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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Chancellor, Masters and Scholars of the University of Oxford t/a Oxford University Press v. The Buzz Int.

Case No. D2003-0734

 

1. The Parties

The Complainant in this administrative proceeding is The Chancellor, Masters and Scholars of the University of Oxford, Oxford, United Kingdom of Great Britain and Northern Ireland, a body, first incorporated by Royal Charter in 1357 and subsequently by statute incorporated under the Oxford and Cambridge Act 1571 (13 Eliz C29). The Complainant inter alia carries on a publishing business as "Oxford University Press".

The Respondent is The Buzz Int., Skive, Jutland, Denmark.

 

2. The Domain Name and Registrar

The domain name in dispute is <groveartmusic.com>.

The Registrar with which said domain name is registered is directNIC.com (hereinafter "the Registrar").

 

3. Procedural History

On September 16, 2003, the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail. The hard copy of the Complaint was received by the Center on September 17, 2003.

The Complaint was submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 ("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 WIPO Supplemental Rules").

On September 17, 2003, the Center sent a Request for Registrar verification to the Registrar and on the same day, the Registrar replied inter alia confirming that the Registrar had received a copy of the Complaint from the Complainant, that the Registrar is the current registrar of the said domain name, that the Respondent is the current registrant of the said domain name, that the Policy applies to the said domain name registration, that the said domain name will be locked during this Administrative Proceeding, that the specific language of the registration agreement as used by the registrant for the said domain name is English.

On October 16, 2003, the Complainant submitted an amendment to page 19 of the Complaint in which the Complainant agreed to submit to the jurisdiction of the Courts of Ontario. This followed an exchange of e-mail correspondence between the Center and the Complainant relating to the provisions of the registration agreement and in particular to the provision therein for the submission on the part of the Respondent to the jurisdiction of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name.

On October 28, 2003, the Center reviewed the amended Complaint and was satisfied that the Complaint complied with the Rules and the Supplemental Rules and that the appropriate fees had been paid by the Complainant.

On October 28, 2003, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier and by e-mail. A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further, copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that this Administrative Proceeding had commenced on October 28, 2003, and that the Respondent was required to submit a Response to the Center on or before November 17, 2003.

The e-mail message to which the copy of said Notification of Complaint and Commencement of Administrative Proceeding was attached, sent to the Respondent, bounced from one of the Respondent’s two addresses because it exceeded the fixed maximum message size permitted to that address.

On November 20, 2003, as no Response had been received the Center sent a Notification of Respondent Default to the Respondent.

On December 1, 2003, after having received a Statement of Acceptance and Declaration of Impartiality and Independence from him, the Center proceeded to appoint James Bridgeman as the Panel and on the same day the case file was transmitted to the Panel.

In the view of the Panel, proper procedures were followed and the Panel was properly constituted.

 

4. Factual Background

The Complainant has recently purchased rights in certain learned publications known as the GROVE Art dictionary and the gROVE mUSIC dictionary from the Macmillan Group on February 11, 2003, including all unregistered trade marks and all goodwill connected thereto. The assignment of rights was contained in an agreement which the Complainant has refrained from submitting with this Complaint because of the confidential nature of its contents.

The Complainant claims to have common law rights in the name GROVE in numerous jurisdictions around the world and is currently the registered owner of three trade marks incorporating the word GROVE, viz.

Trade Mark	Classes	Country	App./Reg. No.
GROVE	9, 16, 41	European Community	593269
GROVE’S	16	UK	B1065775
GROVE	16	UK	1523360
GROVE	9	UK	B1523616

Having acquired the above mentioned rights by assignment, the Complainant furthermore is in the process of having the ownership of certain trademarks incorporating the word GROVE, recorded in its name in the respective registers of France, Germany and the USA.

The Complainant’s affiliate company OUP Inc. is the registrant of the following domain names: <e-grove.com>; <groveart.com>; <grovefilm.com>; <grovehome.com>; <grovejazz.net>; <grovemusic.co.uk>; <grovemusic.com>; <grovemusicart.com>; <groveopera.com>; <grovereference.com>; <grovesubscriptions.com>; <groveuniverse.com>; <newgrovemusic.com>; <grovestocktn.com>; <jazzgrove.com>.

