WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa
Case No. D2014-2100
1. The Parties
The Complainant is The Chancellor, Masters and Scholars of the University of Oxford of Oxford, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Sipara, United Kingdom.
The Respondent is Almutasem Alshaikhissa of Cork, Dublin, Ireland.
2. The Domain Names and Registrar
The disputed domain names <oxfordphdcollege.com>, <oxfordphdcollege.info> and <oxfordphdcollge.info> (the "Domain Names") are registered with Everyones Internet, Ltd. dba SoftLayer (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 1, 2014. On December 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 11, 2014, the Registrar 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 December 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 7, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 27, 2015. 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 is an institution of higher education in the United Kingdom which has operated, in one form or another, since 1214. It enjoys a world-class reputation throughout the world as a pre-eminent learning institution.
The Complainant owns numerous trade marks containing the word "oxford" including the word mark OXFORD UNIVERSITY (the "OXFORD UNIVERSTIY Mark") which it registered in the United Kingdom on September 9, 2011.
The Domain Name <oxfordphdcollege.com> was registered on March 6, 2013. It currently resolves to a website ("Respondent's Website") that purports to be the webpage for the "Oxford College for Research and PHD Studies". There is no evidence in the record before the Panel that such a college exists, indeed the Respondent's Website contains the disclaimer "We Neither Issue Nor Do We In Any Way Hold Ourselves Out To Or Purport To Issue Any Degrees, Statements Or Pronouncements Of Any Type Or Description Which Might Be Taken To Be Or Otherwise Interpreted As Educational Award Or Scholastic Approbation And Nor Do We Intend To At Any Juncture."
The Domain Name <oxfordphdcollge.info> was registered on August 13, 2013. It is currently inactive.
The Domain Name <oxfordphdcollege.info> was registered on August 19, 2013. It is currently inactive.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant's OXFORD UNIVERSITY Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the OXFORD UNIVERSITY Mark. It owns trade marks for the OXFORD UNIVERSITY Mark in the United States and United Kingdom and enjoys significant worldwide reputation in those marks. It also enjoys a reputation in the OXFORD Mark.
The Domain Names consist of the OXFORD Mark in its entirety with the addition of the descriptive words "phd" and "college". The Domain Names are confusingly similar to the OXFORD Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known by the Domain Names, nor does the Respondent have any authorization from the Complainant to register the Domain Names. The Respondent is using the Domain Names to redirect Internet users to a website that offers similar services to that of the Complainant, including using a coat of arms and shield that are similar to that used by the Complainant. The Respondent is not believed to be an authorized educational establishment and does not appear to be licensed to offer such services. Accordingly, the Respondent is not making a bona fide offering of goods or services. The Respondent's use of the Domain Names does not grant the Respondent rights or legitimate interests in the Domain Names.
The Domain Names were registered and are being used in bad faith. The Domain Names were registered with awareness of the Complainant's rights. The Respondent's Website purports to be a website for an educational institution that does not exist. There is no plausible explanation for the Respondent registering and using the Domain Names other than to divert Internet traffic to its website to derive commercial gain. Use of the Domain Names by the Respondent will inevitably create a likelihood of confusion with the Complainant's OXFORD UNIVERSITY Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's Website and this must have been known to or foreseen by the Respondent. By registering Domain Names that infringe the OXFORD UNIVERSITY Mark and using the Domain Names to redirect Internet users to the Respondent's website, the Respondent both registered and used the Domain Names in bad faith pursuant to the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the OXFORD UNIVERSITY Mark, having registrations for OXFORD UNIVERSITY as a trade mark in the United Kingdom.
The Domain Names consist of the OXFORD UNIVERSITY Mark with the replacement of the word "university" with the words "phd college" or "phd collge" (a misspelling of the word "college"). The addition of these words does not prevent a finding of confusing similarity between the OXFORD UNIVERSITY Mark and the Domain Names as "college" is a synonym for "university" and both universities and colleges can and do offer PhD courses (PhD being an abbreviation of Doctor of Philosophy). An individual viewing the Domain Names may be confused into thinking that the Domain Names would refer to the Complainant, as it is a "college" that offers PhDs. The addition of the gTLD ".info" and ".com" are typically disregarded for the purpose of the comparison.
Thus, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making 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 Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the OXFORD UNIVERSITY Mark or a mark similar to the OXFORD UNIVERSITY Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with for a legitimate noncommercial use as the Respondent is not currently using the Domain Names <oxfordphdcollege.info> and <oxfordphdcollge.info>.
With respect to the <oxfordphdcollege.com> Domain Name, the Respondent's Website purports to offer educational services however there is no evidence that the Respondent does offer educational services or indeed that the Respondent is authorized to operate educational services. Indeed the Respondent's Website, despite purporting to offer educational services, contains a disclaimer that the Respondent does not offer any degrees or other statements relating to education. As such, the Panel finds on balance that the Respondent's use of the <oxfordphdcollege.com> Domain Name is not in connection with a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name' registration to the complainant who is the owners of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on the respondent's website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the OXFORD UNIVERSITY Mark at the time the Domain Names were registered. The Complainant has a world-wide reputation in its OXFORD UNIVERSITY Mark. Furthermore, the Respondent's Website reproduces several elements similar to those used by the Complainant, including logos and shields that are very similar to those used by the Complainant, indicating an awareness of the Complainant at the time of registering the Domain Names. The registration of the Domain Names in awareness of the OXFORD UNIVERSITY Mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith.
The Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the OXFORD UNIVERSITY Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent's Website offers educational services, such as the granting of PhDs. The Respondent would benefit from any confusion between the Respondent and the Complainant that would arise from the similarities in the Domain Names and services offered by the Complainant and purported to be offered by the Respondent. It is therefore highly likely that the Respondent received revenue from Internet users who happen to come across the Respondent's Website by means of confusion with the OXFORD UNIVERSITY Mark. The Panel finds that such use amounts to use in bad faith.
With respect to the Domain Names <oxfordphdcollege.info> and <oxfordphdcollge.info> the Panel notes that the Respondent is not currently using those Domain Names. The passive holding of these Domain Names does not as such prevent a finding of bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <oxfordphdcollege.com>, <oxfordphdcollege.info>, and <oxfordphdcollge.info> be transferred to the Complainant.
Date: January 29, 2015