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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Chancellor, Masters and Scholars of the University of Oxford v Damian Macafee
Case No. D2001-0975
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 Complaint, is Damian Macafee, of 69 Charlotte Street, London WIP 1LA, United Kingdom.
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-online.com> (hereafter called "the Domain Name"). The Domain Name is registered with Bulk Register.com Inc, 10 East Baltimore Street, Suite 1300, Baltimore, Maryland 21202, Unites States of America ("the Registrar"). The Domain Name was registered on May 20, 2001.
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 30, 2001, by email. A hard copy of the Complaint was received by the Center on July 31, 2001.
The Center acknowledged receipt of the Complaint on August 3, 2001, and on the same day the Center requested verification of registration details from the Registrar.
On August 4, 2001, the Registrar confirmed that it had received a copy of the Complaint on August 3, 2001, that the Domain Name is registered with it, that the Respondent is the current Registrant, and that the Policy applies to the Domain Name.
The Registrar provided the following details of the Registrant:
69 Charlotte Street
London, W1P 1LA
Administrative and Technical Contacts –
Damian Macafee (same address as Registrant)
The Registrar indicated that the current status of the Domain Name is "Registrar Lock".
Having satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee, the Center sent formal Notification of the Complaint to the Respondent by email (Complaint without attachments) and by post/courier (with enclosures) on August 7, 2001. The Notification was also emailed to "email@example.com" on August 7, 2001, with a copy of the Complaint (minus attachments). The Notice sent to the Respondent on that date advised that the commencement date of the administrative proceeding was August 7, 2001, and that the Respondent’s last day for sending a response to the Complainant and to the Center would be August 26, 2001. Copies of the Notice were sent to the Complainant, the Registrar, and ICANN, on August 7, 2001.
Neither the email addressed to firstname.lastname@example.org nor the courier pack reached the Respondent. The email to email@example.com was returned by the Mail Delivery Subsystem with the advice that the address had "permanent fatal errors", and "cannot route to sender". The courier pack was returned to the Center on August 14, 2001.
In the absence of any response to the Complaint, on August 27, 2001, formal notification of the Respondent’s 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 7, 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 10, 2001, Warwick Alexander Smith advised his acceptance and forwarded to the Center his statement of impartiality and independence.
On September 10, 2001, the Center forwarded to Warwick Alexander Smith by courier the relevant submissions and the record. These were received by him on September 18, 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 24, 2001.
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, United Kingdom and, in conjunction with a number of semi-independent colleges, it administers in Oxford one of the oldest and most prestigious universities in the world. The origins of the university go back some eight centuries, with the first three colleges having been formed in the late 13th Century.
Trading as Oxford University Press, the Complainant is also one of the worlds’ oldest and most famous publishing houses.
The Complainant is the registered proprietor of a number of trademarks and service marks which comprise or include the word "Oxford". These registrations include United Kingdom trademark No 1551449 for OXFORD in Class 41, and United Kingdom trademark No 1576322 for OXFORD in Class 9.
In addition to its formal registrations, the Complainant says that it has made long and extensive use of the mark OXFORD in relation to its educational and publishing products and services, and that it has built up a very substantial goodwill under and by reference to that name. It says that it would have a valid passing off action to restrain any unauthorized third party use of the mark OXFORD in the University or publishing services fields in the United Kingdom, and that it therefore enjoys common law trade/service mark rights in the name in that country.
The Complainant says that in April/May 2001, it discussed internally the advisability of registering the Domain Name oxford-online.com, as an umbrella domain name to cover all the online services (present and future) of the Complainant. On or about April 27, 2001, the Complainant checked the availability of the Domain Name. It was then available. However when the Complainant went back to register the Domain Name, it had been taken by the Respondent.
The Complainant says that it has had difficulty tracing the Respondent. The address of 69 Charlotte Street in London is said to be a combined residential/office address, but the Complainant’s enquiries indicate that the Respondent is not known at that address. The telephone number is said to be a public call box in the street outside the Duke of York public house, at the junction of Rathbone Street and Charlotte Place, London W1.
Other attempts by the Complainant to trace the Respondent have elicited nothing. The Complainant says that it has conducted electoral roll enquiries which show no sign of the Respondent at the Charlotte Street address, or indeed at any address in the London area. Post Office enquiries indicate that the postal code provided by the Respondent for his address is incorrect.
The Complainant also refers to three WIPO panel decisions in which a Damian Macafee, of 69 Charlotte Street, London, has been named as Respondent. In each of those cases, the respondent was not traceable at the registration address.
5. The Parties’ Contentions
Domain Name confusingly similar to the Complainant’s marks.
