WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oxford University Press v. Fundacion Private Whois

Case No. D2012-1473

1. The Parties

The Complainant is Oxford University Press of Oxford, United Kingdom of Great Britain and Northern Ireland, represented by Harbottle & Lewis LLP, United Kingdom.

The Respondent is Fundacion Private Whois of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <oxforddictionary.com> is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2012. On July 20, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On July 23, 2012, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2012.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 21, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant has been operating as a publisher since 1586. It currently publishes over 4,500 titles annually worldwide. These titles include dictionaries and a variety of reference learning materials. The dictionaries, reference, and learning materials are focused on individuals at the primary and secondary school level, and include higher education texts, English language teaching (ELT) texts, children’s books, academic and professional books and journals. The Complainant also publishes a wide range of electronic materials of the same nature. The Complainant has been associated with the production of books and printed matter for over 500 years.

The OXFORD trademark has been used consistently since the 19^th Century in association with the Complainant’s products and services, in particular printed and digital material and publishing services.

The Complainant owns many trademark registrations around the world for the mark OXFORD in association with publishing, books and electronic products and services, including the following registrations:

United Kingdom Registrations

OXFORD No. 1551449, October 31, 1994

OXFORD No. 1575210, October 31, 1994

OXFORD No. 1576322, October 31, 1994

United States of America

OXFORD No. 403327, November 22, 1982

CTM

OXFORD No. 3424851, October 29, 2003

OXFORD No. 4467131, June 2, 2005

The Complainant has used the mark OXFORD DICTIONARY since 1884 in association with dictionaries and reference materials. The first OXFORD ENGLISH DICTIONARY was issued in installments beginning in 1884 and completed in 1928.

The Complainant’s sales for products bearing the OXFORD trademark from 1998 to 2008 worldwide total GBP 4,242,000,000. In 2008, sales figures for products bearing the OXFORD trademark total GBP 492,000,000. For the period 1998 to 2008, the Complainant has spent GBP 632,000,000 worldwide in promoting and advertising the OXFORD trademark and its products and services.

The Complainant owns 388 domain names incorporating the word “oxford”, and operates approximately 150 websites hosting content and providing services derived from its dictionaries and reference titles. The Complainant’s three main websites operate from: <oxforddictionaries.com>; <oed.com> and <oxfordlanguagedictionaries.com>.

The Respondent registered the disputed domain name on April 18, 2002. On April 26, 2012, a WhoIs search revealed that the Registrant was listed as [J.] Briggs of New Wave Holdings, Panama. On July 19, 2012, the WhoIs search revealed that the Registrant has employed a domain-name privacy service.

At the time the Complaint was filed, the disputed domain name reverted to a website that provided links to third parties’ sites offering goods and services in competition with the Complainant’s wares and services. In the past, the disputed domain name reverted to a holding page (November 2002); was redirected to a website at “www.searchmotor.com” (December 2002 – December 2007); functioned as a click through site providing links to third party websites offering competing wares and services of the Complainant’s wares and services (December 2007 – February 2011); reverted to an apparent phishing site operated by
“channel-rewardz-line.com” which invited Internet users to enter personal details in order to claim prizes (February 2011-April 2012); and reverted to a website which provides third party sites which offered goods and services competing with the Complainant’s wares and services (April 2012 – to-date).

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant owns many trademark registrations for the trademark OXFORD, which date back to as early as October 31, 1994, in various jurisdictions, including:

United Kingdom

OXFORD No. 1551449, October 31, 1994

OXFORD No. 1575210, October 31, 1994

OXFORD No. 1576322, October 31, 1994

United States of America

OXFORD No. 403327, November 22, 1982

CTM

OXFORD No. 3424851, October 29, 2003

OXFORD No. 4467131, June 2, 2005

The Respondent has registered the disputed domain name which is identical to the Complainant’s registered trademark, except for the addition of the word “dictionary” and the “.com” designation.

The Complainant also claims common law rights in the trademark OXFORD DICTIONARY from 1884.

Accordingly, the Complainant contends that the disputed domain name is identical to or confusingly similar with the Complainant’s common law and registered trademarks. The Complainant contends that the addition of the descriptive word “dictionary” does not distinguish the disputed domain name from the Complainant’s registered trademark OXFORD. Furthermore, the addition of a generic top-level domain name (gTLD) “.com” designation does not distinguish the disputed domain name from the Complainant’s trademark.

Rights or Legitimate Interests

The Respondent is not publicly known by the “Oxford” name, and the Complainant submits that the Respondent cannot have any rights or legitimate interests in the disputed domain name, because the Complainant has exclusive rights to the trademark OXFORD in the United Kingdom, and internationally. The Respondent has no past or current business relationship with the Complainant, and the Respondent was never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondent is not making a bona fide use of the disputed domain name, and has used the disputed domain name in connection with a website which provides links to third party websites which are direct competitors of the Complainant.

Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent must have known about the Complainant’s rights in the trademark OXFORD when it registered the disputed domain name; (ii) the Respondent registered and is using the disputed domain name which reverts to a website which provides links to websites of direct competitors of the Complainant for the purposes of monetary gain; and (iii) the Respondent registered and is using the disputed domain name in an attempt to interfere with the Complainant’s business and to divert Internet users, who are looking for the Complainant’s website to the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have trademark rights in the mark OXFORD by virtue of United Kingdom Registration Nos. 1551449; 1575210; and 1576322, all dated October 31, 1994, and by the other registrations listed in the Complaint.

The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark OXFORD, even with the addition of the word “dictionary” and the gTLD “.com”. The addition of a descriptive word, such as “dictionary” does not under the circumstances serve to distinguish the disputed domain name from the Complainant’s trademark, particularly when the descriptive word relates directly to the Complainant’s principal wares.

Furthermore, the Panel finds that the Complainant owns extensive common law rights in the trademark OXFORD DICTIONARY, through its long time use (since 1884), and its volume of sales internationally. As such, the Panel finds that the disputed domain name is identical to the Complainant’s common law trademark OXFORD DICTIONARY.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is prepared to accept the Complainant’s contention that its OXFORD trademark and its associated products and services have developed a significant reputation in the United Kingdom, and internationally. The Panel finds that the OXFORD trademark - in association with dictionaries and reference materials – has attained the status of a famous trademark.

The Panel is therefore prepared to find that the Respondent must have been aware of the Complainant’s trademark rights in OXFORD and OXFORD DICTIONARY when it/he registered the disputed domain name.

Furthermore, the Panel finds no evidence that the Respondent is commonly known by the name “Oxford”, or that the Respondent was licensed or authorized by the Complainant to use the trademark OXFORD, or has any other form of legitimate interest in the “Oxford” name.

The Panel is also prepared to find that the Respondent has not demonstrated a bona fide use of the disputed domain name. At the time the Complaint was filed, the disputed domain name reverted to a website containing links to other parties which provided products which were directly competitive to the Complainant’s products.

Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent registered and has used the disputed domain name in bad faith.

As set out in paragraph 6(b), the Panel finds that the Complainant has well-established rights in the trademarks OXFORD and OXFORD DICTIONARY, to the point where the Respondent must have been aware of those rights when it registered the disputed domain name. Furthermore, the Panel finds that the disputed domain name has all the hallmarks of an abusive registration, including the presence on its associated website of revenue-generating links to other websites operated by direct competitors of the Complainant, in the manner described by paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(iii) under the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <oxforddictionary.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Dated: September 5, 2012