Back in July we told you that a UDRP was filed on the domain name oxforddictionary.com, which is going to a parked page.
Today a one person panel awarded the domain name to the Oxford University Press of Oxford, United Kingdom.
The only surprise, is that it took the Oxford University Press 10 years to file the UDRP.
“The Complainant owns many trademark registrations around the world for the mark OXFORD in association with publishing, books and electronic products and services, including the following registrations:
United Kingdom Registrations
OXFORD No. 1551449, October 31, 1994
OXFORD No. 1575210, October 31, 1994
OXFORD No. 1576322, October 31, 1994
United States of America
OXFORD No. 403327, November 22, 1982
OXFORD No. 3424851, October 29, 2003
OXFORD No. 4467131, June 2, 2005
The Complainant has used the mark OXFORD DICTIONARY since 1884 in association with dictionaries and reference materials. The first OXFORD ENGLISH DICTIONARY was issued in installments beginning in 1884 and completed in 1928.”
The Complainant’s sales for products bearing the OXFORD trademark from 1998 to 2008 worldwide total GBP 4,242,000,000. In 2008, sales figures for products bearing the OXFORD trademark total GBP 492,000,000. For the period 1998 to 2008, the Complainant has spent GBP 632,000,000 worldwide in promoting and advertising the OXFORD trademark and its products and services.
The Complainant owns 388 domain names incorporating the word “oxford”, and operates approximately 150 websites hosting content and providing services derived from its dictionaries and reference titles. The Complainant’s three main websites operate from: <oxforddictionaries.com>; <oed.com> and <oxfordlanguagedictionaries.com>.
The Respondent registered the disputed domain name on April 18, 2002. On April 26, 2012, a WhoIs search revealed that the Registrant was listed as [J.] Briggs of New Wave Holdings, Panama. On July 19, 2012, the WhoIs search revealed that the Registrant has employed a domain-name privacy service.
“At the time the Complaint was filed, the disputed domain name reverted to a website that provided links to third parties’ sites offering goods and services in competition with the Complainant’s wares and services. ”
“The Panel is therefore prepared to find that the Respondent must have been aware of the Complainant’s trademark rights in OXFORD and OXFORD DICTIONARY when it/he registered the disputed domain name.
“Furthermore, the Panel finds no evidence that the Respondent is commonly known by the name “Oxford”, or that the Respondent was licensed or authorized by the Complainant to use the trademark OXFORD, or has any other form of legitimate interest in the “Oxford” name.
“The Panel is also prepared to find that the Respondent has not demonstrated a bona fide use of the disputed domain name. At the time the Complaint was filed, the disputed domain name reverted to a website containing links to other parties which provided products which were directly competitive to the Complainant’s products.
“Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy.”
“The Panel finds that the Respondent registered and has used the disputed domain name in bad faith.”
