The Open University v. Net School Limited

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

The Open

University v. Netschool Limited

Case No.

D2001-0459

1. The Parties

The complainant is

The Open University ("Open University"), a British university with

its principal place of business in Milton Keynes, United Kingdom, represented

by Denton Wilde Sapte.

The respondent is Netschool

Limited ("Netschool"), an Australian company operating in Victoria,

Australia, represented by Harding Solicitors.

2. The Domain Name and

Registrar

The domain name at

issue is <openuniversity.com>. This domain name is registered with Network

Solutions, Inc. ("NSI") of Herndon, Virginia, USA.

3. Procedural History

The World Intellectual

Property Organization Arbitration and Mediation Center (the "Center")

received Open University’s Complaint by e-mail on March 29, 2001, and in hardcopy

on April 2, 2001. On April 8, 2001, the Center issued a delinquency notice to

Complainant for insufficient payment. Complainant submitted the additional payment.

On April 4, 2001, the Center sent a request for Registrar Verification to NSI,

and received NSI’s reply on April 9, 2001. The Center then confirmed that the

Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy

(the "Rules") and notified Respondent of the commencement of this

proceeding on April 23, 2001. The Center received Netschool’s Response by e-mail

on May 11, 2001, and in hardcopy on May 15, 2001. Neither party requested a

three-member Administrative Panel (the "Panel"). On June 8, 2001,

the Center appointed David Bernstein as the Panelist and notified the parties

that the projected decision date is June 22, 2001.

4. Factual Background

The following facts

are uncontested:

Complainant is a for-profit

business entity that offers part-time education and training for working adults.

Complainant operates regional centers in the United Kingdom and offers distance

learning programs throughout the world. The Complainant has trademark registrations

for the mark THE OPEN UNIVERSITY in thirty-three countries, including four Australian

registrations that were issued in 1990. In 1993, Open University registered

the domain name <open.ac.uk>.

Respondent offers free

online math education to children between the ages of three and ten in the form

of DaisyMaths, a math program developed by one of Respondent’s directors, Professor

Myles Harding. Respondent owns several domain names containing the word DaisyMaths.

On September 30, 1996, Respondent registered the domain name <openuniversity.com>

with NSI. Respondent acknowledges that Professor Harding knew of Open University

before Netschool registered the disputed domain name. Respondent also acknowledges

that Netschool occasionally receives e-mails intended for Complainant.

On November 16, 1998,

Complainant sent Respondent an e-mail noting that Internet users looking for

Open University were, apparently, erroneously going to Respondent’s website.

Complainant requested that Respondent include a link to Complainant’s home page

(www.open.ac.uk) on its website. Respondent did not act on Complainant’s request.

Two years later, in November 2000, Complainant again e-mailed Respondent requesting

"comments and suggestion[s]" on how Complainant could "acquire"

the name from Respondent. Respondent replied to this e-mail, inviting proposals

from Complainant. Complainant sent two more e-mails in early December, indicating

a desire to discuss options to solve the matter amicably. On December 22, 2000,

Respondent replied that, although it disagreed with Complainant’s legal arguments,

if Complainant "desire[d] to purchase the name [Respondent] will consider

a realistic offer." The record does not contain any further communications

between the parties.

5. Parties’ Contentions

A. Complainant

Complainant alleges

that Respondent’s registration and use of the domain name <openuniversity.com>

violates its trademark rights in THE OPEN UNIVERSITY. Specifically, Complainant

alleges that:

(i) The disputed domain

name is confusingly similar to Complainant’s trademark.

(ii) Respondent has

no legitimate reason for owning and using the disputed domain name, particularly

because Respondent owns several domain names containing the name DaisyMaths.

(iiI) Respondent registered

and is using the disputed domain name in bad faith. Complainant alleges that

Respondent registered and uses the disputed domain name to trade off of Complainant’s

substantial goodwill. Complainant also contends that Respondent’s willingness

to sell is indicative of bad faith.

B. Respondent

Respondent alleges

that it has used the domain name for four years without complaint of confusion

from the Complainant. Respondent contends that it has built up goodwill, and

that it thereby has a legitimate interest in the domain name. Respondent further

contends that it has made a legitimate non-commercial and fair use of the domain

name, without intent for commercial gain or to divert consumers from Complainant

and thereby diminish Complainant’s trademark. Respondent refers the Panel to

a number of other entities using the name Open University, but fails to provide

evidence as to whether those other entities are affiliated with Complainant

(which claims to provide services in more than forty-one countries). Respondent

also notes that its website’s metatags do not contain the words "open"

or "university," and that a search through any of the major search

engines for "Open University" will not result in any hits on Respondent’s

site.

Respondent denies any

motive of bad faith, explaining that it chose the word "open" to signify

that the program is free, and the word "university" to encourage children

to go on to tertiary studies and to associate the word "university"

with something serious, but fun. Respondent asserts that Complainant may actually

benefit from any association with DaisyMaths.

Finally, Respondent

objects to Complainant’s evidence demonstrating Respondent’s "willingness"

to sell. Respondent alleges that Complainant solicited an offer, Respondent

never agreed to make an offer, and Respondent added the words "without

prejudice" to its e-mails to indicate that the e-mail could not later be

used as evidence of bad faith.

6. Discussion and Findings

Paragraph 4(a) of the

Uniform Domain Name Dispute Resolution Policy (the "Policy") provides

that, in order to succeed in its claim, Complainant must prove that each of

the following three elements has been satisfied:

(i) the domain name

in dispute is identical or confusingly similar to a trademark or service mark

in which the Complainant has rights;

(ii) the Respondent

has no rights or legitimate interests with respect to the disputed domain name;

and

(iii) the domain name

has been registered and is being used in bad faith.