The Complainant says that the Domain Name features the mark OXFORD, with the only additions being the generic "-online" and the generic domain suffix.
The Complainant argues that "Oxford" has two well-known meanings, namely the city in the United Kingdom and the Complainant. It asserts that in the business context, the mark OXFORD means to most people in the United Kingdom, the Complainant. It contends that that is particularly so in the context of educational and publishing products and services (including online publications). It acknowledges that there are many other businesses which use the name "Oxford" as part of their addresses or titles, but says that the Complainant is the only one which trades simply as OXFORD.
It says that the expression "oxford-online" is likely to be taken by most people in the United Kingdom as a reference to the Complainant’s online educational and publishing products and services, and that, in consequence, most people using the Domain Name to access a website will be expecting to reach a website of the Complainant.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant says that it has not licensed the Respondent to use its trademark or service mark for any reason. Beyond that, it is unable to provide any information about the Respondent, except that the name "Damien Macafee" is clearly not the Domain Name or anything remotely resembling the Domain Name (relevant to paragraph 4(c)(ii) of the Policy).
The Complainant is unaware of any business or other activity conducted by the Respondent under the Domain Name.
The Complainant refers to what it describes as the Respondent’s "track record" in relation to domain name disputes, and contends that the Domain Name is just another example of the Respondent’s "predilection" for selecting the famous trademarks of third parties.
The Respondent’s registration address is a UK address, and the Complainant says that it is inconceivable that the Respondent could not have been aware when registering the Domain Name of the fame of the Complainant’s name and mark, and the likelihood that the Domain Name would be seen by a high proportion of UK residents as being a reference to the Complainant.
The Complainant says that none of the circumstances set out in paragraph 4(c) of the Policy apply.
Domain Name registered in bad faith and being used in bad faith
The Complainant refers to suspicions over the timing of the Respondent’s registration of the Domain Name, being only a few days after the Complainant had checked on the availability of the Domain Name. However, it acknowledges that it has no hard evidence that the timing was anything other than a coincidence.
The Complainant argues that the Respondent knew perfectly well that the Domain Name was likely to be taken by many people as a reference to the Complainant. It argues that the Respondent will have been aware of the potential value of the Domain Name to the Complainant, and will also have been aware that people accessing a website by reference to the Domain Name will have been expecting to reach a website of the Complainant. It contends that knowingly registering somebody else’s name as a domain name under circumstances where confusion is likely, manifestly constitutes bad faith registration of the domain name.
The Complainant acknowledges that the Respondent has not yet used the Domain Name by connecting it to a website, but says that passive holding of a domain name has been held to constitute bad faith use of a domain name. It refers to the following decisions in report of that submission:
(i) The decision of the Panelist in National Arbitration Forum claims No FA 0102000096660, (Polaroid Corporation v Damian Macafee) and the WIPO decisions D2000-1230 (Nintendo v Pokemon) and D2000-0111 (Home Director, Inc. v Home Director) referred to in that decision; and
(ii) The decision of the Presiding Panelist in an Administrative Panel Decision of the CPR Institute for Dispute Resolution, JVC Americas Corp v Damian Macafee, (citing WIPO decisions D2000-0003 (Telstra), D2000-0021 (Ingersoll-Rand Co.) and D2000-0425 (Symplicity Corporation v Bob Gately).
The Complainant says that it is "possible" that the Respondent registered the Domain Name for any one or more of the purposes dealt with in paragraph 4(b) of the Policy, and refers to the following factors:
1. The difficulties in locating the Respondent as described above, including the supply of apparently fictitious registration details.
2. What the Complainant regards as the suspicious timing of the registration, shortly after its own check on the availability of the Domain Name.
3. That the effect of the registration of the Domain Name has been to block the Complainant from registering it.
4. That the Respondent, as an apparent resident of the UK, would have known perfectly well that the Domain Name would be likely to be taken by many people as a reference to the Complainant.
5. The Respondent’s pattern of behavior in relation to Domain Names as evidenced by the Panel decisions referred to above.
The Complainant refers to the decision of the English Court of Appeal in British Telecom Communications & Ors v One in a Million Ltd (1999) FSR 1, in support of the proposition that mere registration of the Domain Name is likely to lead to confusion. Persons conducting WHOIS searches will assume that the Respondent is in some way associated with the Complainant.
Taking all those factors into account, the Complainant submits that the Respondent has registered the Domain Name in bad faith and is using it in bad faith.
The Respondent has not made any submissions.
6. Discussion and Findings
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
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".
