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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Geelong Grammar School Ltd v. George Hunter

Case No. D2003-0337

 

1.The Parties

The Complainant is Geelong Grammar School Ltd of Corio, Victoria, Australia. It is represented in the proceeding by Joseph Woodward of Harwood Andrews Lawyers, Geelong, Victoria, Australia.

The Registrar’s Whois database identifies the Respondent as being George Hunter of San Jose, California, United States of America. The Respondent is unrepresented.

 

2.The Domain Name and Registrar

The domain name the subject of the dispute is:

<geelonggrammarschool.com>

The Registrar with which the domain name is registered is Gandi SarL, of Paris, France.

The date on which the domain name was registered appears to be January 17, 2001.

 

3. Procedural History

(a) On May 2, 2003, the Complaint was received by email.
(b) On May 8, 2003, the Complaint was received in hardcopy.
(c) On May 2, 2003, Registrar verification was requested.
(d) On May 5, 2003, the Registrar responded to the verification request.
(e) On May 9, 12 and 14 amended details of the Complaint were received by fax email and in hard copy.
(f) On May 12, 2003, a formal notification of Complaint and commencement of administrative proceeding was notified.
(g) On June 4, 2003, a notification of Respondent default was issued.
(h) On June 17, 2003, a notification of appointment to administrative panel and projected decision date was advised.

An administrative panel of John Katz QC of Auckland, New Zealand as sole Panelist was notified. The panel finds that it was properly constituted. The Panelist has submitted the statement of acceptance and declaration of impartiality and independence as required by the Center to ensure compliance with the Rules for Uniform Domain Name Dispute Resolution Policy.

The Panelist having accepted the appointment and having considered the papers delivers the following administrative panel decision.

 

4. Factual Background

A. The Complainant

The Complainant is Geelong Grammar School ("GGS"). The School has four campuses situated around the city of Geelong, Victoria, Australia. It is a coeducational school to which some 1,500 students are admitted annually at both primary and secondary levels. It has an annual turnover of A$32 million increasing by some 5.5% annually.

GGS claims proprietorship to the common law trademark GEELONG GRAMMAR SCHOOL which it has used since 1855 when its first intake of students occurred. It has been in use continuously ever since to promote GGS and its services and facilities, on buildings, clothing, stationery, vehicles, CDs, general merchandise and signage.

There is in evidence (annexure E) a good deal of material establishing:

(a) The use by GGS of the trademark GEELONG GRAMMAR SCHOOL in its general communications.
(b) Goods, merchandise, memorabilia and assorted ephemera using the trademark.
(c) Books and assorted publications and related material all using or referring to the trademark.

The trademark has been used throughout Australia and New Zealand and elsewhere in the world including South East Asia, China, Japan, North America, the Middle East and the European Union.

A$611,270 (Ђ340,365) is spent annually on using the trademark.

On August 5, 2002, GGS lodged with IP Australia an application to register the trademark. That application is currently pending.

Although not specifically discussed, paragraph 9 of the Complaint refers to a domain name <geelonggrammar.com.au>. That domain name automatically defaults to a website <ggscorio.vic.edu.au>.

B. The Respondent

Little is known about the Respondent as the Respondent has defaulted and put before the panel no formal response. It is assumed the Respondent is an individual living in San Jose, California.

The disputed domain was apparently registered by the Respondent with Gandi SarL on January 17, 2001, (refer annexure A to Complaint, Gandi SarL Registrar Response). It is registered for a period of three years. Since initial registration it has been inactive with no apparent associated website. There is no evidence of any commercial activity or personal business of the Respondent with which the domain name is or may be associated.

 

5. The Parties’ Contentions

A. The Complainant

The Complaint of GGS is rather brief but includes extensive exhibits and annexures as to the use by GGS of its trademark.

GGS claims proprietorship at common law of the trademark GEELONG GRAMMAR SCHOOL. It refers to and relies upon its extensive use of the trademark on diverse categories of goods and services. Its annual advertising spend at Ђ340,000 is considerable. Its annual turnover at A$32 million (Ђ17.5 million) is also very considerable.

GGS therefore complains that the disputed domain name is identical with the common law trademark GEELONG GRAMMAR SCHOOL in which GGS has rights. It also claims the disputed domain name is identical with and confusingly similar to GGS’ domain name <geelonggrammar.com.au>.

