University “seriously misdescribed” website in attempt to win transfer of site.
The University of Cambridge has lost a cybersquatting dispute against the owner of Cambridge.com. The panel found that the University and its lawyers Stobbs IP Limited also “seriously misdescribed” contents of the domain name owner’s website.
Kirkland Holdings LLC bought the Cambridge.com domain name in 2010 for $85,000. It subsequently created a website for Cambridge, United States and Cambridge, UK on the domain name, and has two pending trademarks for the site.
It seems that the university became aware of the respondent and its website after a broker acting on behalf of Kirkland Holdings reached out about selling the domain name. The broker contacted a number of potential buyers in both Cambridges, including the University.
The panel noted that this was acceptable, writing:
Indeed, whereas the term “Cambridge” refers to different and relevant geographical locations, it is plausible that there may be other market players potentially interested in acquiring the disputed domain name. The consequence of this competition for the disputed domain name is the elevation of the price of its transfer.
The University has also filed to try to block the two trademark applications. This parallel proceeding could be grounds to not decide the UDRP. This put the university in the position of having to try to walk back its original remarks about how it wanted a UDRP decision in order to decide whether to proceed with the trademark oppositions. Oddly, the Complainant argued two different things about the parallel USPTO opposition proceedings and the UDRP, noted in a footnote to this passage calling them out on using one proceeding as leverage in the other:
That fact, a generally weak Complaint, the Complainant’s taking contradictory positions on whether a decision in this proceeding will impact its trademark opposition (2), and the timing of its delayed opposition in the USPTO raise an unhealthy aroma that the Complainant brought this proceeding with an ulterior motive – either to bolster its case before the TTAB or to use the UDRP as a second front in a broader campaign.
(2) Compare “The outcome of the UDRP complaint can in no way be prejudicial to the outcome of the trade mark oppositions.” (Supplemental filing, paragraph 2) with “the Complainant takes the view that the outcome of the UDRP will inform them as to whether it is necessary or appropriate to oppose the trade mark applications.” (Id. paragraph 4).
The panel determined that University of Cambridge “seriously misdescribed” the contents of the Cambridge.com website to try to make it look like the site was just a front. The panel noted that the site was much more than than, containing lots of relevant information for visitors to either Cambridge.
The panel wrote that “Sufficient grounds for a finding of abuse plainly exist.” But for some odd reason, it decided let the university off with a warning. Why? I have no idea.