Domain Name Confusingly Similar to Complainant’s trademark or service mark (Paragraph 4(a)(i) of the Policy)
The Complainant has produced copies of registration certificates showing that the mark OXFORD has been registered in Britain and Northern Ireland in Classes 9 and 41, with effect from October 31, 1994. The Class 9 registration is for audio and video cassettes, floppy disks bearing computer software, CD ROMS and published material in digital format. The Class 41 registration is for publishing services included in Class 41.
In each case the registered proprietor of the mark is the Complainant trading as Oxford University Press.
The mark OXFORD features prominently in certain pages on the Complainant’s websites at oxford.ac.uk and oup.com, including pages dealing with OXFORD dictionaries and multimedia resources. Website pages dealing with the Oxford Art Journal and Oxford Economic Papers are noted "Online Resources", and "OXFORD Journals Online" respectively. One of the website links in the ox.ac.uk website is entitled simply "About Oxford".
Generally, the website pages support the submission that the mark OXFORD is used on its own to refer to the Complainant’s university.
The Domain Name differs from the Complainant’s mark only by the addition of the generic expression "-online", and the generic suffix .com. Particularly in circumstances where the Complainant is clearly offering on-line services, the Panel has no difficulty in accepting the submission that the Domain Name is confusingly similar to the Complainant’s mark.
No Rights or Legitimate Interests in respect of the Domain Name
Paragraph 4(c) of the Policy lists, without limitation, three specific factors which, if established, are effective to demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of subparagraph 4(a)(ii) of the Policy. Those factors are:
(i) before any notice to you [referring to the Respondent] 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 a 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 Complainant has not licensed or authorized the Respondent to use the Domain Name, and the Respondent has not advanced any of the grounds set out in paragraph 4(c) of the Policy. (On what little is known about the Respondent, there does not appear to be evidence of any offering of goods or services (bona fide or otherwise). Nor is there any suggestion of the Respondent making a legitimate non-commercial or fair use of the Domain Name (Paragraph 4(c)(iii) of the Policy). It is not indicated in any of the evidence that the Domain Name is a name by which the Respondent is commonly known.)
While it is clear that the Complainant carries the onus of proof on all matters required to be established under paragraph 4(a) of the Policy, the Panel is entitled to take into account the apparently fictitious contact details provided by the Respondent to the Registrar, and the absence of any use of the Domain Name since registration, as factors pointing against the existence of any legitimate interest or right. The Panel also notes that the Respondent has previously registered the very well known trade marks of others as domain names (eg "POLAROID" and "JVC"), and has been held to have acted in bad faith in so doing – see the Polaroid Corporation and JVC American Corp cases referred to at the foot of page 5 of this Decision, and the WIPO Decision D2000-1032 (Mediawest-GSI Inc. and Gannett Satellite Information Network Inc. v Damian Macafee), in which the Panelist noted that the respondent’s address was "69 Charlotte Street, London W1P 1LA". In the absence of any response from the Respondent, the Panel is prepared to infer that the Respondent is the same person as the Damian Macafee who was the Respondent in those other cases.
In the Panel’s view, the Complainant has done sufficient by way of prima facie proof under paragraph 4(a)(ii) of the Policy. In the absence of any response, the Panel finds that the Respondent has no right or legitimate interest in respect of the Domain Name.
Domain registered and being used in bad faith
Paragraph 4(b) of the Policy sets out certain examples of circumstances which are deemed to be evidence of the registration and use of a domain name in bad faith. The examples given in Paragraph 4(b) (which are not exhaustive) are:
(i) circumstances indicating that you [referring to 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 trademark 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 trademark 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 complainant’s 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.
In this case, the Complainant submits only that it is "possible" that one or more of these circumstances might exist.
There is clearly no evidence that the Respondent has engaged in any of the "bad- faith- registration- and- use" examples provided at subparagraphs (i), (iii), and (iv) of Paragraph 4(b) of the Policy.
First, there has been no attempt by the Respondent to transfer the domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of –pocket expenses related to the registration. In the absence of any communication from the Respondent to the Complainant at all, it is too soon after the registration of the Domain Name for the Panel to infer that the Respondent must have registered the Domain Name with such a purpose in mind. Subparagraph (i) of Paragraph 4(b) does not apply.
There is no suggestion that the Respondent might be a competitor of the Complainant, and there is as yet no connection between the Domain Name and any website or on-line location. Therefore subparagraphs (iii) and (iv) of Paragraph 4(b) cannot have any application.
