WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle

Case No. D2000-0308

 

1. THE PARTIES

The Complainant

The University of Oxford, formally known as The Chancellor, Masters and Scholars of the University of Oxford

University Offices
Wellington Square
Oxford 0X1 2SD
United Kingdom

Represented by:

Arty Rajendra
Willoughby & Partners
The Isis Building
Thames Quay
193 Marsh Wall
London E14 9SG
United Kingdom

The Respondent

DR Seagle
106 Bandana Drive
Piggabeen NSW 2486
Australia

 

2. THE DOMAIN NAME AND REGISTRAR

 

The domain name at issue is:
www.oxford-university.com

 

It is registered with:
Network Solutions Inc. (NSI)
505 Huntmar Park Drive
Herndon, Virginia 20170
United States of America
Fax: 703-742-4777

 

3. PROCEDURAL HISTORY

 

4. JURISDICTIONAL BASIS FOR THE MANDATORY ADMINISTRATIVE PROCEEDING

Paragraph 4 of the ICANN Policy requires that a registrant must submit to a mandatory administrative proceeding in the event that a third party asserts to the applicable Provider, in compliance with the Rules of Procedure, that the registered domain name is disputed under the grounds stipulated in that paragraph.

The registration agreement, pursuant to which the domain name that is the subject of this Complaint was registered, incorporates the Policy in force at the time "or a later version of this Policy adapted by ICANN" [paragraph 3.c.]. A copy of the domain name dispute policy applicable to the domain name in question was provided by the complainant as Annex E to the Complaint.

As noted above, under Paragraph 4(a), a respondent is required to submit to a mandatory administrative proceeding where it is alleged that:

(1) The domain name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.

The Administrative Panel finds that the complainant has complied with the applicable rules and this dispute is properly within the scope of the Policy and, further, that the Panel has jurisdiction to decide the dispute.

 

5. FACTUAL BACKGROUND

The Panel must base its decision on the record evidence. As the complainant was the only party that filed evidence in support of its case, the following findings of fact are made. In each instance, the Panel has satisfied itself that the evidence supports the complainantís allegations of fact.

The domain name at issue was registered by the respondent on December 12, 1998. According to the Complaint [para 12(7)] the complainant became aware of the respondentís registration of the domain name in March 1999.

As the respondent is not an authorized license of the complainant nor authorized to use the complainantís mark, the complainant sought to send a cease and desist letter [Annex C to the Complaint] alleging that the respondentís acts amounted to the tort of passing off and violated the complainantís trade mark registration for OXFORD UNIVERSITY in South Africa.

Annex D to the Complaint is a copy of a facsimile dated June 4, 1999, whereby the courier company, UPS, informed the complainant that it was unable to deliver the cease and desist letter as the given address was incomplete. UPS also stated that the telephone number, taken from the WHOIS database by the complainant, went unanswered.

Thereafter, on June 4, 1999 and June 29, 1999 [pages 2 Ė 4 of Annex H], the complainant wrote to Network Solutions Inc. (NSI) asking for advice on how to invoke the dispute where it was unclear that the respondent had been duly notified of the Complaint. Annex H to the Complaint is a letter from NSI to the respondent dated August 3, 1999, notifying it of the Complaint (pages 6-8 of Annex H). NSI then informed the complainant that it would put the domain name in issue on-hold [NSI letter dated September 17, 1999 and the letter of September 23, 1999 at pages 11 of Annex H]. However, on October 4, 1999, NSI informed the complainant that the respondent had chosen to use the disputed domain name simultaneously with a new domain name, Central-maine.com, for a three month period due to expire on December 24, 1999 [page 12 of Annex H].

During this period, the respondent updated his website, pages of which were attached at Annex I to the Complaint. The evidence at page 2 of Annex 1 records that the respondent informed the complainant that it could "buy the site if you want to, or can afford [to]". The respondent also stated that with his apparent change of name (to Oxford University), he was "considering approving a number of commercial products ; -- Please send me large donations ; --".

By December 1999, the domain name dispute resolution policy was changed over from NSI to ICANN. NSI terminated the dispute and reactivated the domain name.

