WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Chancellor, Masters and Scholars of the University of Oxford v. CQ
Case No. D2001-0920
1. The Parties
The Complainant is the Chancellor, Masters and Scholars of the University of Oxford, of Wellington Square, Oxford, United Kingdom. The Complainant is represented by Arty Rajendra of Willoughby & Partners, Solicitors, London, United Kingdom.
The Respondent, and domain name Registrant at the time of the filing of the Amended Complaint referred to below, is CQ, of Louis Apolstraat 43, 3314 VH Dordrecht, 3314 VH Dordrecht, Netherlands.
The Respondent is unrepresented and has taken no part in the administrative proceeding.
2. The Domain Name and Registrar
The domain name at issue is <oxford-university.org>. The domain name is registered with Tucows, Inc., 96, Mowat Avenue, Toronto, Ontario, Canada. The domain name was registered on March 4, 1999.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center on July 17, 2001, by email. A hard copy of the Complaint was received by the Center on July 18, 2001.
The Complaint as originally filed named as Respondent, JNM, who was the original Registrant. The address given for JNM was 7 Lower Rock Gardens, Brighton, East Sussex BN2 1PG, United Kingdom (hereafter called "the Brighton address"). The Complainant has produced a Network Solutions Inc. ("NSI") WHOIS search conducted on July 13, 2001, showing that, as at that date, the administrative, technical, and billing contacts for the domain name were all the same person, namely David Pearce of the Brighton address.
The Center acknowledged receipt of the Complaint on July 19, 2001, and on July 20, 2001, the Center requested registration details from the Registrar.
On July 26, 2001, the Registrar confirmed the following:
(a) That a copy of the Complaint had been received from the Complainant (as required by paragraph 4(b) of the Supplemental Rules);
(b) That the domain name is indeed registered with the Registrar.
(c) That the Policy applies to the domain name.
In response to the Centerís request for confirmation that JNM was the current registrant of the domain name, the Registrar replied that JNM was not the then current Registrant of the domain name. The Registrar advised that the Registrant was CQ of Louis Apolstraat 43, 3314 VH Dordrecht, 3314 VH Dordrecht, NL. The Registrar advised that the administrative, technical, and billing contacts for the domain name were all shown as "Carlo Quaglia", of the same address as the registrant CQ. In addition, the Registrar provided the email address for Mr. Quaglia, and a telephone number.
In response to the Centerís request for the current status of the domain name, the Registrar replied:
"The domain name is currently on hold within our system. This is to ensure that no changes occur to the ownership or Registrar for the duration of the dispute".
On July 30, 2001, the Center emailed the Complainantís representative, passing on to the Complainant details of the Registrant of the domain name, as received from the Registrar on July 26, 2001. In the same email, the Center advised details of the administrative, technical, and billing contacts, all as advised by the Registrar on July 26, 2001. The Center advised the Complainant that: "as the Complaint lists JNM as the Respondent, it will be necessary to amend the Complaint accordingly". The Center advised that the Amended Complaint should be copied to the Respondent as well as to the concerned Registrar.
Later on July 30, 2001, the Center contacted the Registrar again and ascertained that the change of the Registrant of the domain name had taken place on July 18, 2001, at 4.06am (Toronto time). The Center passed that information on to the Complainantís representative the same day, and noted that, as the Complaint had been sent to the Registrar by courier on July 17, 2001, it would not have been received by the Registrar before the change of Registrant was effected shortly after 4.00am (Toronto time) the following day.
The Complainant filed an Amended Complaint on August 2, 2001 (email) and August 3, 2001 (hard copy). The Amended Complaint substituted CQ of Louis Apolstraat, 43 3314 VH Dordrecht, 3314 VH Dordrecht, NL for JNM, as the Respondent in the Complaint.
On August 2, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. The Center formally notified the Respondent by post/courier (with enclosures) and email (Complaint and Amended Complaint without attachments), on August 7, 2001. Notice sent to the Respondent on that date advised that the commencement date of the administrative proceeding was August 7, 2001, and that the Respondentís last day for sending a response to the Complainant and to the Center would be August 27, 2001. Copies of the Notice were sent to the Complainant, the Registrar, and ICANN, on August 7, 2001.
The Respondent made no response to the Complaint, and on August 28, 2001, formal notification of the Respondentís default was sent by email to the Respondent and the Complainant.
A single member Panel has been requested by the Complainant, and the requisite fee has been paid.
On September 3, 2001, the Center invited Warwick Alexander Smith, of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On September 4, 2001, Warwick Alexander Smith advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On September 5, 2001, the Center forwarded to Warwick Alexander Smith by courier the relevant submissions and the record. These were received by him on September 11, 2001. In terms of Rule 15(b) of the Rules, in the absence of exceptional circumstances, the Panel is required to forward its decision by September 19, 2001. Apart from an NSI dispute procedure invoked in 1999 (referred to below), no other proceedings have been notified to the Panel.
The Panel agrees with the assessment of the Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant is a body incorporated under the Oxford and Cambridge Act 1571 (13 Eliz C29). Its principal place of business is at Wellington Square, Oxford, and, in conjunction with a total of 39 semi-independent colleges, it administers one of the oldest and most prestigious centers of learning in the world. An extract from the universityís website at www.ox.ac.uk which was produced as annexure "A" to the Amended Complaint, states that the origins of the university go back some eight centuries, with the first three colleges having been formed in the late 13th Century.