All of the above link to the Complainant’s websites save for <grovereference.com> and <newgrovemusic.com> which link to no active websites.

There is no information regarding the Respondent’s status or activities except those found on the Registrar’s database and the allegations in the Complaint. No Response was filed.

 

5. Parties’ Contentions

A. Complainant

The Complainant requests the Panel to issue a decision that the domain name <groveartmusic.com> be transferred to the Complainant in accordance with Paragraph 4(b)(i) of the Policy.

The Complainant submits that it is one of the world’s oldest and most famous universities and publishing houses.

The Complainant submits that it purchased all of the rights in certain learned publications known as the GROVE Art dictionary and the gROVE mUSIC dictionary from the Macmillan Group ("Macmillan Group") on February 11, 2003. This includes all unregistered trade marks and all goodwill connected thereto.

The Complainant has furnished as an annex to the Complaint, a list of music and art related titles published by the Complainants. The Complainant submits that the music titles listed in this Annex are commonly referred to as the GROVE MUSIC dictionaries while the art titles are commonly referred to as the GROVE ART dictionaries. In support of this submission the Complainant refers to a number of third party web pages that refer to these publications.

The Complainant submits that gROVE mUSIC dictionaries are universally acknowledged as the unsurpassed authorities on all aspects of music. The first GROVE MUSIC dictionary was published in 1890. The gROVE mUSIC dictionary has been available online since 1998. Its current website is at "www.grovemusic.com".

The Complainant further submits that the GROVE Art dictionary is the world’s only comprehensive art reference work. It covers all the visual arts from prehistory to the 1990's and, in the printed version, comes in 34 volumes. It was first published in 1996. It has also been available online since 1998. Its current website is also at "www.groveart.com".

The disputed domain name was previously owned by a member of the Macmillan Group, but the registration was allowed to lapse by mistake.

The Complainant submits that in or about 1998, Macmillan Group built a test site accessible at said <groveartmusic.com> address. This site became known to academic bodies who put links to it on their websites. In support of this claim the Complainant has submitted print outs of a number of third party hyper links as an annex to the Complaint.

When the earlier registration lapsed, Virtual Domain Buyers registered the disputed domain name on March 1, 1999. The Complainant submits that Virtual Domain Buyers is connected with the Respondent.

The Complainant alleges that shortly thereafter Virtual Domain Buyers linked the disputed domain name to a pornographic website. The Complainant has submitted a copy of the homepage of the website to which the disputed domain name resolves as an Annex to the Complaint. Said copy homepage was printed out shortly after the registration of the disputed domain name by Virtual Domain Buyers.

Macmillan Group first became aware of the problem when a number of users of the online Grove Art and Grove Music dictionaries contacted Macmillan Group expressing their surprise that said domain name <groveartmusic.com> was now pointing to a pornographic website. This included a professor of library science who had instructed his students to visit <groveartmusic.com> as he considered it a "great reference resource". In addition hyperlinks on third party websites which had previously directed Internet users to the online Grove Art and Grove Music dictionaries now directed them to Virtual Domain Buyers’ pornographic website.

Macmillan Group instructed their solicitors, to write to Network Solutions, the US Corporation which administered the disputed domain name, to request that the Virtual Domain Buyers’ use of the domain name be suspended. The letter was sent on May 5, 1999.

Networks Solutions refused to suspend the domain name as the disputed domain name was not identical to any of Macmillan Group’s trade mark registrations as required by Network Solutions’ policy at that date. Copies of letters between Macmillan Group’s solicitors and Network Solutions are attached as an Annex to the Complaint.

Following their recent purchase of the rights in the Grove Art and Grove Music dictionaries, the Complainant decided to take steps to retrieve the disputed domain name as it was felt that its continued registration and use in relation to a pornographic website was harming the good name of the GROVE ART and GROVE MUSIC dictionaries.

The Complainant refers to an article published in "Publishing News" dated March 7, 2003, which states that "A quick search on Google under "Grove Dictionaries" throws up: "www.groveartmusic.com". Rather than a link to the highly respected Grove reference series………..this address takes browsers to an "Adult Link List with loads of sex and porn for download". A copy of this article has been annexed to the Complaint.

