WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Chancellor, Masters and Scholars of the University of Oxford, trading as Oxford University Press v. Zhichao Yang
Case No. D2015-1884
1. The Parties
The Complainant is The Chancellor, Masters and Scholars of the University of Oxford, trading as Oxford University Press of Oxford, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Sipara, United States of America ("United States").
The Respondent is Zhichao Yang of Anhui, China.
2. The Domain Name and Registrar
The disputed domain name <oxfordlearnersdictionary.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2015. On October 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 30, 2015.
The Center appointed Stefan Abel as the sole panelist in this matter on December 7, 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. The Panel extended the decision due date to January 11, 2016.
4. Factual Background
The Complainant is a publisher of books including dictionaries and a variety of reference learning materials. The Complainant has been operating as a publisher for several centuries and currently publishes several thousands of titles annually worldwide.
In particular, the Complainant has been offering for sale for several decades the dictionary "Oxford Advanced Learner's Dictionary" and provides information relating to this dictionary under the domain name <oxfordlearnersdictionaries.com>. This dictionary has many users worldwide and is one of the world's bestselling advanced learner's dictionaries.
The Complainant has been using the trademark OXFORD for its publications for more than a century and owns, among others, the following registered trademarks for its publishing services and books as well as for other additional products and services:
US trademark No. 73403327 OXFORD, registered on Oct 16, 1984, British trademark No. 1576322 OXFORD, registered on July 30, 1999, Community Trademark No. 3424851 OXFORD, registered on October 6, 2006..
The disputed domain name was initially created on October 26, 2011. The Respondent's site at the disputed domain name is in English and contains a number of advertising links directing visitors to other commercial entities, including links to competing dictionary providers.
The Complainant has contacted the Respondent in English inviting him to explain as to why he feels entitled to use the disputed domain name. The Respondent did not send any answer.
5. Parties' Contentions
In summary, the Complainant's contentions are as follows:
The disputed domain name is confusingly similar to the Complainant's OXFORD trademarks. The disputed domain name reproduces the word "Oxford", the mark subject to the numerous registrations listed above, identically. This in combination with background of the Complainant's preexisting domain name <oxfordlearnersdictionaries.com> and the reputation of the Oxford Advanced Learner's Dictionary, mean that the disputed domain name is confusingly similar to the Complaint's trademark. The notoriety of the Complainant's trademark will increase the likelihood of confusion.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is an unknown individual who is not affiliated with or otherwise endorsed by the Complainant. The Complainant could find no information available online or otherwise that links the Respondent to any element of the disputed domain name. The Respondent's use of the disputed domain name is predicated on the Complainant's reputation alone and the Respondent has no intention to genuinely offer dictionaries, education or any other services. The Respondent uses the disputed domain name in order to make money from the links provided at the disputed domain name.
The Respondent registered and is using the disputed domain name in bad faith. The Complainant's trademark OXFORD has acquired distinctiveness and is well known around the world and has attained the status of a famous trademark. The incorporation of an expression highly similar to a well-known trademark into a domain name by the registrant having no plausible explanation for doing so is an indication of bad faith. The Respondent is attempting to capitalize on the confusion of users trying to access the Complainant's website. The selection of the unique and well-known phrase "Oxford" is an attempt to intentionally create a likelihood of confusion as to source, sponsorship, affiliation and endorsement of its site. The Respondent has failed to avail himself of the opportunity to explain to the Complainant his reasons for registering the disputed domain name and the disputed domain name was therefore registered in bad faith.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy provides for a transfer or cancellation of the disputed domain name if the complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(i) the respondent's disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, shall be evidence of registration and use of the domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark OXFORD.
The disputed domain name obviously consists of this distinctive trademark in combination with the terms "learner's dictionary". The Panel finds that these generic terms, when preceded by the Complainant's intensively used trademark for books and publications is perceived by the public as a descriptive element indicating the kind of the book and publication. The term "learnersdictionary" added to the element "oxford" in the disputed domain name therefore does not add any distinctive character with regard to the signs owned by the Complainant but reinforces the confusing similarity of the domain name to this mark.
As a general rule, the addition of a generic term to a domain name consisting of a trademark rarely excludes a finding of confusing similarity under the Policy. This finding is consistent with a number of previous UDRP decisions (see, e.g. Bravomedia LLC v. Name, Administrator, Hong Kong domains LLC, WIPO Case No. D2009-0586; Grupo Televisa, S.A., Televisa S.A. de C.V., Comercio Mas; S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Registrant firstname.lastname@example.org 9876543210, WIPO Case No. D2003-0735; British Broadcasting Corporation v. Registrant (187640) email@example.com +1.25255572, WIPO Case No. D2005-1143).
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its registered trademarks or to register the disputed domain name.
The element "oxford" used in the disputed domain name does not have any descriptive meaning related to the content of the Respondent's website and the term "oxfordlearnersdictionary" is not a designation for a person, company, services or products on the website at the disputed domain name.
By producing evidence on these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The evidentiary burden therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate his rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing.
The Panel finds that the Respondent's default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy as it is an impossible task for the Complainant to prove a negative that is primarily within the knowledge of the Respondent such as the lack of rights or legitimate interests in the disputed domain name.
Producing prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name must therefore be regarded as sufficient under these circumstances to establish the requirement of paragraph 4(a)(ii) of the Policy if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus in previous UDRP decisions (see e.g. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In addition, the Respondent, when invited to explain as to why he feels entitled to use the disputed domain name despite its high similarity with the Complainant's well-known trademark and domain name, did not provide any explanation.
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established this element in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
The Panel finds, by using the disputed domain name for a set of links relating to dictionary providers, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's OXFORD trademarks as to source, sponsorship and affiliation of the website.
The disputed domain name obviously combines the Complainant's trademark OXFORD with the phrase "learner's dictionary" which is descriptive with respect to the products marketed under the Complainant's trademarks. In the Panel's view, Internet users are therefore likely to get the idea that the Respondent's site at the disputed domain name is sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion will likely attract more customers to the site at the disputed domain name which will result in commercial gain as the Respondent's site provides links to numerous commercial websites.
The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant and its trademarks in mind. The Respondent's intention to use the disputed domain name as a reference to the Complainant and its trademarks is obvious to the Panel considering that no rights or legitimate interests in using the domain name are apparent, that the Complainant's trademarks have been registered years before the registration of the disputed domain name and that OXFORD is an intensively used trademark.
This finding of registration and use in bad faith is further supported by the fact that the disputed domain name is the singular form of the Complainant's domain name <oxfordlearnersdictionaries.com>, which provides information relating to the Complainant's Oxford Advanced Learner's Dictionaries.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <oxfordlearnersdictionary.com> be transferred to the Complainant.
Date: January 11, 2016