GGS then asserts that the Respondent has no rights or legitimate interests in the disputed domain name.

Finally, GGS asserts registration of the disputed domain name and use in bad faith relying on the now seminal decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

As earlier indicated, little is known about the Respondent. The Complainant GGS by its solicitors wrote in August 2002, a standard cease and desist letter to the Respondent which was sent by email to the Respondent. Further chaser emails were sent in September 2002, and February 2003. None drew a response. The emails alleged the disputed domain name was being parked by the Respondent who was cybersquatting on the domain name.

It might reasonably be expected that, faced with such claims, the Respondent would come forward with a plausible response if he had one. There has been none.

Nevertheless, although the Respondent has defaulted, the email traffic from GGS is in evidence. But, no adverse presumption should be made merely because the Respondent has defaulted. Whilst concepts of burden of proof are inappropriate under the ICANN procedure, it is still for the Complainant to make out its case. However, where appropriate and proper, inferences can be drawn from surrounding facts and lack of response from a Respondent who has clear notice of a Complainant’s claims.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") is directed towards resolving disputes concerning allegations of abusive domain name registrations.

As part of the process a Complainant must provide evidence and submissions in support of its Complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond.

In this instance the Respondent has defaulted. As earlier indicated, no particular burden lies either way. Nevertheless, paragraph 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:

(i) The Respondent’s domain name is 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 interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.

Each of the three elements must be established by a Complainant to warrant relief.

A. Identical or Confusingly Similar

As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trademarks or service marks in which the Complainant has rights.

The Complainant must establish that it has such rights either to a common law or registered trademark or service mark and that those rights are being violated by the Respondent. That violation can be by the adoption by the Respondent for itself of a trademark which is nearly identical or confusingly similar.

The trademarks in suit need not be registered trademarks and a common law trademark will suffice. What the Complainant must establish is that it owns intellectual property rights of one sort or another in a trademark or trademarks.

In trademark law it is trite to describe some trademarks as famous or well known. Most jurisdictions afford protection to such trademarks (see for example Mostert, Famous and Well Known Marks, Butterworths, London, 1997). Any WIPO Panel would be entitled to use and apply his/her own knowledge of what are such marks. This is not to substitute for proper evidence and argument from a Complainant but it would be idle to close the eyes to what are recognised worldwide as famous or well known marks.

All the Respondent has done is add the Internet suffix ".com" to what is otherwise the identical geographical and descriptive name of a very well known and respected educational establishment. As has been made clear in a number of Panels’ decisions, the addition of the ".com" (or similar) suffix relevantly adds nothing.

It is a basic tenet of trademark law, equally applicable under paragraph 4(a)(i) of the Policy that one must look at a trademark as a whole and compare the mark in suit with the alleged infringement. It is often asked, has the idea of the mark been taken, has the Respondent wrongly appropriated the essence or fundamental impression created by the mark. That is clearly so in the present case and needs no elaboration.

Ground 4(a)(i) is accordingly made out.

B. Rights or Legitimate Interests

As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trademark in suit, thereby justifying a proprietary right to the mark.

Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed name on certain grounds, some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, legitimate non-commercial or fair use and similar.

As the Complainant argues, there is no evidence of any basis for a legitimate right or interest that the Respondent may have in the disputed domain name. It would be quite wrong to assume, given the following matters, that the Respondent has any business or association of a legitimate nature in any way associated with the disputed domain name.

It may be expected that old boys and girls of the school are now spread far and wide throughout the world. There would be numerous people in numerous countries (including the United States) who can probably claim GGS as their alma mater. The panel considers it appropriate also to take notice of the fact that an old grammarian is HRH The Prince of Wales. Such is the repute, mana and international knowledge of GGS that few in the educational sector, being the relevant sector, together with others who had an interest in knowing the facts, would be unaware of GGS. Countless others not in academe would also be well aware of GGS.

There can be no question whatever that GGS has a valid and enforceable claim at common law to the trademark GEELONG GRAMMAR SCHOOL.