The Complainant’s strongest argument under Paragraph 4(b) is that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its OXFORD mark in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct (ie. subparagraph (ii) of Paragraph 4(b)). The Panel would be prepared to find that the three recent instances of the Respondent registering and using domain names in bad faith constitute a "pattern of conduct" for the purposes of subparagraph (ii). However the Panel still has to be satisfied that the Respondent’s intention on this occasion was one of "blocking" the Complainant, before the subparagraph can apply. That is not so obvious, having regard to the relatively short period of time which has elapsed since the Domain Name was registered.
In the view the Panel takes, it is not necessary to decide whether the case falls squarely within subparagraph (ii). The subparagraphs of Paragraph 4(b) of the Policy only provide examples of bad faith use and registration, and the Panel is satisfied in this case that there are a number of factors which, taken in combination, are sufficient to constitute bad faith registration and use.
The first of these relates to the address and contact details which the Respondent provided to the Registrar.
The contact telephone number provided was the number of a public telephone box outside a public house in London, and the Respondent is not known at the Charlotte Street address. He is not listed on the United Kingdom electoral roll, and neither the Complainant nor the courier companies attempting to deliver documents to him in this case have been able to find him. The email address provided to the Registrar has proved equally ineffective as a means of communicating with the Respondent.
The provision of fictitious contact details to a Registrar has been held to be indicative of bad faith registration in a number of WIPO cases - see for example WIPO case D2000-0111, Home Director, Inc. v Homedirector, and WIPO case D2000-0003, Telstra Corporation v Nuclear Marshmallows. Another case where similar issues arose over inadequate contact details, was WIPO case D2000-0110, 3636275 Canada, dba eResolution v eResolution. In that case the Panelist noted: "Mr. Laholi, if he is truly the Respondent, has not provided a street address. He has provided means of communication and contact that are, to say the least, unusual and even questionable for someone conducting a legitimate business…." The same could be said of the Respondent in this case.
Secondly, the Respondent has provided an English address and telephone number, albeit apparently false. He has chosen a domain name which features the service mark of a famous English institution, and the generic part of his domain name (the word "online") is descriptive of one of the Complainant’s services. In those circumstances, and in the absence of any Response from the Respondent, the Panel is prepared to infer that the Respondent knew of the Complainant and the OXFORD mark (and the confusion which would be likely to result in the United Kingdom from him adopting it as part of the Domain Name), before he registered the Domain Name.
It is true that the Respondent has not as yet made any active use of the Domain Name. However a number of WIPO decisions have held that passive use of a domain name can, in appropriate circumstances, constitute bad faith use for the purposes of subparagraph (iii) of paragraph 4(a) of the Policy. Perhaps the most commonly referred to case is decision D2000-0003 (Telstra Corporation v Nuclear Marshmallows), but there are a number of others (see for example case No. D2000-1074 (Sony Kabushiki Kaisha v sony.net), and the other cases noted in the JVC decision referred to by the Complainant.It is clear from these decisions that the question of what may constitute passive use will vary according to the facts of the particular case (eg see the Telstra decision, page 9).
In the Telstra case, the factors considered relevant were:
(i) the strength of the Telstra trademark, which was substantially used in Australia and in other countries;
(ii) the fact that the respondent had provided no evidence of any actual or contemplated good faith use;
(iii) the fact that the respondent in that case had taken active steps to conceal its true identity by operating under a name which was not a registered business name;
(iv) the fact that the respondent in that case had actively provided, and failed to correct, false contact details in breach of its registration agreement;
(v) taking the foregoing factors into account, it was not possible for the Panel in Telstra to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the complainants rights under trademark law.
Factors (ii) and (iv) from the Telstra case are present in this case. The OXFORD mark is perhaps not as strong as the mark was in the Telstra case, at least outside the United Kingdom. On the other hand, there does not appear to have been any "pattern of previous conduct" in that case, and Paragraph 4(b)(ii) of the Policy makes it clear that such a pattern can be a relevant factor in the assessment of whether or not there has been bad faith registration and use.
The effect of the registration of the Domain Name in this case has certainly been to block the Complainant from reflecting its mark in a corresponding domain name, and there has been a pattern of similar conduct by the Respondent in the past. Those facts, the Respondent’s deliberate decision to register and maintain contact details for the Domain Name which he must have known would be insufficient for anyone to trace him, and his failure to respond to this Complaint, combine to persuade the Panel that bad faith registration and use are proved.
In those circumstances, it is not necessary for the Panel to deal with the Complainant’s submission based on the One in a Million Limited case.
For the reasons set out above, the Panel decides that:
(a) The Domain Name is confusingly similar to the OXFORD mark in which the Complainant has rights; and
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) The 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-online.com> be transferred to the Complainant.
Warwick Alexander Smith
Dated: September 21, 2001