The complainant has submitted copies of extracts of the latest material posted on the respondentís website in Annex J, together with copies of extracts from the complainantís own website in Annex K. The respondentís website contains a copyright notice stating that copyright in the material posted on it belongs to the complainant.

 

6. PARTIESí CONTENTIONS

A. The complainant contends that:

In the circumstances, the respondentís primary purpose in registering the domain name was to either:

(a) sell, rent, or otherwise transfer the domain name registration to the complainant, the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name; and/or

(b) prevent the complainant from reflecting the mark in a corresponding domain name; and/or

(c) disrupt the business of the complainant; and/or

(d) to attract for financial gain, Internet users to the respondentís website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of the respondentís web site or location or of a product or service on the respondentís web site or location.


B. The respondent contends that:

The respondentís e-mail response to the complainantís counsel and copied to WIPO Arbitration and Mediation Center on May 21, 2000, after the date for the filing of a response had expired, was as follows.

It is reproduced in full:

"Arty

1) My name is Oxford University.

2) I have already told you that "Word" attachments are not acceptable BEFORE the recent virus outbreak. That still applies.


I feel that

3) Wipo's attitude is high handed, arrogant and offensive

4) I have no idea what your complaint is speak simple English please, or leave me alone preferably the latter.

5) You are harrassing me. Stop it.


Additionally,

6) The complainant has not attempted to contact me, nor replied to email sent to them.

7) The complainant agreed to abide by the decision of Network solutions and has failed to do so.


Oxford University (doc@seagle.com)"

This message was followed by four other messages of similar tone and content to the WIPO Arbitration and Mediation Center.

The Panel observes that although served with notice of the proceeding, the respondent did not file a response to the Complaint in a timely fashion.

The respondentís communications, in addition to being out of time, did not respond "specifically to the statements and allegations contained in the complaint" or set out "all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name" as required by Rule 5(b).

 

7. DISCUSSION AND FINDINGS

The Panel is constituted in order to determine whether the respondentís registration of oxford-university.com complies with the Uniform Domain Name Dispute Resolution Policy (as approved by ICANN on October 24, 1999). As noted above, the Policy provides for a mandatory administrative proceeding on the grounds set out in paragraph 4. They are:

 

Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

The complainant contends that the domain name at issue is "identical or confusingly similar to a trademark or service mark in which the complainant has rights."

The Panel finds that the complainant has proved this element. In its view, the domain name oxford-university.com is confusingly similar to OXFORD UNIVERSITY and to the complainantís own domain name oxforduniversity.com.

Secondly, the complainant contends that the respondent has no rights or legitimate interests in respect of the domain name.

The Panel agrees that respondent has no rights or legitimate interests in respect of the domain name. The complainantís rights and legitimate interests in the name OXFORD UNIVERSITY are manifestly long-standing and settled.

In a communication submitted after the period for the filing of a response, the respondent asserted that his name is Oxford University. According to NSIís WHOIS database, the respondent is registered as DR Seagle, an individual. Even if DR Seagle has indeed made a change of name (no documentary proof of the claim was provided), the Panel would still conclude that the registrant has no rights or legitimate interests in respect of the domain name at issue.

Thirdly, the complainant contends that the domain name has been registered and is being used in bad faith.

The Panel agrees. A review of the evidence filed in support of the Complaint shows that oxford-university.com has been used as a parody of the complainant and that the respondent made statements to the complainant that it could "buy the site if you want to, or can afford [to]" and further that the registrant was "considering approving a number of commercial productsÖ Please send me large donations".

In the circumstances, the Panel has no doubt in concluding that the domain name has been registered and is being used in bad faith. In the Panelís view the respondentís actions are, at a minimum, evidence of bad faith within grounds 4.b(i) and (iii) of the Policy.

 

8. DECISION

At paragraph 13 of the Complaint, the complainant requested that the Panel issue a decision that the contested domain name be transferred to it. In light of the findings made above and having regard to the remedies stipulated in Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name oxford-university.com be transferred to the complainant, The University of Oxford.

 


 

J. C. THOMAS
Panelist

Dated: May 30, 2000