The Complainant submits that the domain name had, in the intervening time, been transferred from Virtual Domain Buyers to TFCCLion Corp. The Complainant submits that Virtual Domain Buyers and TFCCLion Corp. are connected enterprises.

The Complainant instructed its representative to send a letter before action to TFCCLion Corp. This was sent on May 6, 2003.

No response was received so the Complainant’s representative sent a follow-up letter on May 27, 2003.

Again TFCC Lion Corp. failed to reply so a representative of the Complainant called the registrant on June 3, 2003, using the telephone number listed on the disputed domain name’s WHOIS search. The representative spoke with a Mr. Tom Christensen who identified himself and confirmed he was the owner of the disputed domain name. Mr. Tom Christensen confirmed that he had received the letters of May 6 and May 27, 2003, from the representatives of the Complainant. He stated that he registered the domain name in 1999, as it had recently expired and he had recognised it as a popular domain name. He stated that he bought it in order to use it to attract internet users to his website. He stated that he had made approximately Ј10,000 from his websites since the start of this year. He stated that he owned over 40 domain names, but that <groveartmusic.com> was one of his most popular. Mr. Tom Christensen was asked whether he would be willing to transfer the disputed domain name to the Complainant. Mr. Christensen ‘s response was to enquire whether the representative " was talking pounds or dollars". The representative said it was up to Mr. Christensen to come up with a figure but that the Complainant would not be willing to pay any more than his out-of-pocket expenses in registering the disputed domain name. Mr. Christensen said that in that case the Complainant would have to go to court to get the domain name back. He also confirmed that he had recently transferred the disputed domain name into the name "The Buzz Intl." but did not give a reason why, other than that that was the name of his business.

The Complainant submits that this confirms that Virtual Domain Buyers, TFCCLion Corp. and The Buzz Intl are all connected businesses controlled by Mr. Christensen.

On June 5, 2003, the Complainant’s representative sent an email to Mr. Christensen giving him an opportunity to reconsider his position. Mr. Christensen replied on the same day threatening to counter sue the Complainant for USD $484,000 which he had calculated by adding up the results of two search engine results for all pages at <groveartmusic.com>. This was the last communication between the parties. Copies of this exchange of correspondence has been submitted as an annex to the Complaint.

The Complainant submits that ever since the disputed domain name was registered by Virtual Domain Buyers it has been linked to a pornographic website. This is evidenced by the above-mentioned home page print outs and a more recent home page print out dated September 2, 2003.

The website currently comprises a long list of pornographic websites, some which can be considered to have very strong "X rated" content, along with boxes allowing Internet users to sign up to pornographic mailing lists. The website list ultimately links to approximately 1,600 pornographic websites, all, or at least the vast majority, of which use the disputed domain name in their web addresses.

The Complainant also furnished information about a dispute between said Virtual Domain Buyers and a third party relating to another registration of a freshly lapsed domain name. Furthermore, the Complainant has furnished a copy of a Memorandum and Order against Tom Christensen d/b/a Virtual Domain Buyers in proceedings pursuant to the Federal Trademark Dilution Act 1995, that resulted in a declaration against the Respondent.

The Complainant asserts that the disputed domain name is identical or at least confusingly similar to the mark and names in which the Complainant has rights. The Complainant makes the following assertions:

- The disputed domain name is identical to the name "groveartmusic.com" in which the Complainant has common law trade mark rights.

- The disputed domain name is confusingly similar to GROVE ART and GROVE MUSIC in which the Complainant has common law trade mark rights.

- The disputed domain name is confusingly similar to GROVEART.COM and GROVEMUSIC.COM in which the Complainant has common law trade mark rights.

- The disputed domain name is confusingly similar to GROVE ART and GROVE MUSIC in which the Complainant has common law trade mark rights.

- The disputed domain name is confusingly similar to GROVE, NEW GROVE DICTIONARY OF MUSIC AND MUSICIANS, GROVE’S and THE NEW GROVE registered trade marks.

- Finally the disputed domain name contains the Complainant’s registered trade mark GROVE. The addition of the generic terms words "art" and "music" are not sufficient to distinguish the domain name from the Complainant’s GROVE mark. Indeed, as the words "art" and "music" are clearly references to the GROVE art and music directories and refer to the subject matter of the Complainant’s publications this simply exacerbates the possibility of confusion and illustrates the confusing similarly of the domain name to the Complainant’s trade mark GROVE.