One of the universityís departments is known as the Oxford University Press (hereafter called "OUP"). Part of annexure "A" to the Amended complaint is an extract from the OUP website (www.oup.com). The extract describes OUP as the worldís largest university press, publishing more than 4,500 new books each year, and with a presence in over 50 countries. The Policy of OUP is controlled by the university itself, through a group appointed from the academic staff of the university.
The Amended Complaint annexes copies of three certificates for trade mark registrations in Britain and Northern Ireland. The first certificate is for the mark OXFORD, which has been registered as from October 31, 1994 in Class 41, for publishing services included in that Class. The registered proprietor is the Complainant, trading as "OUP".
The second certificate shows that the OXFORD mark has also been registered (from the same date) in Class 9, for audio and video cassettes, floppy disks bearing computer software, CD Roms, published material in digital format. Again, the Complainant, trading as OUP, is the registered proprietor.
The third certificate shows that the Complainant is the registered proprietor of the mark OXFORD UNIVERSITY in Classes 41 and 42. The Class 41 registration is generally for academic services provided by universities. The registration certificate lists a number of additional services, including "providing information concerning education", and "information and advisory services all relating to the aforesaid". The Class 42 registration of OXFORD UNIVERSITY is for rental of temporary accommodation, café, canteen and restaurant services; provision of access time to computer databases; professional consultancy services; technical project studies; research and development for others; all provided by a university". The OXFORD UNIVERSITY mark was registered with effect from March 1, 2000.
In addition to the trade mark registrations in Britain and Northern Ireland, the Amended Complaint annexes a copy of a South African certificate of registration for the mark OXFORD UNIVERSITY in class 16 of the register, for "newspapers and periodicals, books, photographs, instructional and teaching material in the nature of maps and charts". The complainant (trading as "OUP") is shown as the registered proprietor. It is not clear from the Amended Complaint whether this South African registration is still in force Ė the Complainant in its submissions does not appear to place reliance on it. However, it appears that it was in force in June 1999 when the Complainant made its initial complaint under the NSI dispute procedure (referred to below).
In addition to the trademarks, the Complainant is the owner of the domain names <oxford-university.com> and <oxford-university.net>.
5. The Partiesí Contentions
The Complainant - Contentions of fact
The domain name came to the Complainantís attention fairly soon after it was registered on March 4, 1999. Annexure "J" to the Amended Complaint is a note made by the Complainantís solicitor, of two telephone conversations between himself and Mr. David Pearce, on March 29 and March 31, 1999. The note records that, in the earlier telephone conversation (initiated by the Complainantís solicitor), the Complainantís solicitor indicated that the university would very much like to have the domain name. The solicitor inquired if Mr. Pearce would be prepared to transfer it. Mr. Pearce simply said that he "needed to talk to somebody about it". In the course of the conversation, Mr. Pearce mentioned that he had attended Brasenose College at Oxford University.
The note records that the Complainantís solicitor followed up with the second conversation two days later, not having heard further from Mr. Pearce in the meantime. The note records that Mr. Pearce advised that he "didnít think that he would be able to help". The note records Mr. Pearce as having said to the Complainantís solicitor that he was not trying to sell the domain name, but admitted that he was not using it. The note says, "he said that he might wish to use it in the future".
The note went on to record that Mr. Pearce had volunteered the information that it was not as if he was attempting to pass off or anything like that. The Complainantís solicitor asked him if he had read the One in a Million decision (a reference to the decision of the UK Court of Appeal in British Telecommunications & Others v One in a Million Ltd (1999) FSR I), and Mr. Pearce agreed that he had. The solicitorís note goes on to say:
"I pointed out that the Court of Appeal there had indicated that mere registration of itself could amount to passing off because anyone looking at the register would see the name of the registrant and would assume that that registrant had something to do with the owner of the name".
It appears from the solicitorís file note that not much more was learned from Mr. Pearce in that telephone conversation. Mr. Pearce apparently referred to "hostile approaches from solicitors". He did, however make it clear that he would not be prepared to transfer the domain name to the Complainant (notwithstanding the Complainantís offer to reimburse him his reasonable expenses, including the cost of registration).
This second conversation ended with Mr. Pearce indicating that he thought (in view of the allegations of illegal or improper behaviour) it would be sensible for him to take legal advice.
That solicitorís file note records that about 10 minutes later, the solicitor called back and asked Mr. Pearce what his justification was for being in possession of the domain name. Mr. Pearceís response was that, in view of the suggestion that he may have behaved improperly or illegally, it would be better for him to say nothing. However, he reiterated that he had no intention of selling the name to anybody, nor any intention of passing off or engaging in any other unlawful act when he applied to register the name. The note records Mr. Pearceís comment that he thought it was a "pretty innocuous name".
The Complainantís solicitors followed up with a letter dated April 8, 1999 (Annexure "K" to the Amended Complaint) addressed to "JNM" at the Brighton address. The letter was marked for the attention of David Pearce.
The letter referred to the Complainantís concern that its world-wide reputation and goodwill should be preserved and protected, and suggested that anybody operating under the name of "Oxford University" who is not associated with the university, necessarily puts that reputation and goodwill at risk.
