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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

University of Melbourne v. union melb

Case No. DAU2004-0004

1. The Parties

The Complainant is University of Melbourne, Victoria, of Australia, represented by Andrew Kanis, Australia.

The Respondent is union melb, of Camberwell, Victoria, Australia and Austin, Texas, United States of America, represented by Ben Goodfellow.

2. The Domain Name and Registrar

The disputed domain name <unimelb.com.au> (the “Disputed Domain Name”) is registered with Melbourne IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2004. On September 29, 2004, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On September 30, 2004, Melbourne IT trading as Internet Name Worldwide 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 “.au” Dispute Resolution Policy (the “Policy”), the Rules for “.au” Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for “.au” 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 October 13, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 9, 2004. The Response was filed with the Center on November 10, 2004, but sent by hardcopy on November 9, 2004.

The Center appointed Alistair Payne as the sole panelist in this matter on November 17, 2004. 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.

4. Factual Background

The Complainant is the University of Melbourne, a body politic incorporated under the Melbourne University Act 1958 (Vic). It offers both undergraduate and postgraduate programmes to approximately 37,000 students and has over 5,500 staff.

The Complainant owns registered trademarks for the name THE UNIVERSITY OF MELBOURNE in Australia, the United States and the United Kingdom. It has been operating a website under the domain name <unimelb.edu.au> for over ten years. This website is integral to the educational services provided by the Complainant and receives millions of hits on a monthly basis.

The Respondent holds the registered business name UNION MELB and has been operating a website on the Disputed Domain Name since 2001. The website provides general information to students in the Melbourne area and advertises tutoring services. It also contains numerous links to the Complainant’s website and receives nearly 100,000 hits per month.

5. Parties’ Contentions

A. Complainant

Whether the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights.

The Complainant contends that it has established legal rights in the name, THE UNIVERSITY OF MELBOURNE on the basis of its registered trademarks. It further contends that it has legal rights in the word UNIMELB on the basis (a) that it is a common abbreviation for THE UNIVERSITY OF MELBOURNE (a registered trademark); and (b) that it has been has operating a website under the <unimelb.edu.au> domain name for over ten years – a website that incorporates the word UNIMELB - and therefore has acquired common law rights to that word.

The Complainant contends that either the visual appearance or sound of the Disputed Domain Name is identical or, alternatively, confusingly similar to UNIMELB in which it has registered/common law rights.

The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. It claims that the fact that this Respondent has registered the business name UNION MELB does not give rise to any implication that it has a right or legitimate interest in UNIMELB. Furthermore, the Complainant contends that the abbreviation of the Respondent’s business name would not have been undertaken if the Respondent had been legitimately trying to develop the reputation of its business name and that the abbreviation was effected for the purpose of assuming the identity of the Complainant’s domain name.

The Disputed Domain Name was registered or is subsequently being used in bad faith.

The Complainant contends that the Respondent registered the Disputed Domain Name solely for the purpose of attracting or diverting Internet users from the Complainant’s website. As evidence of bad faith in registering and use, the Complainant cites the following:

By advertising tutoring services on the Disputed Domain Name the Respondent intentionally seeks to divert Internet users from the Complainant’s website and thereby pass itself off as the Complainant.

The disclaimer on the Disputed Domain Name is a ploy to attempt to protect the Respondent from negative legal consequences and is ineffective for the purpose of avoiding confusion amongst Internet users.

The letter of September 30, 2003, sent by the Respondent in response to a letter from the Complainant indicates that the Respondent intends to enter negotiations for sale of the Disputed Domain Name to the Complainant.

A substantial majority of the links on the Disputed Domain Name are directly linked to corresponding links on the Complainant’s website.

The presence of an “adult link” on the Disputed Domain Name is likely to tarnish the reputation and be detrimental to the activities of the Complainant.

The registration by the Respondent of the domain name <swin.com.au> (bearing a similarity to the domain name of Swinburne University of Technology) indicates a pattern of bad faith registrations.

B. Respondent

The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.

The Respondent contends that the fact that that it applied to register as a trademark for the word UNIMELB on September 14, 2004 – nearly a month before it was notified of the dispute – indicates that it has rights in the Disputed Domain Name.

The Respondent contends that UNIMELB is an abbreviation of its business name UNION MELB and that it was chosen for the reason that the student information services it provides are targeted at all university students in the Melbourne area, and not just students attending the Complainant’s courses.

The Complainant contends that the “.com” of the suffix of the Disputed Domain Name means that there is a substantial difference between the Complainant’s domain name and the Disputed Domain Name.

The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name.

The Respondent contends that it has applied for the UNIMELB trademark and that it intends to operate a branded underwear business under this trademark.

