WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harvey Norman Retailing Pty Ltd v Oxford-University
Case No. D2000-0944
1. The Parties
1.1. The Complainant is Harvey Norman Retailing Pty Ltd, a corporation located at Homebush West, New South Wales, Australia. The Respondent is Oxford-University, the legal status (if any) of which is not clear, located at Top, Banana, Pigabeen, New South Wales, Australia.
2. The Domain Names and Registrar
2.1. The domain names the subject of this Complaint are "harveynorman.net" and "harveynorman.org".
2.2. The Registrar of this domain name is Network Solutions, Inc. of Herndon, Virginia, USA ("Registrar").
3. Procedural History
Issuance of Complaint
3.1. The Complainant by email and by facsimile submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules"). Both the email copy and the facsimile hard copy of the Complaint were received by the WIPO Center on August 4, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, by email dated August 10, 2000.
Confirmation of Registration Details
3.2. A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on August 16, 2000. By email to the WIPO Center on August 21, 2000, the Registrar confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the Registrar of the domain names the subject of the Complaint; confirmed that the current registrant of the domain names "harveynorman.net" and "harveynorman.org" is the Respondent; informed that the administrative, technical, zone and billing Contact for the domain names is "University, Oxford Mr. University", and provided postal, telephone/facsimile and email contact details for the Contact; and informed that the status of each of the domain names is "active". The Registrar also confirmed that its 5.0 Service Agreement is in effect. Amongst other things, that agreement provides that the Respondent as registrant of the domain names agrees to be bound by the domain name dispute policy incorporated therein. The policy incorporated into the agreement is the Uniform Policy.
Notification to Respondent
3.3. Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, by courier to the postal contact details of the Respondent and the Contact, and by email to the email address of the Contact, on August 21, 2000. Copies of this Notification of Complaint were sent by email to the Complainant, the Registrar and ICANN on that date.
3.4. On August 21, 2000, the Respondentís Contact sent an email to the WIPO Center in reply to the communication of the Notification of Complaint, stating, inter alia, "I do not open .doc attachments - Ö send again in PLAIN TEXT." On August 22, 2000, the WIPO Center sent to the Respondentís Contact by email the Notification of Complaint in text form.
3.5. This Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
Filing of Response
3.6. No Response was filed by the Respondent within the time specified in the Notification of Complaint.
3.7. Having received no Response from the Respondent within the specified time in the second-sent Notification of Complaint, on September 11, 2000, the WIPO Center issued to the Respondent by email and courier a Notification of Respondent Default, a copy of which was sent to the Complainant. A communication from the Contact for the Respondent was received by the WIPO Center by email on the same day. It stated as follows:
what do you mean?
I respond directly to solicitors representing the complainant.
Is it your intention to steal these domain names?
I take it that is the case based on your previous theft of domains that I have paid for and developed.
Your organization appears to be one of cowards and bullies that panders to the rich and oppresses all others.
W-I-P-O.com aptly describes your character and actions against us "NetNiggers" that should be thrown off cyber "land" to be "usefully developed by proper whiter anglo-saxon protestants" who do not lower themselves to speak to us - you are a bigot, it seems.
Constitution of Administrative Panel
3.8. Following the issuance of the Notification of Respondent Default, and in accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Andrew F. Christie to so act. On September 12, 2000, Dr. Christie submitted to the WIPO Center a Statement of Acceptance and Declaration of Impartiality and Independence. On the same day the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing of Dr. Christieís appointment and that absent exceptional circumstances a decision would be provided by this Administrative Panel by September 25, 2000. The case before this Administrative Panel was conducted in the English language.
Compliance with the formalities of the Uniform Policy and the Uniform Rules
3.9. Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.
4. Factual Background
4.1. The Complaint asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established.
Complainantís Activities and Trademarks
4.2. The Complainant is a widely known company name in Australia and has been for many years.
4.3. The Complainant is the registered proprietor of the HARVEY NORMAN mark in Australia in class 37 (in relation to repair, installation and maintenance services) and in class 42 (in retail wholesale, distribution and other services in that class relating to a wide range of household furniture and electrical appliances), and in the United States in classes 35 and 37 for retail stores and wholesale distributorships featuring furniture, electrical appliances and the like, and for household renovation services, and repair and installation of household appliances and furniture. The Australian registrations are dated March 29, 1994. The United States registrations are dated August 31, 1999. Copies of these registrations were annexed to the Complaint.
4.4. The Complainant has used these marks for retail stores and wholesale distributorships featuring furniture, electronic appliances, lighting goods, hardware, home improvement goods, floor coverings, computers, computer accessories, computer software, household appliances and baby nursery equipment and household renovation services, repair of household appliances and furniture, installation and maintenance of household appliances and furniture.
4.5. The Complaint is unhelpfully brief, and lacking in detail about the activities of the Respondent. Neither the Complainant nor the Respondent made any assertions in relation to the activities of the Respondent.
5. Partiesí Contentions
5.1. The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain names the subject of this dispute.
5.2. In relation to element (i) of paragraph 4(a) of the Uniform Policy, the Complainant contends that both of the domain names are identical to the Complainantís registered trademark HARVEY NORMAN.
5.3. In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Complaint contends that the Respondent has no rights or legitimate interests in respect of the domain names in issue "because they (sic) have no interest in the trade marks that have been registered".
5.4. In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Complainant contends that evidence of bad faith registration and use is established by the fact that the Complainant is "a widely known company in Australia and has been for many years", and that "it is likely that the domain name was registered in order to prevent Harvey Norman Retailing Pty Limited Ö from reflecting the mark in a corresponding domain name or for the purpose of selling the domain name to the Complainant at a future date".
