The University of Cambridge has lost an attempt to win control of the domain Cambridge.com from its owners.
Kirkland Holdings LLC of Brookline Massachusetts purchased Cambridge.com for US$85,000 in 2010 and uses it to run a site called “Everything Cambridge” that offers tourist information for both the US and English cities of Cambridge.
The cambridge.com/ukof the site also offers information about the University. That, Cambridge University argues, is a deliberate attempt at“ 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”. That attempt to sow confusion, Cambridge University argues, helps Kirkland to sell ads to providers of educational services.
Kirkland's defence is that it bought the domain in good faith, as shown by the substantial sum it paid and efforts to secure a trademark for “Marketing services, namely, providing informational web pages designed to generate sales traffic via hyperlinks to other websites”. The domain's owner also argued that it has a legitimate business hosting ads related to businesses in both Cambridges.
The World Intellectual Property Organisation's (WIPO's) ruling on the dispute finds that domain is identical to a trademark for which Cambridge University holds trademarks, but that the domain is “... not likely to misleadingly divert consumers or to tarnish the trademark at issue.” WIPO adds that “the content available on the website is merely informative, and there is no element that is likely to tarnish the Complainant’s trademark.”
WIPO's panel also rejects arguments that Kirkland acquired the domain in order to flip it for a higher price.
As the decision concludes, the three panelists give Cambridge University a shoeing by taking the time to contemplate whether the august institution of learning may have tried to mislead WIPO and abuse its dispute resolution processes by by misrepresenting the activities carried out at Cambridge.com.
The panel stopped short of an abuse finding, but did take the step of … “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.” ®