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WIPO Arbitration and Mediation Center

 

 

ADMINISTRATIVE PANEL DECISION

Swinburne University of Technology v. Swinner a/k/a Benjamin Robert Goodfellow

Case No. DAU2004-0003

 

1. The Parties

The Complainant is Swinburne University of Technology, Victoria, Australia, represented by Swinburne Legal.

The Respondent is Swinner a/k/a Benjamin Robert Goodfellow, Camberwell, Victoria, Australia.

 

2. The Domain Name and Registrar

The disputed domain name <swin.com.au> is registered with Melbourne IT trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2004. On August 16, 2004, the Center transmitted by email to the registrar a request for registrar verification of details relating to the disputed domain name. On August 17, 2004, the registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and confirming other details relating to the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 August 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2004. The Response was filed with the Center on September 9, 2004.

The Center appointed James Barker as the sole panelist in this matter on September 24, 2004. 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 following facts, taken from the Complaint and Response, are uncontested.

The Complainant is established under the Swinburne University of Technology Act 1992 (Vic). The Complainant has approximately 40,000 enrolled students across 7 campuses in Australia and Malaysia and employs over 2000 staff. The Complainant is the registered owner of the Australian trade mark for “SWIN BUR NE” incorporating the image “two flowers or cinquefoils at bottom of square”. The Complainant has abbreviated its name and mark to “swin” for use in its registered domain name <swin.edu.au>, which reverts to the Complainant’s main website. That website has been operating for over 10 years and receives approximately 70,000 visitors per week.

The Respondent operated a website at the disputed domain name. The website described itself as a “Student Homepage”, included advertisements, and included an index of links to other websites.

The Respondent “Swinner” appears to have no separate legal existence to Benjamin Robert Goodfellow. Accordingly both are treated as the same Respondent in this decision. Both the Complainant and the Respondent themselves take the same approach.

 

5. Parties’ Contentions

A. Complainant

The following is summarised from the Complaint.

The Complainant has registered and common law rights in its mark and name, and in the abbreviation of its name to “swin”. The disputed domain name is identical or alternatively, confusingly similar to the Complainant’s name “swin” as its common law trademark and/or as an abbreviation of its registered trademark “Swinburne”.

The Respondent has no rights or legitimate interests in the domain name. The Complainant gave it none. The domain name has resolved (at different times) to three different versions of a website: The first contained information purported to be for students of both the University of Melbourne and the Complainant, and also contained commercial advertising; The second contained only information purported to be for students of the Complainant; The current website does not appear to be in use and is stated to be “under construction”. There is no conclusive evidence that the Respondent has ever been known by or connected with the name “swin” or “swinner”. The Respondent registered the business name “swinner” for the sole purpose of registering the disputed domain name.

The disputed domain name was registered or is being used in bad faith. “Swin” is a unique and distinctive mark that is inextricably linked with “Swinburne”. The Complainant argues that there is evidence of bad faith under paragraphs 4(b)(ii), (iii) and (iv) of the Policy.

B. Respondent

The following is summarised from the Response.

Swinburne does not have rights to the word “swin”. The Respondent believes that the domain name <swin.com.au> is neither identical nor similar to the name or mark in which the Complainant has rights.

The Respondent asserts rights or legitimate interests in the disputed domain name. The Respondent is a 21 year-old university student in the city of Melbourne and registered the domain name in an attempt to provide a service for his fellow students. The Respondent’s promotional activity was done free of charge as it benefited the users of the Respondent’s website. The Respondent’s website has in no way generated any revenue. Swin is clearly an abbreviation of Swinner and hence the website is of great value to the Respondent. The Respondent is providing a free service at the Respondent’s cost while having no endorsement from the university or any other company and has always made this clear to the website’s users.

The Respondent did not act in bad faith. In no way has the Respondent attempted to disrupt the activities of current or prospective students in accessing the Complainant’s website. In no way is the Respondent receiving commercial gain. In no way has the Respondent attempted to confuse students.

 

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:

- the domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

- the Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii)); and

- the domain name was registered or subsequently used in bad faith (paragraph 4(a)(iii)).

These three elements are addressed below. In doing so, the Panel notes that, with some substantive differences, the Policy is in similar terms to the Uniform Domain Name Dispute Resolution Policy (UDRP) on which it is based. As such, past proceedings which applied the Policy have referred to relevant decisions under the UDRP. The Panel has similarly applied relevant past decisions under the UDRP to this case, in addition to relevant past decisions under the Policy.