5.5. The Respondent did not file a Response to the Complaint.
6. Discussion and Findings
Identical or Confusingly Similar Domain Names
6.1. In relation to both of the domain names "harveynorman.net" and "harveynorman.org", the relevant part of these domain names is "harveynorman". This Administrative Panel finds that this part of these domain names is identical to the Complainantís registered trademark HARVEY NORMAN.
Respondentís Rights or Legitimate Interests in the Domain Names
6.2. The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances, giving rise to a right to or legitimate interest in the domain names. In light of this fact, the fact that the domain names bear no relationship to any business or other activity of the Respondent, and the fact that the mark HARVEY NORMAN is not one that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant, this Administrative Panel finds that the Respondent has no rights or legitimate interests in either of the domain names the subject of the Complaint.
Domain Names Registered and Used in Bad Faith
6.3. The fact that the Respondent has chosen not to submit a Response is particularly relevant to the issue of whether the Respondent has registered and is using the domain names in bad faith. Rule 14(b) of the Uniform Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Uniform Rules. This Administrative Panel finds there are no exceptional circumstances for the failure of the Respondent to submit a Response. This Administrative Panel draws from this failure the following two inferences: (i) the Respondent does not deny the facts which the Complainant asserts, and (ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts. Nevertheless, this Administrative Panel still has the responsibility of determining which of the Complainantís assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts.
6.4. The essence of the Complainantís assertions about the activities of the Respondent are that the Respondent was aware of the Complainantís trademark HARVEY NORMAN at the time of registration of the domain names, and registered the domain names for the purpose either of selling them to the Complainant or of preventing the Complainant from reflecting its trademark in a corresponding domain name. The former purpose constitutes a use of the domain names of the type contemplated by paragraph 4(b)(i) of the Uniform Policy, but only if the Respondent seeks to sell the domain names for valuable consideration in excess of its out-of-pocket costs directly related to the domain names. The Complainant did not provide any evidence in support of the assertion that the Respondent registered the domain names the subject of this Complaint for the purpose of selling them to the Complainant. Accordingly, this Administrative Panel does not find that there are circumstances of the type contemplated by paragraph 4(b)(i) of the Uniform Policy.
6.5. The latter purpose, of preventing the trademark owner from reflecting its trademark in a corresponding domain name, constitutes a use of the domain name of the type contemplated by paragraph 4(b)(ii) of the Uniform Policy, but only if the Respondent has engaged in a pattern of such conduct. It is clear that the registration of "harveynorman.net" and "harveynorman.org" have the effect of preventing the Complainant from reflecting its trademark HARVEY NORMAN in a domain name in the .net and .org generic top level domains. In the absence of any suggestion by the Respondent of another purpose for its registration of the domain names, it is open for this Administrative Panel to conclude that preventing the Complainant from reflecting its trademark in these top level domains was the purpose of the Respondentís registration of them. However, this will constitute evidence of bad faith registration and use, in accordance with the provisions of paragraph 4(b)(ii) of the Uniform Policy, only if the Respondent has engaged in a pattern of conduct of such registrations. No such pattern was shown or even asserted by the Complainant.
6.6. Nevertheless, this Administrative Panel takes judicial notice of the fact that the Respondent is the respondent in The Chancellor, Masters and Scholars of the University of Oxford v. DR. Seagle (WIPO Case D2000-0308) in relation to the domain name "oxford-university.com". That this is so is clear from the following facts. First, the Respondentís Contact in both cases use the same email address (firstname.lastname@example.org). Secondly, in the WIPO Case D2000-0308, the Respondent claims to have changed his name to "Oxford University", which is the name of the Respondentís Contact in this case. Thirdly, the Respondentís Contact in this case, in his email to the WIPO Center of September 11, 2000, referred to the web site at www.W-I-P-O.com. At that web site there is a link to another web site of the Respondentís Contact, www.Net-Nazis.com, at which site there is a link to a further web site University-of-Oxford.com. At that last site, the Respondentís Contact refers to the transfer from him of the domain name "oxford-university.com" under the Uniform Policy. Accordingly, this Administrative Panel concludes that the Respondent in the WIPO Case D2000-0308 is the same person as the Respondent in this case.
6.7. This Administrative Panel further concludes that the bad faith registration of the domain name "oxford-university.com" together with the registration of the domain names "harveynorman.net" and "harveynorman.org" constitutes a pattern of conduct by the Respondent of registering domain names in which the Respondent has no right or legitimate interest, for the purpose of preventing a trademark owner from reflecting its trademark in a corresponding domain name. Accordingly, this Administrative Panel finds that there exist circumstances of the type specified in paragraph 4(b)(ii) of the Uniform Policy.
6.8. In addition, it is relevant that the Complainantís registered trademark HARVEY NORMAN is long-established and widely known in Australia, the location of the Respondent. In the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainantís rights in the trademark can be imputed to the Respondent at the time of its registration of the domain names. When this imputed knowledge is combined with the fact that the Respondent has no right or legitimate interest in the domain names, the fact that the Respondent has engaged in conduct of the type described in paragraph 4(b)(ii) of the Uniform Policy, and the fact that the Respondent provided no evidence or even an assertion of a good faith use which it could make of the domain name, there are sufficient grounds to persuade this Administrative Panel that domain names "harveynorman.net" and "harveynorman.org" were registered and are being used by the Respondent in bad faith.
7.1. This Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the domain names the subject of the Complaint.
7.2. Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, this Administrative Panel requires that the Registrar, Network Solutions, Inc, transfer to the Complainant, Harvey Norman Retailing Pty Ltd, the following domain names:
Andrew F. Christie
Dated: September 25, 2000