The letter went on to refer to a United Kingdom trademark registration for UNIVERSITY OF OXFORD, and to the South African registration of OXFORD UNIVERSTIY.
The letter referred to the solicitorís visit to the site associated with the domain name, and said:
"We find a picture of a girl and a message informing us that you are currently holding the domain name for a client. We are invited to contact BLTC.NETĖ "Better Living Through Chemistry". The same photograph appears at Mr. Pearceís BJP.COM site. The BLTC.NET site incorporates a "research library" and publishes essays on a variety of subjects. From the BJP.com site, we understand that BJP stands for Brighton Journal of Philosophy which "aims to publish cutting edge research, news bulletins and authoritative review articles commissioned from scholars working in the analytic tradition".
The letter went on to refer again to the One in a Million case, and alleged that anyone doing a search as to the registered proprietor of the domain name would find JNM/Mr. Pearce as the Registrant and would be very likely to assume that he was in some way associated with Oxford University.
The letter formally sought a transfer of the domain name to the Complainant, and advised that the Complainantís offer to reimburse Mr. Pearceís reasonable costs remained open.
Having received no reply, the Complainantís solicitors wrote a follow-up letter to JNM at the Brighton address, on May 13, 1999. They advised that if they did not hear from JNM/Mr. Pearce by May 30, 1999, they would ask NSI to invoke their domain name dispute resolution Policy.
There was still no response from JNM/Mr. Pearce, and on June 8, 1999 the Complainantís solicitors duly lodged a Complaint with NSI. They alleged that the Registrantís use of the domain name infringed the Complainantís trademark rights and constituted the tort of passing off. They enclosed copies of the South African trade mark certificate, and the April and May letters to Mr. Pearce.
After NSI had obtained certain further information from the Complainant relating to its Complaint, NSI wrote to Mr. Pearce on September 14, 1999. In accordance with NSIís dispute procedures, Mr. Pearce was invited to select one of the options set out in the letter, within 37 days from September 14, 1999. The options included supporting his position by production of a registered trade mark or service mark owned by him, transferring the domain to the Complainant, and registering a new and different domain name with a view to an orderly transition from the disputed name to the new name. Other options listed by NSI included deleting the disputed name, and issuing a Civil Court action against the Complainant related to the registration and use of the domain name.
The NSI letter advised Mr. Pearce that if he did not select one of the options, or did not respond to the letter, the disputed name would be placed on "Hold".
Mr. Pearce did not respond, and by letter dated October 29, 1999, addressed to Mr. Pearce at the Brighton address, NSI advised that the domain name had been placed on "Hold".
The Complainant says in the Amended Complaint that it anticipated that in due course the domain name would become available for registration in the name of the Complainant, but in the interim the NSI procedure ceased to have effect and the ICANN Policy was introduced. In any event, the Complainant does not appear to have pursued the matter further until April 4, 2001, when a software administrator from the university wrote to Mr. Pearce at the Brighton address advising that, although all of the universityís academic pages were posted at the ox.ac.uk website, "the trade mark people want us to try to get hold of names such as oxford-university.org as well". The university software administrator offered Mr. Pearce £500 for the domain name, plus any registration fees paid already by him.
Mr. Pearce replied on April 18, 2001. After apologizing for the delay in replying, he said:
"I would like to help if I can, but there are complications. I am afraid youíll first need to contact Carlo Quaglia (Over de Vesten 80, 3116 AG Schiedam, Netherlands). The domain is registered on his behalf, apparently for a guide, and I donít have the authority to transfer it without his permission."
The universityís software administrator then wrote to Mr. Quaglia at the address provided by Mr. Pearce. The letter referred to the earlier approach the software administrator had made to Mr. Pearce, and repeated the offer of £500 plus registration fees for the domain name.
Carlo Quaglia replied briefly on May 5, 2001. His letter stated:
"I regret to inform you that I cannot accept your offer, as a guide is planned for the domain in question."
Use of the Domain Name Since March 1999
The Complainant has produced the webpage one arrives at when one visits www.oxford-university.org. As at July 13, 2001 (the date of the download of the page), the page featured a picture of waves breaking, and the message:
"We are currently holding this domain for a client.
Please email the web master for further details.
Info at bltc.net."
There is a link to another website described as "HEDWEB".
The Complainant has annexed copies of pages downloaded on July 13, 2001, from the <bltc.net> and <hedweb.com> websites. The page downloaded from the bltc.net website consists of a "Mission Statement" for "BLTC Research", an entity said to have been founded in 1995 to promote "paradise-engineering". The download from www.bltc.net provides an address for BLTC Research which is the Brighton address. The hedweb.com pages contain an abstract from a paper entitled "The Hedonistic Imperative", and there is a cross-reference to BLTC Research. The name "David Pearce" appears beneath the words "The Hedonistic Imperative", on the second of the two pages produced from this website.