The Complainant submits that the Respondent is not authorised to use, in any way whatsoever, any of the Complainant’s marks including the Complainant’s GROVE trade marks. Furthermore, the Complainant believes the Respondent has no rights or legitimate interest in respect of said <groveartmusic.com> domain name as it does not appear to hold any registered trade marks which are identical or similar to the domain name. Furthermore, the Complainant submits that the Respondent is not commonly known by the domain name <groveartmusic.com> nor does it have any common law rights in the mark GROVE ART MUSIC.

There can be no doubt that the Respondent knew or should have known of the Complainant’s trade marks and business at the time of registration of the <groveartmusic.com> domain name given the widespread use and renown of the Complainant’s GROVE marks. In this regard the Complainant refers to the decision of the panel in Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137. Furthermore, the Complainant submits that the Respondent intended to commercially capitalise on the GROVE marks by registering the disputed domain name. This is evidenced by the fact that Mr. Christensen admitted in conversation with the Complainant’s representative that he registered the disputed domain name because he was aware of its popularity and he thought it would attract Internet users to his site.

The Complainant submits that the Respondent has a history of registering previously popular but recently lapsed domain names.

The Respondent states that there is no conceivable explanation for the Respondent’s registration of <groveartmusic.com> other than that it was registered in order to attract Internet users to the Respondent’s pornographic web site.

The Complainant submits that the Respondent has not engaged in any demonstrable preparations to use the domain name, or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The Complainant submits that the website attached to the <groveartmusic.com> domain name is far from a bona fide offering of goods or services. Previous decisions under the UDRP have held that the use of a domain name to direct internet users to web sites which may offer goods or services does not constitute use of the domain name for the bona fide offering of goods or services where the domain name in dispute was used to direct internet users to a pornographic web site. In support of this assertion the Complainant refers to the decision of the learned panel in National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co. aka chargersgirls.net, WIPO Case No. D2000-0118.

The Complainant submits that the pornographic material featured on the aforementioned website has been deliberately associated with <groveartmusic.com> in order to increase the pressure on the Complainant to purchase the domain name.

Finally, the Complaint submits that there is no prospect of the Respondent arguing that it is making a legitimate non commercial or fair use of the domain name and any attempt to argue that it does would be overridden by the clear intent for commercial gain, to misleadingly divert consumers and tarnish the Complainant’s GROVE marks.

The Complainant submits that the domain name <groveartmusic.com> has been used in bad faith and was chosen intentionally to attempt to attract for financial gain Internet users to the Respondent’s web site and/or other online locations that the Respondent’s website leads to, by creating a likelihood of confusion with the Complainant’s GROVE marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or those associated with it or the products or services provided by the Respondent’s website or those associated with it. The Complainant refers to the instances of actual confusion above and to the Respondent’s stated aim behind registering the domain name above.

Further, or in the alternative, the Complainant submits that the domain name was registered in order to prevent the Complainant, the owner of the GROVE marks in issue, from reflecting the same in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct as evidenced by the examples given in the Complaint.

Further, or in the alternative, the Complainant submits that the Respondent’s linking of the disputed domain name to its pornographic website in itself constitutes bad faith as it tarnishes the Complainant’s good name in the GROVE marks. See Alta Vista Company v. Lars Fleck (NAF Case No. FA0009000095735) in which the panel commented that there was bad faith as "..most tellingly, the Respondent has used the domain name to divert Internet users to a pornographic web site. A long line of UDRP decisions indicates that such conduct is evidence of bad faith". The Complainant also refers to the decision in Arizona Mail Order Inc. v. INSS (NAF Case No. 109000099757) where it was decided that where the "Respondent has registered and used the domain name to divert internet users to websites offering pornographic material such conduct is considered evidence of bad faith."

For all of the above reasons the Complainant contends that the disputed domain name was registered and is being used in bad faith.

B. Respondent

There was no Response filed.

 

6. Discussion and Findings

The Complainant must establish that:

i. said 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 said domain name; and

iii. said domain name was registered and is being used in bad faith.

