The Complainant is The Chancellor, Masters and Scholars of the University of Oxford of Oxford, the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Sipara, United Kingdom.
The Respondent is Oxford College for PhD Studies of Cork, Ireland.
The disputed domain names <oxfordcollegeirl.com> and <oxfordcollegesc.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 8, 2015. On May 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 12, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 8, 2015.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on June 18, 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 Complainant is the registered owner of numerous trademark registrations for and/or including the term "Oxford", in particular Community Trade Mark registration number 004467131 OXFORD (word), registered on October 16, 2006 for goods and services in classes 9, 41 and 42 and Community Trade Mark registration number 003424851 OXFORD (word), registered on October 6, 2006 for goods and services in classes 9, 41 and 42.
The disputed domain names <oxfordcollegeirl.com> and <oxfordcollegesc.com> were registered on December 23, 2014. They currently resolve to websites presenting the same content 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 college actually exists.
It results from the Complainant's undisputed allegations that the Complainant was first established at common law by custom or prescription and later formally incorporated by statute. ln the year 1214 the body of Masters and Scholars at Oxford was placed under the jurisdiction of a Chancellor, to be appointed by the Bishop of Lincoln. The Complainant is well-known around the world as a leading higher education and research institution and consistently features at the top of international league tables of higher education institutions.
The Complainant contends that the disputed domain names are identical or confusingly similar to its trademarks OXFORD since they wholly incorporate the Complainant's trademark and the addition respectively of the descriptive elements "collegeirl" and "collegesc" does not serve to distinguish the disputed domain names from the OXFORD trademarks.
It further results from the Complainant's undisputed contentions that the Respondent has no prior rights or legitimate interests in the disputed domain names.
In particular, the Respondent is not offering bona fide goods or services. In fact, the Respondent's websites accessible under the disputed domain names contain 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 Respondent is not believed to be authorized or otherwise regulated educational establishment and therefore is incapable of issuing academic qualifications or certifications. However, the two websites to which the domain names resolve include a "graduates page" and the page listing "honors and awards" that are misleading to the public, in particular because they allude to grant of a qualification or academic award.
Moreover, according to the Complainant's allegations, the Respondent is not commonly known by the disputed domain names and is not affiliated with or otherwise endorsed by the Complainant. Finally, no noncommercial or fair use of the disputed domain names by the Respondent is recognizable. Rather, according to the Complainant, the Respondent's only intention is to gain profit by riding on the good reputation of the Complainant. It is submitted that the Respondent and persons controlling or being controlled by the Respondent have filed a number of domain names incorporating the marks OXFORD and the term "college" which all resolve (or have in the past resolved) to the same website as in the case at hand. Consequently, the Complainant submits that the Respondent consciously chose the disputed domain names because of its association with the Complainant and its related value.
Finally, the Complainant contends that the Respondent registered and used the disputed domain names in bad faith. In particular, it results from the Complainant's undisputed allegations that the Respondent has used the disputed domain names without plausible explanation to divert traffic from the Complainant's website, and in doing so disrupting the business of the Complainant. The reputation of the Complainant is such that Respondent in all likelihood would have known of the existence of Complainant's trademarks at the time when the domain names were registered. The Respondent is palpably attempting to capitalize on the confusion of users trying to reach the Complainant's website. The selection of domain names that incorporate the Complainant's unique and well-known mark OXFORD is an attempt to intentionally create a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of Respondent's website. Additionally, a comparison of the Complainant's belted device logo and shield device and the Respondent's shield and mock-heraldic shield device used on the websites results in these websites having a similar look and feel to the Complainant's website.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain names should be transferred or cancelled:
(i) The disputed domain names are 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 interest in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain names is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademarks consisting of the verbal element "Oxford". Reference is made in particular to Community Trade Mark registration number 004467131, registered on October 16, 2006. This Community Trade Mark predates the registration date of the disputed domain names which is December 23, 2014.
Many panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the domain name incorporates the complainant's trademark in its entirety (e.g., Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070). This is the case here where the Complainant's registered trademark OXFORD is fully included in the disputed domain names.
In addition, the disputed domain names combine the Complainant's registered trademark OXFORD as their distinctive element with the term "college", which is descriptive to the field in which the Complainant has been playing a prominent role for many centuries, i.e., higher education services. The element "college" is therefore calculated to increase the likelihood of confusion between the trademark and the disputed domain names (cf. The Chancellor, Masters and Scholars of the University of Oxford v. Damian Macafee, WIPO Case No. D2001-0975 and The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100). Finally, it is the view of this Panel that the addition of the element "sc" results to be a common typographical error when typing "colleges.com", while the addition of the element "irl" refers to Ireland, which is where the Respondent is based. Both added elements will therefore be understood to be a reference to a satellite or associated college of the Complaint in Ireland. In any case both do not serve to distinguish the disputed domain names.
In the light of the above, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain names. In the Panel's view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain names.
It is the view of this Panel that the Respondent's use of the disputed domain names is not in connection with a bona fide offering of goods or services in the sense of paragraph 4(c)(i) of the Policy. In The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, supra the panel ordered transfer of the domain names to the Complainant and held that "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".
Moreover, such use cannot be considered a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(iii) of the Policy.
Finally, the Respondent is not commonly known by the disputed domain names nor has it acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy. The Complainant has not authorized the Respondent to use its mark in anyway and the Respondent does not appear to be operating a regulated educational establishment.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain names have been registered and are being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain names' registration and use in bad faith.
The Complainant has been established many centuries ago and has a worldwide reputation as a leading higher education and research institution and its trademarks have existed for a long time. Therefore, it is the view of this Panel that the Respondent knew or should have known that the disputed domain names included the Complainant's OXFORD trademarks when it registered the disputed domain names. The registration of the disputed domain names in awareness of the OXFORD mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, supra).
Moreover it is the view of this Panel that the Respondent is using the disputed domain names to intentionally attempting to attract Internet users looking for the Complainant to its website, by creating a likelihood of confusion with the OXFORD trademarks as to the source, sponsorship, affiliation or endorsement of its website. The Respondent's websites purport to offer educational services and the Respondent would benefit from any confusion between the Respondent and the Complainant that would arise from the similarities in the disputed domain names with the Complainant's mark and services offered by the Complainant. As noted under the Factual Background, it is unclear to the Panel whether the Respondent's institution actually exists or whether the Respondent receives revenue from Internet users who happen to come across the Respondent's website (see The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, supra). In any event, the Panel finds registering domain names incorporating the Complainant's OXFORD mark to intentionally divert the Complainant's users to the Respondent's website is disruptive to the Complainant's business and without any other explanation from the Respondent, the Respondent's use of the disputed domain names amounts to bad faith.
In the light of the above, the Panel finds that the disputed domain names have been registered and are being used in bad faith pursuant to 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 disputed domain names, <oxfordcollegeirl.com> and <oxfordcollegesc.com>, be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: July 2, 2015