The Chancellor, Masters and Scholars of the University
[Indexed as: University of Oxford v. Seagle]
[Indexed as: www.oxford-university.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0308
Commenced: 20 April 2000
Judgment: 30 May 2000
Presiding Panelist: J. C. Thomas
Domain name - Domain name dispute resolution - Service mark - Trademark - Identical - Confusingly Similar - Supplemental User - Bad faith registration - Bad faith use - Torts - Passing Off - Parody.
Complainant is a registrant of the Oxford University trademark. Respondent registered the domain name "oxford-university.com". Complainant alleges that Respondent's acts amounted to the tort of passing off and violated its trade mark registration for Oxford University in South Africa. Complainant requests that the domain name be transferred to itself.
Held, Domain Name Transferred to Complainant
The Panel observed that Respondent did not file a response to the Complainant in a timely fashion after being served with notice of the proceeding. Panel found the Respondent's domain name OXFORD-UNIVERSITY.COM confusingly similar to Complainant's OXFORUNIVERSITY.COM. Respondent also has no rights or legitimate interests in respect of the domain name.
Respondent registered and used the domain name in bad faith. Respondent's primary purpose in registering the domain name was to sell the domain name to Complainant or a competitor of said Complainant for valuable consideration in excess of the registrant's out of pocket costs directly related to the domain name. Respondent also stated to Complainant that with the domain name he was considering approving a number of commercial products to be used with the registered mark. In addition, the domain name in dispute has been used as a parody of the complainant.
Policies referred to
Uniform Domain Name Dispute Resolution Policy (ICANN) October 24, 1999.
Panel Decision referred to
1. THE PARTIES
The University of Oxford, formally known as The Chancellor, Masters and Scholars of the University of Oxford
Oxford 0X1 2SD
Willoughby & Partners
The Isis Building
193 Marsh Wall
London E14 9SG
106 Bandana Drive
Piggabeen NSW 2486
2. THE DOMAIN NAME AND REGISTRAR
The domain name at issue is:
It is registered with:
Network Solutions Inc. (NSI)
505 Huntmar Park Drive
Herndon, Virginia 20170
United States of America
3. PROCEDURAL HISTORY
· On April 18, 2000, the Complaint was filed with the Center by e-mail. Subject to a further clarification, noted below, the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules. The Complaint was accompanied by payment of USD 1,000 by bank transfer. A hardcopy followed on April 20, 2000.
· On April 20, 2000, the Center acknowledged of receipt of the Complaint.
· On April 20, 2000, the Center requested Registrar (NSI) verification, and received on April 21, 2000, the Registrar's answer to that request.
· On April 25, 2000, a clarification to paragraph 6 of the Complaint (describing the respondent's points of contact) was filed by the complainant (both by e-mail and hardcopy).
· On April 27, 2000, the Center communicated to both parties a Notification of Complaint and Commencement together with communication records.
· Rule 5 of Rules for Uniform Domain Name Dispute Resolution Policy requires the respondent to submit a response to the Provider addressing the matters contained therein within twenty days of the date of commencement of the administrative proceeding. As no such response was submitted, on May 19, 2000, the Center recorded a Notification of Respondent's Default and communicated it to both parties.
· On May 22/May 23, 2000, the Center received an e-mail communication dated Sunday, May 21, 2000, from the respondent and replied thereto.
· On May 23, 2000, the sole panelist agreed to the appointment. As required by the Rules, he filed a Statement of Acceptance and Declaration of Impartiality and Independence.
· On May 24, 2000, the Center provided Notification of Appointment of Administrative Panel and Projected Decision Date to the parties. On that date, it received three further e-mail communications from the respondent. The Center replied to each acknowledging receipt and transmitted them to the Panel.
· On May 25, 2000, the Center received a further e-mail communication from the respondent.
4. JURISDICTIONAL BASIS FOR THE MANDATORY ADMINISTRATIVE PROCEEDING
Paragraph 4 of the ICANN Policy requires that a registrant must submit to a mandatory administrative proceeding in the event that a third party asserts to the applicable Provider, in compliance with the Rules of Procedure, that the registered domain name is disputed under the grounds stipulated in that paragraph.
The registration agreement, pursuant to which the domain name that is the subject of this Complaint was registered, incorporates the Policy in force at the time "or a later version of this Policy adapted by ICANN" [paragraph 3.c.]. A copy of the domain name dispute policy applicable to the domain name in question was provided by the complainant as Annex E to the Complaint.
As noted above, under Paragraph 4(a), a respondent is required to submit to a mandatory administrative proceeding where it is alleged that:
(1) The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(2) The respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name was registered and is being used in bad faith.
The Administrative Panel finds that the complainant has complied with the applicable rules and this dispute is properly within the scope of the Policy and, further, that the Panel has jurisdiction to decide the dispute.
5. FACTUAL BACKGROUND
The Panel must base its decision on the record evidence. As the complainant was the only party that filed evidence in support of its case, the following findings of fact are made. In each instance, the Panel has satisfied itself that the evidence supports the complainant's allegations of fact.
The domain name at issue was registered by the respondent on December 12, 1998. According to the Complaint [para 12(7)] the complainant became aware of the respondent's registration of the domain name in March 1999.
As the respondent is not an authorized license of the complainant nor authorized to use the complainant's mark, the complainant sought to send a cease and desist letter [Annex C to the Complaint] alleging that the respondent's acts amounted to the tort of passing off and violated the complainant's trade mark registration for OXFORD UNIVERSITY in South Africa.
