WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University

Case No. D2001-0746

 

1. The Parties

The Complainant in this administrative proceeding is The Chancellor, Masters and Scholars of the University of Oxford ("Complainant" or the "University"), a body which was first incorporated in England by Royal Charter in 1357 and subsequently by statute incorporated under the Oxford & Cambridge Act 1571 (13 Eliz C29).

The Respondent in this administrative proceeding is DR Seagle t/a Mr. Oxford-University ("Respondent" or "Seagle") of Top, Banana, Piggabeen, NSW 2486, Australia.

 

2. The Domain Name and Registrar

The domain name at issue is <university-of-oxford.com> (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.

 

3. Procedural History

On June 5, 2001, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On June 8, 2001, the Center received hardcopy of the Complaint. On October 11, 2000, the Center sent email confirming receipt of the Complaint. The Complainant paid the required fee.

On June 9, 2001, the Center sent notice of deficiencies to Complainant. On June 11, 2001, the Complainant replied to the notice of deficiencies.

On June 13, 2001, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On June 14, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On July 4, 2001, the Center received an email from Respondent, which did not address any of the substantive issues in the Complaint. The email accused the Center of working for Nazis and of institutional theft. The email was deemed a Response. On July 6, 2001, the Center sent an Acknowledgement of Receipt of Response.

On July 24, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

4. Factual Background

The University was founded in the twelfth century. It is a unique educational institution and its name is synonymous with academic excellence.

The Complainant is the proprietor and authorised user of the mark UNIVERSITY OF OXFORD in connection with, inter alia, academic services; teaching, lecturing and tutorial services; educational and training services. Further, the names OXFORD, OXFORD UNIVERSITY and UNIVERSITY OF OXFORD are familiar to millions through a diverse publishing programme that includes scholarly works in all academic disciplines, bibles, music, school and college textbooks, childrenís books, materials for teaching English as a foreign language, business books, dictionaries and reference books, and journals.

A history of the Complainantís use of UNIVERSITY OF OXFORD is extremely lengthy. A brief history of the University and its colleges was taken from the Complainantís website and attached to the Complaint as Annex D.

The Complainant uses the mark UNIVERSITY OF OXFORD as part of its own domain name <universityofoxford.com>. This is one of several domain names owned by the Complainant which point to its website at <ox.ac.uk>.

A schedule of the Complainantís trade mark applications and registrations for UNIVERSITY OF OXFORD (and devices) worldwide was attached to the Complaint as Annex F. The Complainant is also the owner of the UNIVERSITY OF OXFORD belted device mark in 18 countries worldwide. A schedule of applications and registrations for the UNIVERSITY OF OXFORD belted device mark was attached to the Complaint as Annex G.

A certified copy of the trade mark certificate for UK registration number 2055566 for the mark UNIVERSITY OF OXFORD in classes 41 and 42 relied upon by the Complainant was attached to the Complaint as Annex H.

The Complainantís dealings with the Respondent date back to March 1999, in respect of another domain name owned by the Respondent <oxford-university.com>. At that time, the Respondent was known as DR Seagle but he subsequently claimed to have changed his name to Mr. "Oxford University." The dispute concerning <oxford-university.com> was eventually resolved by WIPO in Case No. D2000-0308. That dispute with the Respondent will be referred to hereafter as the First Complaint.

Throughout the Complainantís dealings with the Respondent, the Complainant has never been able to contact the Respondent at the physical address given on the WHOIS database. Therefore, it is not certain that the Respondentís contact details on the WHOIS database are correct. The procedural history indicates that the Respondent has contacted the Center by email.

 

5. Partiesí Contentions

A. Complainantís contentions

i. Complainant contends that it has common law rights in the trademark UNIVERSITY OF OXFORD, which would allow Complainant to prevail in passing off action or unfair competition action in most jurisdictions and certainly in the United Kingdom and Australia. In addition, Complainant has registrations of the trademark UNIVERSITY OF OXFORD.

ii. Complainant argues that the Domain Name is substantially identical and confusingly similar to the UNIVERSITY OF OXFORD mark, pursuant to Paragraph 4(a)(i) of the Policy. Complainant asserts that in the First Complaint against the Respondent concerning the Complainantís registered trademarks for OXFORD UNIVERSITY and the Registrant's domain name <oxford-university.com>, WIPO found that the two names were confusingly similar. The same principle should therefore apply in this case where the Complainantís trademark is UNIVERSITY OF OXFORD and the Domain Name in issue is <university-of-oxford.com>. The Complainant also believes that the Respondentís Domain Name is substantially identical or confusingly similar to the Complainantís own domain name of <universityofoxford.com>.