The Respondent contends that the reason for creating the Disputed Domain Name was to establish a union amongst university students from universities all over the city of Melbourne and that the Disputed Domain Name was the logical domain name under which to attract students from such universities.

The Respondent contends that the services it provides are on a free-of-charge basis.

The Respondent contends that many students from institutions other than the University of Melbourne visit the Disputed Domain Name and make use of its services and that therefore the Disputed Domain Name has acquired a reputation in its own right.

The Disputed Domain Name was registered and is being used in bad faith.

The Respondent contends that no other domain name other than the Disputed Domain Name would have been appropriate for its purposes, and that it has not attempted to disrupt the Complainant’s website.

Respondent contends that no implication can be drawn from the September 30, 2003 letter that it intended to sell the Disputed Domain Name.

The Respondent contends that the “adult links” do not link to any pornographic material and that it is gauging visitors’ interest in underwear with a view to launching an underwear business under the UNIMELB trademark.

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case the transfer of the Disputed Domain Name to the Complainant), the Complainant must prove each of the three elements referred to in Paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

This element of the Policy requires the Complainant to prove (a) that it has rights in a trademark or service mark, and (b) that the Disputed Domain Name is identical to or confusingly similar to such trademark or service mark.

The Complainant has provided ample evidence that it has registered trademark rights in THE UNIVERSITY OF MELBOURNE and that it has been operating for over ten years a popular website under a domain name that incorporates UNIMELB. This website attracts many million hits per month.

On the basis of the reputation attributable to the domain name under which it operates its website, the Panel is satisfied that the Complainant has established that it has common law rights in the UNIMELB trademark. The Panel is also satisfied that the Disputed Domain Name is confusingly similar to that trademark. The difference between the “.edu.au” and “.com.au” suffixes is not a sufficient basis for distinguishing the Disputed Domain Name from the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent maintains that it has a right or legitimate interest in the Disputed Domain Name on the basis of its registered business name UNION MELB and that it has since acquired a reputation to the UNIMELB trademark. The Respondent also contends that it has a right or legitimate interest in UNIMELB on the basis of its application to register the trademark UNIMELB in Australia

On the basis of the evidence presented to it, the Panel concludes that the Respondent does not have, nor has not had in the past, any right or legitimate interest in the Disputed Domain Name. The Respondent has failed to demonstrate any of the circumstances referred to in Paragraph 4(c) of the Policy. In particular, it has failed to establish any bona fide use of the Disputed Domain Name as required by Paragraph 4(c)(i). The information and services offered on its website are, in the view of the Panel, offered for the purpose of taking advantage of traffic diverted from the Complainant’s domain name.

The Panel is satisfied that an application to register a trademark when the Respondent is aware that the Complainant has objections to the Respondent’s use of the Disputed Domain Name (as it was from the July 17, 2003 letter) does not constitute a right or legitimate interest in the Disputed Domain Name.

The Panel is also satisfied that the Respondent cannot claim to have acquired a right or legitimate interest in the Disputed Domain Name solely on the basis that it has been operating a well-visited website under the Disputed Domain Name for a period of time. In the Panel’s view a large part of the traffic passing through the Respondent’s website is likely to have been inadvertent and to have been diverted traffic from the Complainant’s long established domain name. Purposeful diversion cannot support a claim of rights acquired through use.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Disputed Domain Name has been both registered and used in bad faith by the Respondent.

At the time of establishing its website, it was open to the Respondent to chose an alternative domain name that would have avoided confusion in relation to the Complainant’s domain name, which had already established a substantial reputation in UNIMELB.

In the Panel’s view, it seems highly probable that the sole purpose that the Respondent chose the Disputed Domain Name was because of its close similarity to the Complainant’s domain name. Such a motivation implies that the registration was in bad faith.

From the evidence, it appears that the Respondent offers via the Disputed Domain Name services that are designed to appeal to traffic that has been diverted from the Complainant’s website. The Respondent maintains that the information on its website is provided on a free-of-charge basis. However, it admits that tutorial services, which are offered on a commercial basis, are advertised also on its website. Furthermore, it has stated that it intends to offer branded underwear via the website in the future – unquestionably a use of the website for commercial gain. In the Panel’s view, this amounts to use of the Disputed Domain Name in bad faith contrary to Paragraph 4(b)(iv) of the Policy. Furthermore, the Panel is of the view that the presence of an “adult link” on the Disputed Domain Name is supporting evidence of use in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant, provided that such transfer is permitted by the auDA Policy on domain name transfers. In the event that such transfer is not permitted by the auDA Policy, the Panel orders that the Disputed Domain Name be cancelled.

Alistair Payne
Sole Panelist

Dated: December 3, 2004