The Complainant has also produced NSI WHOIS searches for numerous other domain names, with a variety of different entities shown as Registrant, but in all cases showing the Brighton address as the Registrantís address, and giving the Brighton address as the address for all of the administrative, technical, and billing contacts. These domain names include <balliol.com>, <princeton-university.com>, and <cambridge-university.net>, all registered in the name of "Ivory Towers Email Services", of the Brighton address. Mr. David Pearce is named as administrative contact for the <princeton-university.com> and <cambridge-university.net> domain names. For <balliol.com>, the administrative, technical, and billing contacts are all described as "Towers, Ivory", of the Brighton address.
A July 13, 2001, NSI WHOIS search on the domain name <abolition.net>, shows Mr. David Pearce of BLTC Research as the administrative contact, and gives Mr. Pearceís email address as "email@example.com".
The Complainant has produced a number of other WHOIS searches, all showing Mr. David Pearce of the Brighton address as the administrative contact.
A number of the websites with which Mr. Pearce has obviously been associated, when visited, take the visitor to the same page showing waves breaking and the statement:
"We are currently holding this domain for a client.
Please email the web master for further details.
Info at bltc.net."
This is the case with the two "university" sites, <balliol.com> and <princeton-university.com>, and in each case the pages contain the HEDWEB link referred to earlier.
In all, the Complainant has listed a total of approximately 95 domain names which it says are registered to Registrants having the Brighton address and the same telephone number as that of David Pearce.
The Complainant has also produced extracts from the websites of those of the domain names which appear to it to be associated with active businesses or other operations. They are BLTC Research, with an active website at www.bltc.net, The Brighton Journal of Philosophy, with an active website at www.bjp.com, "The Hedonist Imperative", with an active website at www.hedweb.com, and Knightsbridge Online, which operates an active website at www.knightsbridge.net.
The websites at <bltc.net>, <bjp.com> and <hedweb.com>, all appear to be publishing vehicles for articles or papers which appear to be of interest to David Pearce.
The <knightsbridge.net> domain name WHOIS search of July 13, 2001, shows Knightsbridge Online of the Brighton address as Registrant, and David Pearce of the Brighton address as administrative, technical and billing contact.
The active website at <knightsbridge.net> is that of Knightsbridge Online. Unlike the other active websites, this site is clearly that of an internet services business. One of the pages produced by the Complainant lists personnel under the heading "KNIGHTSBRIDGE INTERNET". The contact for "Strategy & Planning" is shown as "David Pearce", and the "Finance Director" is shown as "Carlo Quaglia".
The Complainant has also produced an NSI WHOIS search on the name "Quaglia". That search identifies a "Carlo Quaglia" of the Brighton address, with the same telephone number as the number shown for David Pearce in the July 13, 2001, WHOIS search of <oxford-university.org>.
The Complainant Ė Contentions of Law
Generally, the Complainant contends that, even though the domain name is registered in the name of CQ rather than JNM, the facts surrounding the Complaint as originally worded against JNM are relevant to the Amended Complaint. The Complainant refers in particular to its dealings with the original Registrant, JNM/David Pearce.
With respect to each of the grounds which the Complainant is obliged to establish under paragraph 4(a) of the Policy, the Complainantís contentions are as follows.
Domain Name Identical or Confusingly Similar to a Trade Mark or Service Mark in which the Complainant has Rights (paragraph 4(a)(i) of the Policy)
The Complainant says that the domain name features both of its registered marks, OXFORD and OXFORD UNIVERSITY. It says that the domain name is identical to the latter mark, save for the hyphen and the generic domain suffix.
The Complainant owns the sister domain names <oxford-university.net> and <oxford-university.com>, both of which link to the Complainantís main website. If it is necessary to establish a likelihood of confusion, the Complainant submits that website visitors entering the web address www.oxford-university.org into the address window will by the very nature of the domain name be expecting to visit a website of the Complainant. In addition, it points to the fact that those responsible for the Respondentís sites claim to be engaged, amongst other things, in academia and publishing, which are the same activities for which the Complainant is famous, and for which its trade marks and service marks are registered.
The Respondent has No Rights or Legitimate Interests in Respect of the Domain Name (paragraph 4(a)(ii) of the Policy)
The Complainant says that the original Registrant, whether construed narrowly as JNM or broadly as David Pearce and the family of organizations operating from the Brighton address, made no claim to any right or legitimate interest in respect of the domain name, save that in the course of business, the name was being held for a client, Mr. Carlo Quaglia, who said he proposed to use it for a guide.
Secondly, the Complainant says that none of the factors set out in paragraph 4(c) of the Policy apply in this case: the Respondent has not used the domain name for any bona fide offering of goods or services, nor has it made any demonstrable preparations for any such use, and nor is it commonly known by the name Oxford University.
The Complainant contends that Mr. Quaglia is clearly connected with the original Registrant, and has no more rights or legitimate interests in respect of the domain name than the original Registrant. If the Respondent is proposing to produce a guide under and by reference to the domain name, the Complainant says that that would not give him a right or legitimate interest in respect of the domain name. Nobody other than the Complainant or a Licensee of the Complainant could have a right or legitimate interest in the domain name. If the intention of the Respondent is to produce a guide on the Complainant (which the Complainant denies), the domain name is not necessary for that purpose.
The domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy)
The Complainant rejects the allegation of JNM/Mr. Pearce that the domain name was registered for Mr. Quaglia, who plans to use it for a guide. The Complainant sets out a number of reasons in support of its argument. Generally, the reasons refer to the apparent links between Mr. Quaglia and Mr. Pearce or his business, and the fact that the Registrants have been sitting on the domain name for over two years without any demonstrable plans being made for the use of the domain name (apart from linkage to other sites of JNM or Mr. Pearce). The Complainant refers to the apparent recognition by both Mr. Pearce and Mr. Quaglia, as participants in Knightsbridge Online, of the importance of registering hyphenated versions of oneís name. Another of Mr. Pearceís businesses has registered two other hyphenated university names, namely <princeton-university.com> and <cambridge-university.net>, both of which are said to have been registered for a client. It is said that those names also have been sitting around for over two years without any active use having been made of them, except linkage with other sites associated with JNM/Mr. Pearce.
The Complainant says that, until the correspondence in April and May of this year, neither JNM nor Mr. Pearce responded to the correspondences from the Complainantís lawyers or NSI. In March 1999, Mr. Pearce declined to explain why he had registered the domain name. The Complainant says that, if the explanation now proffered (ie the guide) had been the true explanation, there is no reason why Mr. Pearce could not have produced that explanation back in March of 1999. The final reason advanced by the Complainant, is an alleged lack of candour on the part of Mr. Pearce in identifying Mr. Quaglia as a "client", without informing the Complainant of Mr. Quagliaís linkages with Mr. Pearce (eg joint involvement in Knightsbridge Online, and residents at the same address). The Complainant suggests that the fact that Mr. Pearce apparently felt it appropriate to conceal the nature of his association with Mr. Quaglia is itself indicative of bad faith.
For all of those reasons, the Complainant contends that the explanation of the domain name being intended for use as a guide, should be rejected.
The Complainant contends that the Respondentís real purpose in registering the domain name was one or more of the following:
1. The transfer of the domain name on July 18, 2001, to the Respondent was effected to avoid the original complaint filed against JNM on July 17, 2001.
2. The Respondent and JNM intended to sit on the domain name until the Complainant came up with a large enough sum of money by way of a purchase price. The Complainant says that the domain name was registered with knowledge of its value to the Complainant, and the fact that it has not been used for over two years (other than for linking purposes), coupled with the refusal of the offer of £500 plus expenses, suggests that the domain name was registered with a view to selling it to the Complainant for a valuable consideration well in excess of the Respondentís out-of-pocket expenses.
3. The Complainant contends that the domain name was registered with a view to blocking the Complainant, and depriving the Complainant of the opportunity to register it. The Complainant refers to Mr. Pearceís registrations of <balliol.com>, <princeton-university.com>, and <cambridge-university.net>, in support of the contention that JNM/Mr. Pearce have indulged in a pattern of such behaviour. All three names remain unused save for the purpose of linking to other sites associated with JNM or Mr. Pearce. The Complainant seeks to infer that JNM/Mr. Pearceís objective in blocking the Complainant was to initiate an offer to purchase at a price well in excess of out-of-pocket expenses. It says that the transfer of the domain name to the Respondent does not materially change that position.
4. To linking the domain name to one or more of JNMís active websites, and with a view to attracting unsuspecting visitors to those sites. The Complainant refers in its submission to March 1999 print ups of extracts of the sites at <hedweb.com> and <bjp.com> having been produced at annex M to the Amended Complaint, but the Panel can find no annex M as part of either the original Complaint or the Amended Complaint. The Complainant contends that, by using the domain name to access those sites, JNM was deceiving would-be visitors to a site of the Complainant, and was seeking to suggest that the Complainant was in some way connected with and/or has authorised or approved the content of the sites. The Complainant says that if that objective was for commercial gain, the use falls smack within the terms of paragraph 4(b)(iv) of the Policy.
Finally, the Complainant points out that the list of circumstances indicating bad faith registration and use which is set out in paragraph 4(b) of the Policy, is non-exhaustive. It says that even if the Panel takes the view that the Respondentís use of the domain name has been for a non-commercial purpose, the Panel should nevertheless find that the transfer of the domain name to the Respondent, and the Respondentís registration and use of the domain name, constitute bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.
The Complainant notes that the sites to which the domain name has been linked purport to deal with serious academic and scientific subjects, and that in using the Complainantís name to attract people to those sites (and thereby give visitors the impression that the Complainant is in some way associated with the site and/or the views expressed thereon), JNM to that extent at least has taken the Complainantís reputation and goodwill out of the Complainantís control.
The Respondent has not made any submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to:
"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."
Under Paragraph 4(a) of the Policy, the Complainant carries the burden of showing:
- That the respondentís domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
- That the respondent has no rights or legitimate interests in respect of the domain name; and
- That the domain name has been registered and is being used in bad faith.
Preliminary Issue Ė The Effect of the Transfer of the Domain Name on July 18, 2001
Paragraph 8(a) of the Policy generally prohibits the transfer of a domain name during a pending administrative dispute, and for a period of 10 days after the proceeding has been concluded. Under Paragraph 8(a), the Registrar reserves the right to cancel any transfer of a domain name registration to another holder, where the transfer has been made in violation of the subparagraph.