Whilst its trademark registration is still pending it can also reasonably be assumed that it will accede to registration. Even if descriptive of the service provided and the geographical location where it is provided, use of the trademark for one and a half centuries must make this an instantly recognisable and therefore well known trademark at common law, thus giving it an irresistible eligibility to registration with IP Australia.

When a Panelist encounters a disputed domain name such as this the question always arises, what reasonable legitimate interest a Respondent may have in it. In this regard it is noted:

(a) The Respondent is located in San Jose, California at the opposite end of the Pacific Ocean from Australia.

(b) The Respondent is not known to be involved in any way in the educational sector.

(c) The Respondent has defaulted so has not sought to put up any evidence to support a legitimate entitlement.

(d) The independent and bona fide choice of Geelong as a prefix before the descriptor of the business by someone in San Jose, California, would be unlikely in the extreme given that Geelong is a city near Melbourne and is an aboriginal word now corrupted from the original Jillong. Standard atlases disclose just one city or place in the world known as Geelong, being the city adjacent to Melbourne, Victoria, Australia.

(e) The identical choice of geographical and descriptive names by the Respondent as has been used by the Complainant for one and a half centuries is unlikely to be fortuitous or mere happenchance.

(f) Any person wanting to access the GGS website or search the web for such a website is likely to select the actual name as likely included in whatever GGS has in fact chosen as a domain name and associated website. Most search engines or web crawlers are not selective in separating out the name by breaks, dots, dashes or similar.

(g) It is noted from the materials (although not specifically referred to in the Complaint) that GGS has a website "www.ggscorio.vic.edu.au." It is only reasonable to assume that a searcher would likely choice Geelong plus Grammar plus School in the first instance. Any registration of a domain name including the just-referenced words would therefore block legitimate traffic to GGS through that route. Moreover, it would prevent registration of that name in favour of the entity that has the prior legitimate right to it.

Ground 4(a)(ii) is accordingly made out.

C. Registration and Use in Bad Faith

As to the third ground, this requires that the name be registered and used in bad faith. As has previously been said in other Panels’ decisions together with earlier decisions of this Panelist, both elements must be made out. Thus, both registration and use in bad faith have to be established by the Complainant.

Reference can be made to the facts and matters set out in the previous section because of the elision that frequently occurs between Grounds Two and Three.

In this case, the disputed domain name has apparently been registered since January 2001, almost two and a half years ago. The registration is shown as current until January 2004. There is no website associated with the domain name. The emails sent to the Respondent (refer annexure G to the Complaint) were sent to the email address nominated by the Respondent in his registration with Gandi SarL. The suffix to the Respondent’s email address is the suffix of the ISP AT&T. There does not appear to be any link or association between the Respondent and the disputed domain name or any associated website and the Respondent does not appear to have chosen to activate the domain name for his own email traffic.

It is tolerably clear from now a wealth of Panels’ decisions that squatting on a domain name such as this is abusive and amounts to registration of the domain name in bad faith.

But a Respondent must also be using a disputed domain name in bad faith. This domain name is inactive. Yet again it is tolerably clear from a number of Panels’ decisions that maintaining a registration in these circumstances amounts to use in a blocking manner. Reference need only be made to the Nuclear Marshmallows decision in this regard which this Panelist gratefully adopts.

The contract between the Respondent and Gandi SarL specifies that the Respondent may nominate the term of registration, here three years. Just over three quarters of that period have elapsed and there is no evidence of any genuine use by the Respondent in that period of time. All the while the registration remains however it blocks legitimate traffic via that domain name to GGS. It also prevents GGS from using for itself the disputed domain name, a domain name that perfectly and exactly captures its own common law trademark.

It must inevitably follow that the registration and use are in bad faith.

Ground 4(a)(iii) is accordingly made out under both limbs.

 

7. Decision

For the reasons set out above the Panelist finds:

(a)The domain name in suit registered by the Respondent is identical or confusingly similar to a trademark to which the Complainant Geelong Grammar School Ltd has rights; and

(b)The Respondent does not have any rights or legitimate interests in respect of the domain name; and

(c)The Respondent’s domain name was registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the registration of the following domain name be transferred to the Complainant Geelong Grammar School Limited:

<geelonggrammarschool.com>

 

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John Katz QC
Sole Panelist

Dated: July 1, 2003