Imperial College of Science, Technology and Medicine v. Oxford University

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Imperial College of Science, Technology and Medicine v. Oxford University

Case No. D2002-1050

1. The Parties

The Complainant is Imperial College of Science, Technology and Medicine, London,

United Kingdom of Great Britain and Northern Ireland, represented by the law

firm Dechert, London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Oxford University, an entity of unknown provenance located

in Piggabeen, New South Wales, Australia.

2. The Domain Names and Registrar

The domain names at issue ("Disputed Domain Names") are

<imperial-college.net> (registered April 18, 2000)

<imperial-college.org> (registered April 19, 2000)

<imperial-college.biz> (registered April 11, 2002)

All are registered with iHoldings.com Inc. d/b/a DotRegistrar.com (the "Registrar"),

Miami, Florida, United States of America.

3. Procedural History; Jurisdiction

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

the "Center") on November 14, 2002. On November 15, 2002, the Center transmitted

by email to the Registrar a request for registrar verification in connection

with the Disputed Domain Names at issue. Later that day 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 for the administrative,

billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of

the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 Rules 2(a) and 4(a), the Center formally notified the Respondent

of the Complaint, and the proceedings commenced on November 21, 2002. In accordance

with Rule 5(a), the due date for a response was December 11, 2002. The Respondent

did not submit any response[1].

The Center notified the parties of Respondent's default on December 12, 2002.

The Center appointed Richard G. Lyon as the sole panelist in this matter on

December 17, 2002. Mr. Lyon submitted his Statement of Acceptance and Declaration

of Impartiality and Independence, as required by the Center to ensure compliance

with Rule 7.

On December 19, 2002, (European time), the Center received several email messages

(collectively, the "Reply Emails") from Respondent. While mostly a mixture of

gibberish and diatribe, a few of Respondent's statements do address certain

of Complainant's contentions. These communications are untimely and not in the

form of a response, and contain language and accusations at once unrelated to

these proceedings and inappropriate in any correspondence. Nevertheless, to

avoid any hint that Respondent was not afforded due opportunity to present his

defense I exercise my discretion under Rule 12 to allow them. The Reply Emails

further confirm Respondent's receipt of the Complaint.

Given that Respondent executed an agreement with the Registrar submitting to

arbitration in accordance with the Policy, that Complainant and the Center complied

with the Policy in all respects, and that Respondent received actual notice

of the proceeding and was given full opportunity to participate, I find that

the Panel has jurisdiction over this dispute and the parties.

4. Factual Background

The following description of the facts and circumstances comes from the Complaint.

Except where expressly noted, each of Complainant's charging allegations is

supported by documentary evidence annexed to the Complaint.

Complainant is an educational establishment that is an independent constituent

part of the University of London. The Imperial College of Science, Technology

and Medicine was founded in 1907 as a result of the merger of three other venerable

institutions, the Royal College of Science, the City and Guilds College, and

The Royal School of Mines. Plaintiff is a renowned institution with many distinguished

alumni and present and former faculty.

Complainant owns trademark registrations for Imperial College in Australia,

the European Community, Japan, Singapore, Thailand, and the United Kingdom of

Great Great Britain and Northern Ireland, and pending applications in Hong

Kong and the United States of America. It operates its principal website at

ic.ac.uk, which also serves at its email address.

What little is known of respondent comes from the "whois" data bases for the

Disputed Domain Names, email correspondence between the parties (Annex 1 to

the Complaint), the Reply Emails, and decisions in other proceedings under the

Policy[2]. Respondent operates

under the name Oxford University, although it is unclear whether this is a corporation

or other juridical entity or merely a trade name. Respondent plainly has no

connection with the university of the same name in Oxford, England[3].

The email correspondence and other decisions indicate that Respondent's principal

is an individual named D. R. Seagle.

Respondent registered two of the three Disputed Domain Names in April 2000.

In May 2000, Complainant's solicitors wrote to Respondent, requesting transfer

of these two domain names to the Complainant. In a second letter, sent June

9, 2002, Complainant's solicitors offered Respondent £1,000 for the transfer

of the two domain names, in part on condition that the Respondent not register

any other Domain Names which "should properly be registered by [Complainant]."

Respondent agreed, and on June 16, 2000, the Complainant's solicitors duly transferred

£1,000 to Respondent. Respondent acknowledged receipt of the funds the same

day in an email in which he also stated that he would transfer the two domain

names to the Complainant.

Respondent failed to transfer the two domain names. On April 12, 2002, Respondent

registered the third of the Disputed Domain Names (<imperial-college.biz>)

and renewed his registration for the other two. Complaintant's solicitors wrote

Respondent on October 2, 2002, enclosing a transfer agreement for the first

two of the Disputed Domain Names and requesting transfer of the third.

Complainant’s solicitors wrote again on October 11, 2002, offering Respondent

£100 to cover his reasonable out-of-pocket expenses for the transfer of the

third of the Disputed Domain Names and requesting a fax number for transmission

of the transfer agreement for the first two Domain Names. The gist of Respondent's

replies to these emails was (a) the ₤100 "offer" was inadequate and that

he expected a more substantial payment, and (b) various excuses for not executing

the transfer agreement.

On November 4, 2002, Respondent, in an email to Complainant's solicitors, referred

to the £100 offer as "insultingly low," and requesting a higher offer. On November 11, 2002,

Respondent sent several scurrilous and harassing emails directly to Complainant.

Nothing in these emails bears on the dispute over the Disputed Domain Names.