In this case, there was a transfer of the registration the day after the proceeding was commenced. It occurred before the Registrar had notice of the proceeding, and it may have occurred after a copy of the Complaint was served on JNM by the Complainant (that is not clear Ė the transfer of registration was effccted at 4.06am. on July 18, 2001, in Toronto, and the Complainant says that only hard copies of the Complaint had been sent by courier to the Registrar and to JNM the previous day. There is no proof of the actual time the Respondent received the original Complaint).
In this case the Panel has not been made aware of any request to the Registrar to cancel the transfer made on July 18, 2001, and the Complainant has elected to continue with an amended complaint against CQ as sole Respondent. In those circumstances, it is not sufficient for the Complainant to prove the allegations in subparagraphs (ii) and (iii) of Pargagraph 4(a) of the Policy against the original Registrant JNM Ė it will need to prove the matters set out in those paragraphs against the current Registrant CQ.
The Complainant has not produced any evidence of how the Respondent may have been using the domain name since it was transferred to him on July 18, 2001. Instead, the Complainant relies on the evidence of how the domain name was being used by Mr. Pearce/JNM before that date, and says effectively that the respondent CQ has been so closely associated with Mr. Pearce that the pre-July 18, 2001, use of the domain name by Mr. Pearce is also evidence against the Respondent on the issues of legitimate right or interest, and bad faith registration and use. The Complainant says that the July 18, 2001, transfer was no more than a device to attempt to avoid the operation of the dispute resolution procedure.
The Registrar has placed the domain name "on holdí, so there is no question of this proceeding being ineffective. Any decision of this Panel to order a transfer of the domain name to the Complainant will therefore be implemented.
With those preliminary observations in mind, the Panel turns to consider each of the 3 subparagraphs of Paragraph 4(a) of the Policy.
Domain Name Identical or Confusingly Similar to a Trade Mark or Service Mark in which the Complainant has Rights
The Panel has no difficulty in finding that this part of the Amended Complaint has been proved. The domain name <oxford-university.org> is almost identical to the Complainantís registered mark OXFORD UNIVERSITY Ė the only differences are the generic additions of the hyphen and the ".org" suffix, and they do nothing to deflect the viewerís attention from the primary words which make up the name.
While that mark has only been registered in the United Kingdom and Northern Ireland since March 2000, the Panel notes that it has previously been registered in South Africa, and that the Complainant has built up substantial goodwill through many years of use of the mark. It has very probably enjoyed common law ownership rights in the mark for many years prior to formal registration.
For a domain name to be "confusingly similar" to a mark, its effect on the viewer must be such that there is a real likelihood of confusion between the two expressions (see for example WIPO case D2000-1293 Ė Telstra Corporation Ltd. v Warren Bolton Consulting Pty Ltd.). The Panel finds that there is such a "real likelihood" in this case.
The University itself is world famous, and the Panel accepts the Complainantís submission that many people visiting a website associated with the name <oxford-university.com> would be expecting to find a site associated with the Complainant. That position is exacerbated by the fact that the Complainant owns the domain names <oxford-university.com> and <oxford-university.net>.
In all those circumstances the Panel finds that the domain name <oxford-university.org> is confusingly similar to the Complainantís OXFORD UNIVERSITY mark. That finding means that it is not necessary to consider the Complainantís submissions based on its ownership of the mark OXFORD.
Respondent Has No Rights or Legitimate Interests in respect of the Domain Name
First, it is clear that the Complainant has not authorized the use of the domain name, whether by JNM or Mr. Pearce, or by CQ (who the Panel finds is the same person as Carlo Quaglia).
When first approached at the end of March 1999, Mr. Pearce did not attempt to set up any legitimate basis for holding and using the name. He acknowledged that he was not then using it, and said only that he might wish to use it in the future. Perhaps understandably, he was guarded in dealing with the Complainantís solicitor on the telephone. However he did not take the opportunity to respond to the Complainantís solicitors at any later time. In particular, he made no response to the Complainantís solicitorsí letters of April 8, and May 13, 1999. He then made no response when the NSI dispute resolution procedure was invoked later that year.
When the Complainant approached him again through its software administrator in April 2001, Mr. Pearce referred the Complainant to the Respondent, and advised for the first time that the domain was registered on the Respondentís behalf. He stated that he did not have authority to transfer the domain name without the Respondentís permission, and said that the Respondent was holding the name, "apparently for a guide". The Respondent confirmed briefly in his letter of May 5, 2001, that "a guide is planned for the domain in question".
The advice that the domain name was registered by JNM on the Respondentís behalf, is consistent with the statement on the page from the website associated with <oxford-university.org>, (as downloaded by the Complainant on July 13, 2001) that "we are currently holding this domain for a client". It appears from the Complainantís solicitorsí letter of April 8, 1999 that the same text had appeared, with the same invitation to visit the <bltc.net> site for information, over two years earlier.
The evidence shows that the Respondent has had a close business association with Mr. Pearce through Knightsbridge Online. He has used the same address and telephone number as Mr. Pearce. In those circumstances, and in the absence of any explanation from the Respondent or Mr. Pearce to the contrary, the Panel is prepared to infer that the Respondent was fully aware of, and participated in, the only use which appears to have been made of the domain name by JNM/Mr.Pearce , namely, as a link to Mr. Pearceís <bltc.net> and <hedweb.com> sites.