iii Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

The Respondent is not an authorised licensee of the Complainant, nor is he authorised to use the Complainantís mark. At the time it was registered, the Domain Name in issue was not, nor could it be contended to be, a nickname of the Respondent or in any other way connected with or related to the legitimate interest of the Respondent. As far as the Complainant is aware, the Respondent is not and never has been in any way linked with the Complainant. As indicated above, the Respondent did not change his name to "Oxford University" until after the Complainant first took issue with him over his registration of the domain name <oxford-university.com>. In other words, the name "Oxford University" insofar as it relates to Respondent is self-selected and he cannot sensibly be said to have any right or legitimate interest in respect of it. In any event, the Domain Name here is not <oxford-university.com> but <university-of-oxford.com>. Still less, therefore, can the Respondent claim that he has any rights or legitimate interests in the domain name.

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).

The Complainantís dealings with the Respondent date from March 1999, and were in relation to the domain name <oxford-university.com>. This dispute culminated in the First Complaint, which was filed on April 25, 2000. The Respondent was incensed by the filing of the First Complaint and, amongst other steps taken by him, he registered the Domain Name in issue on May 12, 2000. The Complainant notes that this date is approximately 3 weeks after the First Complainant was filed with the Center. From the timing alone of the registration of the Domain Name in issue, it is clear that the Respondent registered it and intended to use it in bad faith.

Amongst other steps taken by the Respondent as a result of the filing of the First Complaint, the Respondent claimed to have changed his name by deed poll to Mr. "Oxford University." The Respondent then registered the Domain Name in issue under the name Oxford University. It is the Complainantís view that someone looking at the WHOIS search results for the domain name in issue could be misled into thinking that the Complainant owned the Domain Name in issue.

The Complainant contends that the background to the registration of the Domain Name in issue is such that the Domain Name could only have been registered in bad faith. All the facts supporting the Complainantís contention that the Respondent has no rights and legitimate interests in the domain name in issue apply equally to the Complainantís contention that the Domain Name was registered and is being used in bad faith.

Complainant alleges that the requirements of bad faith pursuant to paragraph 4(b)(i) of the Policy are met. Respondent arguably registered the Domain Name in issue with a view to selling it, because he has engaged in this sort of conduct in the past. Complainant refers to WIPO Case Number D2000-1448 (Ďthe Texas Instruments Caseí) in which the Respondent is named as "DM" at address Top, Banana, Piggadeen NSW 2486. This is the same address as the Respondent in this Complaint. Complainant alleges that "DM" is another of the Respondentís pseudonyms. The Texas Instruments Case concerned a number of domain names registered by the Respondent including the mark TEXAS INSTRUMENTS. In paragraph 4 of the Texas Instruments Case, the Respondent proposed to transfer the domain names to the trademark owner for sums well over the out of pocket expenses directly relating to those domain names. Complainant alleges that the Respondentís intention in respect of <university-of-oxford.com> is the same.

Complainant alleges that the requirements of bad faith pursuant to paragraph 4(b)(ii) of the Policy are met. As with <oxford-university.com> in the First Complaint, the Respondent has registered the Domain Name to prevent the Complainant from reflecting its mark UNIVERSITY OF OXFORD in a domain name unless, perhaps, it is prepared to pay for it. The Respondent has engaged in this pattern of conduct before vis-à-vis the Complainant in respect of the domain name <oxford-university.com>. It is also to be noted that the Respondent is the proprietor of around 200 domain names incorporating the Complainantís College names Ė both hyphenated and not hyphenated versions. A selection of those College domain names was attached to the Complaint as Annex L. If the domain names are not being registered with a view to sell them, we can only conclude that the Respondent is Ďhoardingí domain names that relate to the Complainant in retaliation for the First Complaint.

Complainant alleges that the requirements of bad faith pursuant to paragraph 4(b)(iii) of the Policy are met. The Domain Name in issue was registered primarily for the purpose of causing disruption and embarrassment to the Complainant. Printouts of extracts of the material posted on the Respondentís website were attached to the Complaint as Annex M. On page 6 of Annex M, the Respondent asks readers of the website to send emails to the address <dux@oxford-university.com>. This domain name is now owned by the Complainant and the Respondent is using his website for <university-of-oxford.com> to encourage readers to send the Complainant unwanted emails in order to disrupt its business. The Complainant is not a competitor of the Respondent. However since this example of bad faith comes from the Policyís non-exhaustive list, Complainant contends that the Respondentís use of the domain name in issue to disrupt the Complainantís business should also constitute registration and use in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Complainant alleges that the requirements of bad faith pursuant to paragraph 4(b)(iv) of the Policy are met. The material posted on the site shows that the Respondent is using the site to divert internet users to the Respondentís site rather that the Complainantís website, although it is not immediately apparent that the Respondent is doing so for commercial gain unless it be to induce the Complainant to offer a high price for the domain name in issue. Even if it be the case that the Respondent is not using the domain name in issue for commercial gain, the Complainant nevertheless contends that this deliberate deception of internet users and disruption of the Complainantís affairs constitutes bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.

