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The Open University v. Netschool Limited [2001] GENDND 1195 (20 June 2001)

WIPO Arbitration and Mediation Center

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.

The domain name at issue is <openuniversity.com>. This domain name is registered with Network Solutions, Inc. ("NSI") of Herndon, Virginia, USA.

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.

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.

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.

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.

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.

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