Paragraph 4(c) of the Policy lists, without limitation, three specific factors which, if proved, are effective to demonstrate a respondentís rights or legitimate interests in a domain name for the purposes of subparagraph 4(a)(ii) of the Policy.
The first factor relates to the respondentís use, or demonstrable preparations to use, the domain name, in connection with any bona fide offering of goods or services. As noted above, the Panel does not regard the use of the domain name as a link to sites operated by Mr. Pearce, as a bona fide use of the domain name. The only evidence of a possible offering of goods or services, is the statement in the Respondentís letter of May 5, 2001, that "a guide is planned for the domain in question". What sort of guide was not explained. That evidence falls far short of establishing "demonstrable preparations to use" the domain name.
The second of those factors (respondent commonly known by the domain name) cannot have any application in this case. Far from being the Respondentís own name, the domain name is synonymous with the Complainantís university.
As for the third factor (respondent making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue), the Panel does not regard the "use" of the domain name - as a "hook" to attract Internet visitors looking for a site of the Complainant - as a legitimate, or fair use of the domain name.
The Panel is satisfied that none of the factors listed in Paragraph 4(c) of the Policy are present.
The onus of proof remains on the Complainant, but a respondentís failure to demonstrate that it comes within Paragraph 4(c) can assist the Panel in deciding, on a consideration of all the evidence, whether the Complainant has discharged the onus of proof (see WIPO case D2000-1293, supra). In this case the Respondent has elected to make no response to the Complaint, and the overall weight of evidence points clearly to the absence of any legitimate rights or interests in the domain name. Without limitation, the Panel refers to the apparent activities of Mr. Pearce as a "warehouser" of domain names, his failure to respond to solicitorsí correspondence and the NSI complaint, the Respondentís use of Mr. Pearceís address and telephone number, the Respondentís obvious involvement in Mr. Pearceís business activities, and the Respondentís failure to produce anything in the nature of a "guide" within the period of two years and four months since the domain name was registered.
Overall, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the domain name.
Domain Name Registered and Being Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, if found by the Panel to be present, are to be regarded as evidence of the registration and use of a domain name in bad faith. Those circumstances are:
"(i) circumstances indicating that you (ie the domain name registrant) 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 trade mark 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 trade mark 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 Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
This list of circumstances is non-exhaustive.
The Complainant submits that the circumstances fall within one or other of circumstances (i), (ii) or (iv). However, if the Panel does not find that the case comes within any of those circumstances, the Complainant submits that there should nevertheless be a finding of registration and use in bad faith.
As discussed under the section of this decision dealing with paragraph 4(a)(ii) of the Policy, there are a number of factors indicating that the Respondentís "guide" explanation is not credible. It is not necessary to repeat them under this head.
The registration of this domain name in March 1999 appears to have been intended for one or other of the following purposes:
(i) to hold the domain name with a view to eventual sale to the Complainant; or
(ii) to use the domain name as a "hook", to attract Internet users looking for sites associated with the Complainant, to the <bltc.net> and hedweb.com web sites.
The first of those purposes would clearly fall within paragraph 4(b)(i), and constitute bad faith registration and use. However, the Panel finds that there is insufficient evidence of an intention to sell the domain name to the Complainant. That may or may not have been the intention of Mr. Pearce and the Respondent. It is to be recalled that Mr. Pearce denied any intention to sell when the Complainantís solicitor spoke to him shortly after the domain name was registered. Similarly, when the £500 offer was made to the Respondent in April of this year, the offer was rejected, without any counter-offer or invitation to discuss a price which one might have expected if Mr. Pearce and the Respondent were really in the market to sell. That might have been the behaviour of a canny seller who was aware of the effect an overt offer to sell might have under the Policy, but it is equally consistent with the other possible purpose mentioned above (continuing to use the domain name as a "hook"). On balance, the Panel cannot say that the Complainant has discharged the onus of proving that the purpose was to sell the domain name to the Complainant.
Nor is the Panel prepared to find that there is sufficient evidence against the Respondent, which would bring the case within paragraph 4(b)(ii). This sub-paragraph requires that the Respondent must have engaged in a pattern of registration of domain names in order to prevent the owner of the trade mark or service mark from reflecting that mark in a corresponding domain name. There is no doubt a great deal of room for suspicion about the extent of the Respondentís involvement in Mr. Pearceís activities, but at the end of the day all that has been proven is that the domain name which is in issue has been under his control for a sufficient period of time to make him responsible for its use, and that he has used the Brighton address and had an indirect association (through Knightsbridge Online) with the domain name <cambridge-university.net>.
Paragraph 4(b)(iv) of the Policy describes a situation which is closer to what Mr. Pearce and the Respondent appear to have been doing. They have been using the domain name to attract Internet users to the web sites <bltc.net> and <hedweb.com>.
The general thesis of the BLTC Research "Mission Statement", is that it is possible, by appropriate application of biotechnology and genetic engineering techniques, to completely abolish suffering, not just in humans, but in all sentient life. The Mission Statement concludes by saying "BLTC Research campaign to promote paradise-engineering as a rigorous academic discipline and a mature applied science".
The <hedweb.com> web site contains material which is concerned with the same general ideas. This web site contains an abstract of Mr. Pearceís paper called "The Hedonistic Imperative". The abstract describes the work as a "manifesto", which outlines a strategy to eradicate suffering in all sentient life.