Complainant alleges that the material posted on the Respondentís website shows the Respondent is using the domain name in issue to deliberately tarnish the Complainantís name and trademark UNIVERSITY OF OXFORD.

Complainant alleges that the Respondentís website even contains a copyright notice indicating that copyright in the material posted on it belongs to the Complainant. The truth of the claim depends upon acceptance of the Respondentís change of name. The result is plainly deceptive in any event.

The Complainant contends that whatever the Respondentís precise motivation, it was generally to damage or disrupt the Complainant and therefore constitutes bad faith registration and use of the domain name in issue.

B. Respondentís contentions

i. Respondent fails to dispute that the Complainant has registrations of the trademark UNIVERSITY OF OXFORD.

ii. Respondent fails to dispute Complainantís contention that the Domain Name is substantially identical and confusingly similar to the UNIVERSITY OF OXFORD mark, pursuant to Paragraph 4(a)(i) of the Policy.

iii. Respondent fails to dispute Complainantís contention that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

iv. Respondent fails to contest Complainantís contention that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

Prove Up of Elements

Even though Respondent has failed to file a meaningful Response or to contest Complainantís assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that 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,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it has common law rights in the trademark UNIVERSITY OF OXFORD, which would allow Complainant to prevail in passing off action or unfair competition action in most jurisdictions and certainly in the United Kingdom and Australia. In addition, Complainant has registrations of the trademark UNIVERSITY OF OXFORD.

Respondent fails to dispute that the Complainant has registrations of the trademark UNIVERSITY OF OXFORD.

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000). The Sole Panelist finds that Respondent has not met its burden.

The Sole Panelist finds that, for the purposes of this proceeding, the Complainant has enforceable trademark rights in UNIVERSITY OF OXFORD.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).

As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainantís registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000), (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000), (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainantís registered trademark.

The Sole Panelist notes that the entirety of the mark UNIVERSITY OF OXFORD is included in the Domain Name. The only distinguishing feature is the addition of hyphens.

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998).

The Sole Panelist finds that the addition of hyphens is non-distinctive matter. This result is consistent with the First Complaint and with additional cases decided by prior Panels.

Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026 (May 9, 2000), ("The addition of a hyphen to the registered mark is an insubstantial change.").

Furthermore, Respondent has not contested the assertions by Complainant that the Domain Name is confusingly similar to the trademark.

Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the UNIVERSITY OF OXFORD mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Respondent has no relationship with or permission from Complainant for the use of the UNIVERSITY OF OXFORD mark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The only conceivable argument of Respondent is that he is commonly known by the Domain Name. Respondent adopted the name "Oxford University" only after a dispute arose with Complainant. The Sole Panelist finds that this use of the name "Oxford University" is not sufficient to establish rights or legitimate interest in the Domain Name on behalf of Respondent.

The Complainant has sustained its burden of proving a prima facie case that the Respondent lacks rights to or legitimate interests in the Domain Name. The Respondent has failed to come forward with sufficient evidence.

Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.

Complainant lists arguments supporting its assertion that each of the paragraphs 4(b)(i)-(iv) have been satisfied. However, the Sole Panelist finds that the most compelling evidence of bad faith is the retaliatory nature of Respondentís actions after the initiation of the First Complaint.

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

The Sole Panelist can conceive of no legitimate purpose to be served by the Respondent changing his name to "Oxford University," by registering approximately 200 domain names incorporating the Complainantís College names, or by directing unwanted email to Complainantís website.

The Sole Panelist noted above that Respondent used Complainantís entire mark in the Domain Name, thus making it difficult to infer a legitimate use of the Domain Name by Respondent. In Cellular One Group v. Paul Brien, WIPO D2000-0028 (March 10, 2000), Complainant filed a WIPO complaint against the Registrant of domain name <cellularonechina.com>. The WIPO panel agreed with Complainant that the Registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of <cellularonechina.com>, because the domain name included Complainantís entire trademark. In light of Cellular Oneís trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ∂ 7.

Respondentís Domain Name uses the entirety of Complainantís trademark. No plausible explanation exists as to why Respondent selected the Domain Name other than to disrupt the operations of Complainant or to tarnish Complainantís name.

Furthermore, Respondent has failed to come forward with any facts suggesting good faith registration or use.

Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Name is confusingly similar to Complainantís UNIVERSITY OF OXFORD mark, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to The Chancellor, Masters and Scholars of the University of Oxford.

 


 

Richard W. Page
Sole Panelist

Dated: August 14, 2001