A. Identical or Confusingly Similar

The Complainant provided evidence of its rights in its registered mark SWIN BUR NE in Australia. The Complainant also provided evidence of its use of the abbreviation “swin” in the domain name <swin.edu.au> to promote its goods and services. That use of the abbreviation gives the Complainant a sufficient legitimate interest in it. In similar circumstances, previous panels have taken a similar approach. See for example Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656.

The Panel finds that the disputed domain name is confusingly similar to the abbreviation of the Complainant’s mark in which the Complainant has a legitimate interest. The disputed domain name incorporates an apparently distinctive, non-descriptive abbreviation of the Complainant’s mark. The abbreviation is phonetically and, as presented visually, the first element of the Complainant’s mark, and so more likely to be distinctively associated with the mark and the Complainant’s name.

In relation to the issue of confusing similarity, the Respondent states that “swin” is an abbreviation of its own name. But that argument assumes that the Respondent has a right or legitimate interest in the name, which is addressed below.

The Respondent also states that its website is not confusingly similar to the Complainant’s. That is not relevant. Under the Policy the relevant confusing similarity is between the Complainant’s mark/name and the disputed domain name.

B. Rights or Legitimate Interests

The Complainant puts forward a number of arguments, summarised above, to establish a prima facie case that the Respondent has no relevant rights or legitimate interests. The onus then shifts to the Respondent to rebut that case.

Policy, paragraph 4(c)

Paragraph 4(c) of the Policy provides the following examples (relevantly summarised by the Panel) of circumstances that may demonstrate the Respondent’s rights or legitimate interests in the domain name:

(i) before any notice to it of the subject matter of the dispute, the Respondent made a bona fide use of…the domain name or a name corresponding to the domain name in connection with an offering of goods or services;

(ii) the Respondent has been commonly known by the domain name;

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name.

The Respondent gave no evidence of the circumstances in paragraph 4(c)(i). The Respondent used the domain name before notice of this dispute, and in connection with an offering of goods or services: the Respondent claims it provides a service for “fellow students”. But under paragraph 4(c)(i) of the Policy “it is the use of the domain name that must be bona fide, not the offering of goods or services.” (Final Report of the auDA Dispute Resolution Working Group, June 2001, Note 13.) The disputed domain name appears unrelated to the offerings made on the Respondent’s website. The Respondent gave no evidence to the contrary.

There is no evidence that the Respondent is commonly known by the domain name. None was given by the Respondent. Its name is registered as a business name. Such a registration is no evidence of common reputation in the name. It is only a technical requirement for registration of the domain name under the Policy.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. The Respondent asserts that “Swinner is a commercial business” but at other points also asserts that its website “has in no way generated any revenue” and that it is “providing a free service”. Even if those contradictions were explained, the Respondent gives no relevant evidence to support its assertions. It is clear, from print-outs of the Respondent’s website attached to both the Response and the Complaint, that at least at some time the Respondent’s website contained prominent links to commercial goods and services. That evidence suggests strongly that the Respondent was not attempting a noncommercial or fair use of the domain name.

Other rights or legitimate interests

Other circumstances than those in paragraph 4(c) can demonstrate rights or legitimate interests. The Respondent demonstrates none. No explanation is given of why “Swinner” is its business name. No evidence is given of its “commercial business” - only assertions about its website (which is however stated to be a “free service”).

C. Registered or Used in Bad Faith

Paragraph 4(b)(iv) provides that there is evidence of bad faith where “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website…by creating a likelihood of confusion with the complainant’s name or mark…”.

As found above, the use of the domain name created a likelihood of confusion, and the Respondent attempted to attract Internet users for commercial gain. The Panel also finds that such use of the domain name was intentional. SWIN is a word that appears to have no meaning, other than as an abbreviation of the Complainant’s mark and name. It is therefore not a word the Respondent would choose unless the Respondent was intentionally seeking to create a likelihood of confusion with the Complainant’s mark. And the Respondent clearly knew of the Complainant when it registered the domain name: The Respondent is a university student resident in Melbourne, where the Complainant has a substantial presence; Also, at one time the Respondent’s website described itself as “The NEW Melbourne & Swinburne Student Homepage”. The Panel accordingly finds that the disputed domain name was registered or used in bad faith.

 

7. Decision

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

 


 

James A. Barker
Sole Panelist

Date: October 8, 2004

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/dau2004-0003.html

 

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