The reference in the BLTC Mission Statement to the campaign to promote paradise-engineering as a "rigorous academic discipline and a mature applied science", appears to offer an explanation as to why Mr. Pearce and the Respondent might have been seeking to attract Internet visitors looking for sites associated with Oxford University, and Princeton University. Any apparent endorsement from one of those institutions would clearly serve the end of promoting paradise engineering as a "rigorous academic discipline", or a "mature applied science".
The real issue under paragraph 4(b)(iv) of the Policy, is whether these attempts to attract Internet traffic have been for commercial gain. On the material produced with the Amended Complaint, the Panel cannot conclude with any degree of safety that they were. The activities linked with the <hedweb.com> and <bltc.net> web sites appear to be more in the nature of promoting particular academic, political, or ethical theories or ideas. There is no evidence of a profit motive, and, having regard to the general nature of the web site material, the Panel does not feel able to infer one.
The Panel accordingly concludes that none of the grounds set out in paragraph 4(b) of the Policy have been proved.
However, the paragraph 4(b) grounds are not exhaustive. It is open to the Panel to find in an appropriate case that there has been bad faith registration and use on other grounds.
In this case the Panel finds that there are sufficient other matters established to constitute bad faith registration and use.
Had there been no use of the domain name at all, the Panelís starting point would have been to approach the bad faith issue from the standpoint adopted by the Panel in WIPO case D2000-1074, relating to the domain name <sony.net>. There, the Panel decided in the Complainantís favour, stating:
"In the view of the Panel, while inaction should never of itself constitute evidence of registration and use in bad faith, inaction may do so where the Domain Name comprises a name which can only sensibly refer to the Complainant, where there is no obvious possible justification for the selection of the Domain Name, where the Respondent has not sought to put before the Panel any credible justification for selection of the Domain Name, and where it is difficult to conceive of any use of the Domain Name, which will not be likely to cause confusion of some kind."
Other cases which have held that the concept of a domain name being used in bad faith is not limited to positive action, include Compaq Computer Corporation v Boris Beric (WIPO Case D2000-0042) and Telstra Corporation Limited v Nuclear Marshmallows (WIPO Case D2000-0003). It is clear from these cases that much depends on the circumstances of the particular case.
In this case, it is quite clear that Mr. Pearce and the Respondent have opportunistically taken a domain name which could only refer to the Complainant. The use of that name to attract Internet visitors looking for sites associated with the Complainant could not be a justification for the selection of the domain name, and the Panel has found that the "guide" explanation put forward in correspondences by the Respondent (but not supported in the administrative proceeding itself) is not credible. It is also difficult in this case to conceive of a use of this domain name (without any references in the domain name itself such as "guide to Ö") not resulting in confusion of some kind.
Such minimal use as there has been of the domain name, only enhances the impression of bad faith which one would have gained by following the approach adopted by the Panel in the Sony case.
The Panel appreciates the possible argument that the inclusion of the words "for commercial gain" in paragraph 4(b)(iv) of the Policy implies that if there is no intention to derive commercial gain, there will be no bad faith use, even if all other paragraph 4(b)(iv) circumstances exist. However that argument ignores the opening words of paragraph 4(b), which make it clear that what follows is not intended to limit the circumstances which might constitute bad faith use.
In that regard, the Panel accepts the Complainantís submission relating to the protection of the Complainantís considerable reputation worldwide for academic excellence and as a publisher. The web sites to which the domain name has been linked do purport to deal with serious academic and scientific subjects (eg genetic engineering and nanotechnology) as submitted by the Complainant, and it might be said that the views expressed on these web sites appear to be somewhat extreme (eg references to "campaigns" and "manifestos", in the context of promoting the idea of the complete elimination of all human suffering by the use of biotechnology/genetic engineering). The mischief lies not in the ideas expressed on these web sites, but in the misleading implication (effected by the use of the domain name) that the Complainant has somehow sponsored or endorsed the ideas, or those expressing them. (The "client" for whom the site is said to be held, is likely to be assumed by many site visitors to be the Complainant. The linkages to the <bltc.net> and <hedweb.com> sites then invites the inference that the Complainant endorses or is somehow associated with those sites.)
The Panel accepts that, to that extent, the Complainantís reputation and goodwill are taken out of the Complainantís control, with consequential scope for damage to the Complainant.
The Panel also accepts the submission that the Respondent is unfairly benefiting from the significant reputation and goodwill of the Complainant, by attracting visitors to <bltc.net> and/or <hedweb.com> who would not otherwise be visitors to those sites.
Considering those factors with what the Panel finds to be the deliberately misleading and opportunistic adoption of a domain name almost identical to the Complainantís trade mark, and the absence of any attempt by the Respondent to justify his actions, the Panel finds the "registration and use in bad faith" ground is established.
For the foregoing reasons, the Panel decides that:
(a) The Respondentís domain name is confusingly similar to the OXFORD UNIVERSITY mark to which the Complainant has rights.
(b) The Respondent has no rights or legitimate interests in respect of the domain name.
(c) The Respondentís domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <oxford-university.org> be transferred to the Complainant.
Warwick Alexander Smith
Dated: September 19, 2001