5. Parties' Contentions

Complainant's contentions may be summarized as follows:

a. Complainant has valid and long-standing trademark rights in the mark Imperial

College. The Disputed Domain Names are confusingly similar to this mark,

differing only by the addition of a hyphen between the two words and the addition

of a top level domain name at the end. The Disputed Domain Names are certain

to cause confusion with Complainant's mark.

b. Respondent has no rights in the disputed Domain Names. Complainant has not

licensed or otherwise permitted Respondent to use its mark, in a Domain Name

or otherwise. There is no evidence, and Respondent has offered no justification,

for its appropriation of Complainant's mark in the Disputed Domain Names. Respondent

similarly has not in its email correspondence offered any basis for its use

of that mark, or shown that it has ever conducted any activity (commercial or

noncommercial) under that name.

c. Respondent's bad faith in registration and use is established by Respondent's

registration, without any justification, of the Disputed Domain Names that incorporate

Complainant's mark; Respondent's breach of his agreement to transfer two of

the Disputed Domain Names; his registration of the third of the Disputed Domain

Names in breach of his agreement; his seeking additional payment for transfer

of the third Disputed Domain Name; and his conduct in the other proceedings

under the Policy.

Respondent's contentions, so far as I can discern from the Reply Emails,

are that he never owned the third of the Disputed Domain Names (registered in

April 2002)[4] and that any failure to transfer

the other two was a result of Complainant's solicitors' "fumbl[ing]."

6. Discussion and Findings

In order to prevail in this administrative proceeding, Complainant must prove

the following elements, which are set out in Paragraph 4(a) of the Policy:

(i) Respondent's domain names are identical or confusingly similar to a trademark

or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests with respect to the domain

names; and

(iii) Respondent's domain names have been registered and are being used in

bad faith.

I shall proceed to a decision based on the Complaint and the evidence submitted

by Complainant. The absence of a formal response does not mean that I may accept

as true the allegations of the Complaint; Complainant retains its burden of

proving the requisite elements of Paragraph 4(a) of the Policy by competent

evidence.

A. Identical or Confusingly Similar

As many panels have held, neither the addition of a punctuation mark such as

a hyphen between words of a valid trademark nor the top-level domain designation

at the end of a domain name serves to mitigate the confusion that incorporation

of a registered mark in a domain name presumptively causes. Complainant has

established this element of its case.

B. Rights or Legitimate Interests

Respondent does not even attempt to justify its appropriation of Complainant's

mark in the disputed Domain Names. So far as the record before the Panel is

concerned, there is no evidence, or even an allegation, that Respondent has

any entitlement to Complainant's mark. Certainly none of the safe harbors of

paragraph 4(a)(ii) of the Policy has been shown or suggested. Complainant

has established this element of its case.

C. Registered and Used in Bad Faith

Bad faith in use of all three Disputed Domain Names, and in registration of

the third subsequently to direct notification from the mark holder of its objection,

are clear. Respondent has claimed to have "negotiated" to sell the disputed

Domain names for profit, and has offered no evidence of any legitimate use of

any of the disputed Domain Names[5].

While there is no direct evidence supporting a finding that Respondent registered

the first two of the Disputed Domain Names in bad faith, I have no difficulty

inferring such a finding from the other evidence. No website at all is maintained

at any of the three disputed Domain Names; my attempt to reach each on December

17, 2002, yielded the following:

The page cannot be found.

The page your looking for might have been removed, had its name change, or

is temporally unavailable.

Under the "warehousing" doctrine, first articulated in Telstra Corporation

Ltd. v Nuclear Marshmallows, WIPO Case

No. D2000-0003, prolonged non-use of a domain name has been held to support

a finding of registration in bad faith. Similarly, a subsequent sale of a Domain

Name for more than reimbursement for out-of-pocket expenses has been held to

support an inference that cyber blackmail was the registrant's original intention.

Respondent's documented conduct in other matters is further evidence that he

undertook registration of the disputed Domain Names solely to resell them at

a profit. In these circumstances, as in Telstra, "it is not possible

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 Complainant's rights under trademark law."

Complainant has established bad faith in use and registration.

7. Decision

For the foregoing reasons, the Panel orders that the Disputed Domain Names

be transferred to the Complainant.

Richard G. Lyon

Sole Panelist

Date: December 24, 2002

1. Respondent did communicate by email with

the Center, requesting transmission of the Complaint in a different format.

2. The Chancellor, Masters, and Scholars

of the University of Oxford v. Seagle, WIPO

Case No. D2000-0308 (oxford-university.com); Texas Instruments, Inc. v.

DM, WIPO Case No. D2000-1448 (<texas-instruments.com>,

<texas-instruments.net>, <texas-instruments.org>, and <texasinstruments.net>);

Harvey Norman Retailing Pty Ltd v Oxford-University, WIPO

Case No. D2000-0944 ( and ); Imperial

Chemical Industries, PLC v. Oxford University, WIPO

Case No. D2001-0292 <dulux.org>, <ici-dulux.com>,

<ici-dulux.org>, <ici-dulux.net>, and <icidulux.com>);

and The Chancellor, Masters and Scholars of the University of Oxford v. Seagle,

WIPO Case No. D2001-0746 (<university-of-oxford.com>).

3. The Chancellor, Masters, and Scholars

of the University of Oxford v. Seagle, WIPO

Case No. D2000-0308; The Chancellor, Masters and Scholars of the University

of Oxford v. Seagle, WIPO Case No. D2001-0746.

4. The Registrar confirmation and copies

of the "whois" database attached to the Complaint give the lie to this naked

and self-serving statement by Respondent.

5. I note, in response to the assertion in

the Reply Emails, that the reason for Respondent's failure to transfer the first

two domain names is irrelevant. Respondent's admission that it accepted the

payment for the two domain names strips Respondent of any legitimate entitlement

to them. Even in the absence of the earlier agreement Complainant has shown,

as between the parties, its right under the Policy to those two domain names.

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