Annex D to the Complaint is a copy of a facsimile dated June 4, 1999, whereby the courier company, UPS, informed the complainant that it was unable to deliver the cease and desist letter as the given address was incomplete. UPS also stated that the telephone number, taken from the WHOIS database by the complainant, went unanswered.
Thereafter, on June 4, 1999 and June 29, 1999 [pages 2 - 4 of Annex H], the complainant wrote to Network Solutions Inc. (NSI) asking for advice on how to invoke the dispute where it was unclear that the respondent had been duly notified of the Complaint. Annex H to the Complaint is a letter from NSI to the respondent dated August 3, 1999, notifying it of the Complaint (pages 6-8 of Annex H). NSI then informed the complainant that it would put the domain name in issue on-hold [NSI letter dated September 17, 1999 and the letter of September 23, 1999 at pages 11 of Annex H]. However, on October 4, 1999, NSI informed the complainant that the respondent had chosen to use the disputed domain name simultaneously with a new domain name, Central-maine.com, for a three month period due to expire on December 24, 1999 [page 12 of Annex H].
During this period, the respondent updated his website, pages of which were attached at Annex I to the Complaint. The evidence at page 2 of Annex 1 records that the respondent informed the complainant that it could "buy the site if you want to, or can afford [to]". The respondent also stated that with his apparent change of name (to Oxford University), he was "considering approving a number of commercial products ; -- Please send me large donations ; --".
By December 1999, the domain name dispute resolution policy was changed over from NSI to ICANN. NSI terminated the dispute and reactivated the domain name.
The complainant has submitted copies of extracts of the latest material posted on the respondent's website in Annex J, together with copies of extracts from the complainant's own website in Annex K. The respondent's website contains a copyright notice stating that copyright in the material posted on it belongs to the complainant.
6. PARTIES' CONTENTIONS
A. The complainant contends that:
In the circumstances, the respondent's primary purpose in registering the domain name was to either:
(a) sell, rent, or otherwise transfer the domain name registration to the complainant, the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the domain name; and/or
(b) prevent the complainant from reflecting the mark in a corresponding domain name;and/or
(c) disrupt the business of the complainant; and/or
(d) to attract for financial gain, Internet users to the respondent's 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 web site or location or of a product or service on the respondent's web site or location.
B. The respondent contends that:
The respondent's e-mail response to the complainant's counsel and copied to WIPO Arbitration and Mediation Center on May 21, 2000, after the date for the filing of a response had expired, was as follows.
It is reproduced in full:
1) My name is Oxford University.
2) I have already told you that "Word" attachments are not acceptable BEFORE the recent virus outbreak. That still applies.
I feel that
3) Wipo's attitude is high handed, arrogant and offensive
4) I have no idea what your complaint is speak simple English please, or leave me alone preferably the latter.
5) You are harrassing me. Stop it.
6) The complainant has not attempted to contact me, nor replied to email sent to them.
7) The complainant agreed to abide by the decision of Network solutions and has failed to do so.
Oxford University (email@example.com)"
This message was followed by four other messages of similar tone and content to the WIPO Arbitration and Mediation Center.
The Panel observes that although served with notice of the proceeding, the respondent did not file a response to the Complaint in a timely fashion.
The respondent's communications, in addition to being out of time, did not respond "specifically to the statements and allegations contained in the complaint" or set out "all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name" as required by Rule 5(b).
7. DISCUSSION AND FINDINGS
The Panel is constituted in order to determine whether the respondent's registration of oxford-university.com complies with the Uniform Domain Name Dispute Resolution Policy (as approved by ICANN on October 24, 1999). As noted above, the Policy provides for a mandatory administrative proceeding on the grounds set out in paragraph 4. They are:
Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The complainant contends that the domain name at issue is "identical or confusingly similar to a trademark or service mark in which the complainant has rights."
The Panel finds that the complainant has proved this element. In its view, the domain name oxford-university.com is confusingly similar to OXFORD UNIVERSITY and to the complainant's own domain name oxforduniversity.com.
Secondly, the complainant contends that the respondent has no rights or legitimate interests in respect of the domain name.
The Panel agrees that respondent has no rights or legitimate interests in respect of the domain name. The complainant's rights and legitimate interests in the name OXFORD UNIVERSITY are manifestly long-standing and settled.
In a communication submitted after the period for the filing of a response, the respondent asserted that his name is Oxford University. According to NSI's WHOIS database, the respondent is registered as DR Seagle, an individual. Even if DR Seagle has indeed made a change of name (no documentary proof of the claim was provided), the Panel would still conclude that the registrant has no rights or legitimate interests in respect of the domain name at issue.
Thirdly, the complainant contends that the domain name has been registered and is being used in bad faith.
The Panel agrees. A review of the evidence filed in support of the Complaint shows that oxford-university.com has been used as a parody of the complainant and that the respondent made statements to the complainant that it could "buy the site if you want to, or can afford [to]" and further that the registrant was "considering approving a number of commercial products Please send me large donations".
In the circumstances, the Panel has no doubt in concluding that the domain name has been registered and is being used in bad faith. In the Panel's view the respondent's actions are, at a minimum, evidence of bad faith within grounds 4.b(i) and (iii) of the Policy.
At paragraph 13 of the Complaint, the complainant requested that the Panel issue a decision that the contested domain name be transferred to it. In light of the findings made above and having regard to the remedies stipulated in Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name oxford-university.com be transferred to the complainant, The University of Oxford.
J. C. THOMAS
Dated: May 30, 2000
Domain Name Transferred