A. Similarity

of the Mark and Domain Name

Respondent tries to undermine

Complainant’s trademark rights by claiming that "Open University"

is a generic or merely descriptive phrase for an educational program conducted

by correspondence, and that the phrase is used by third parties. The complete

answer to these assertions are Complainant’s trademark registrations, which

provide strong evidence of Complainant’s rights in the mark, and that the mark

is not generic. See Pacific Fence and Wire Co. v. Pacific Fence and

Jim Paradise, WIPO Case No. D2001-0237 (June

11, 2001). In the absence of compelling evidence that Complainant’s trademark

registrations are invalid, the Panel concludes that Complainant owns the trademark

THE OPEN UNIVERSITY.

With Complainant’s trademark

rights resolved, Complainant easily satisfies the first factor. There is little

dispute but that the domain name <openuniversity.com> is virtually identical

to Complainant’s mark THE OPEN UNIVERSITY.

B. Respondent Has

No Rights or Legitimate Interests in the Domain Name.

The Panel concludes

that Respondent has no rights or legitimate interests in the domain name <openuniversity.com>.

Prior to registering the domain name, Respondent had no connection with the

words "open university." Respondent’s product is offered under an

entirely different name, DaisyMaths, which is a program designed for primary

school children. Respondent’s explanation for choosing the words "open"

and "university" is, at least on this limited factual record, implausible.

The word "university" does not seem to appear anywhere in the text

of the educational portions of Respondent’s website, and there are no links

with which children can access websites related to higher or collegiate education.

Furthermore, Respondent’s website fails to offer either university-level educational

tools or information on tertiary studies for prospective students.

Simply because the

words "open university" may have been used by other entities does

not entitle Respondent to the disputed domain name, especially when Respondent

has no reasonable connection to these words. The other entities that use "open

university" may be affiliated with Complainant or may be operating in a

jurisdiction in which Complainant does not have trademark rights. In Australia,

however, and thirty-two other countries, Complainant has a registered trademark

for these words, which serves as prima facie evidence that the trademark is

valid and that the words are not generic.

Nor does Respondent’s

use fall within the legitimate non-commercial or fair use exception to use registered

trademarks in domain names. Respondent is not offering any commentary on Complainant’s

services, and is not offering services that fairly can be described as "open

university" services. That is because Respondent’s service -- providing

a math program for primary school children -- does not fit under Respondent’s

own definition of an "open university"; DaisyMaths is not a correspondence

program and is not associated with university-level education.

Finally, as described

below, Respondent’s use of the domain name is likely causing confusion among

internet users. This precludes any finding that Respondent’s educational services

constitute a "bona fide offering." See Universal City Studios,

Inc. v. G.A.B. Enterprises, WIPO Case

No. D2000-0416 (June 29, 2000).

C. Respondent

Registered and Used the Domain Name in Bad Faith

Whether Respondent

registered and used the domain name in bad faith is a close question. On balance,

though, the Panel concludes that Complainant has proven bad faith.

First, the Panel rejects

Complainant’s assertion that Respondent’s agreement to consider an offer to

sell the disputed domain name constitutes bad faith. Respondent operated the

website for four years without offering to sell it to Complainant, even after

Complainant contacted Respondent in 1998. In these circumstances, it is not

credible to believe that Respondent registered the domain name in 1996 with

the bad faith intent to sell it to Complainant for profit.

The Panel nevertheless

concludes that Respondent registered and used the domain name to intentionally

attract internet users to its website by creating a likelihood of confusion

with Complainant’s trademark. Respondent’s use of Complainant’s trademark creates

the impression that Complainant endorses DaisyMaths. This impression is fortified

by Respondent’s reference to itself, in the "Frequently Asked Questions"

portion of its website, as "Open University DaisyMaths," and by the

misdirected e-mails that Respondent receives. Moreover, Respondent concedes

that it knew of Complainant’s name and reputation when it registered the domain

name. This evidence, taken together, gives rise to the inference that Respondent

hoped to benefit by the goodwill in Complainant’s mark.

The difficult issue

is that Respondent apparently does not use the domain name for commercial gain.

Thus, this dispute does not fit neatly under any of the examples given for bad

faith in Paragraph 4(b)(i)-(iv) of the Policy. However, the Policy provides

illustrative, not exclusive examples of actions that constitute bad faith. See

Pharmacia & Upjohn Company v. Peoples Revolutionary Suicide Jazz Band,

WIPO Case No. D2000-0816 (September 7,

2000).

Respondent’s use of

the disputed domain name creates an implication that Complainant is affiliated

with DaisyMaths. The implication is particularly strong considering that Respondent,

like Complainant, offers educational services. Because of this similarity, Complainant’s

reputation may be adversely affected by internet users’ impressions of DaisyMaths.

The lack of any obvious commercial gain for Respondent does not insulate Respondent’s

behavior.

The Panel thus concludes

that, because Respondent uses the disputed domain name to capitalize on the

substantial goodwill in Complainant’s trademark, and because Respondent’s use

likely causes confusion among Internet users, Respondent has acted in bad faith

in registering and using the disputed domain name.

7. Decision

For all of the foregoing

reasons, the Panel finds that the domain name <openuniversity.com> is

identical to Complainant’s trademark THE OPEN UNIVERSITY, that the Respondent

has no rights or legitimate interests in respect of the domain name, and

that the Respondent registered

and used the domain name in bad faith. Accordingly, pursuant to Paragraph 4(i)

of the Policy, the Panel orders that the registration of the domain name <openuniversity.com>

be transferred to the Complainant.

David H.

Bernstein

Sole Panelist

Dated: June

20, 2001