common law trademarks Respondent was invited to file a Response. Respondent's failure to explain any reason for choosing the domain name in dispute strengthens the Panel's inference that Respondent registered the domain name in dispute with knowledge of Complainant's prohibited mark and common law trade marks.
The Panel finds that Respondent registered the domain name in dispute in bad faith.
C.2. Domain Name Used in Bad Faith.
Respondent's use of the domain name in dispute <universityoftorontohousing.com> to resolve to a website containing advertisements directed to University students of apartment rentals in the immediate area of the University constitutes use of the domain name in bad faith. See Baccarat SA v. Web DomainNames,
WIPO Case No. D2006-0038. (“The disputed domain name links to a web-site that includes links to other commercial web-sites. The Panel finds that providing such links, the Respondent most likely obtains a financial return through visitors that were originally looking for the Complainant and its products.”).
Respondent is using the confusingly similar domain name <universityoftorontohousing.com> to attract users to Respondent's website for commercial gain by creating a likelihood of confusion with Complainant's prohibited mark and common law trademarks as to source, sponsorship, affiliation or endorsement of Respondent's website constituting bad faith use under paragraph 4(b)(iv) of the Policy.
The Panel finds that Respondent used the domain name in dispute in bad faith
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <universityoftorontohousing.com> be transferred to the Complainant.
Ross Carson Sole Panelist
Dated: December 1, 2008
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