Disputed domain name is identical/confusingly similar

Having considered the Complaint, this Panel accepts that the Complainant has the above-mentioned registered trademark rights and other contractual and common law rights in jurisdictions throughout the world. These rights are recently acquired by way of assignment and in some jurisdictions the Complainant is still in the process of completing the formalities associated with the recordal of the assignment of these rights.

The disputed domain name is composed of three elements viz. the Complainant’s registered trade mark "GROVE" and the addition of the words "art" and "music". In the specific context of this proceeding, both the "art" and "music" elements in the disputed domain name are descriptive of the Complainant’s goods.

The Complainant has submitted that a professor of library science complained to the Macmillan Group when he discovered that the domain name <groveartmusic.com> resolved to a pornographic site. This is an assertion. It is not evidence and especially it is not evidence of confusion on the part of the public between the GROVE trademark and the domain name that is the subject of this Administrative Proceeding.

On the other hand, the Complainant has furnished a copy of an article in a publication known as "Publishing News" dated March 7, 2003, which states that "A quick search on Google under "Grove Dictionaries" throws up: "www.groveartmusic.com". Rather than a link to the highly respected Grove reference series………..this address takes browsers to an "Adult Link List with loads of sex and porn for download". This would seem to indicate that there has been some confusion between the Complainant’s trademark and the domain name <groveartmusic.com> as used by the Respondent.

On balance, in the view of this Panel, the domain name <groveartmusic.com> is confusingly similar to the trademark GROVE in which the Complainant has rights.

The Respondent’s rights or legitimate interests

It is clear from the submissions of the Complainant that the Respondent has no connection with the Complainant. The Respondent has not been granted any rights in the use of the trademark GROVE.

The Complaint contains in an annex, copies of correspondence between Mr. Christensen, who has purported to act on behalf of the predecessor in title to the Respondent, and the representative of the Complainant.

In this correspondence, Mr. Christensen states "I bought the domain name first time in 1999, and didn’t even know about your client at that time." However, the Complainant has submitted that in a telephone conversation Mr. Christensen admitted that he registered the disputed domain name because he was aware of its popularity and he thought it would attract Internet users to his site.

It would seem to this Panel that Mr. Christensen would have been interested to know the reason for the popularity of this domain name and even the most cursory enquiries would have brought details of Macmillan Group’s publications to his attention.

In the circumstances, the Complainant has made out a prima facie case and in the absence of a Response, this Panel has no alternative but to accept the Complainant’s submission that the Respondent has no rights or legitimate interest in the said domain name.

Bad Faith

It would appear from the unchallenged submissions of the Complainant that Virtual Domain Buyers, TFCCLion Corp and The Buzz Intl are all connected businesses controlled by Mr. Christensen.

The Complainant’s evidence is that in or about 1998, Macmillan Group built a test site accessible at said <groveartmusic.com> address. This site became known to certain academic bodies who used links to it on their websites. When the domain name lapsed Virtual Domain Buyers opportunistically registered said domain.

On the balance of probabilities, when Virtual Domain Buyers registered said domain name, the registrant was aware of the rights of Macmillan Group in the GROVE trademark and the GROVE art and music dictionaries.

It is clear from the Complaint that Virtual Domain Buyers, TFCCLion Corp. and The Buzz Intl, under the control of Mr. Christensen, have continued to use this domain name to take advantage of the goodwill and reputation of Macmillan Group and subsequently the Complainant in these GROVE dictionaries.

This Panel accepts the Complainant’s submission that said domain name <groveartmusic.com> was chosen intentionally to attempt to attract for financial gain Internet users to the Respondent’s web site and/or other online locations by creating a likelihood of confusion with the Complainant’s GROVE marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or those associated with it or the products or services provided by the Respondent’s website or those associated with it.

In the circumstances this Panel finds that the said domain name was registered and is being used in bad faith.

 

7. Decision

With specific reference to paragraphs 4(i) of the Policy and paragraph 15 of the Rules this Panel decides that said domain name <groveartmusic.com> is confusingly similar to the Complainant's trademark mark GROVE, that the Respondent has no rights or legitimate interest in respect of said domain name and that said domain name was registered and is being used in bad faith. Accordingly, this Panel decides that said domain name <groveartmusic.com> should be transferred to the Complainant.

 

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James Bridgeman
Sole Panelist

Dated: December 15, 2003