'GeelongGrammarSchool.com' registrant fails UDRP test

International

In Geelong Grammar School Ltd v Hunter, a World Intellectual Property Organization (WIPO) panel has ordered the transfer of the domain name 'GeelongGrammarSchool.com' to the complainant.

Upon discovering that George Hunter had registered the domain name 'GeelongGrammarSchool.com', Geelong Grammar School - a large boarding school near Melbourne, Australia - started proceedings with WIPO. The school claimed common law trademark rights in the name 'Geelong Grammar School', which it has used since 1855 to promote its services and facilities throughout Australia and overseas. The school, whose former pupils include Prince Charles, also lodged applications to register 'Geelong Grammar' and 'Geelong Grammar School' as trademarks between August 2002 and April 2003.

Applying the Uniform Domain Name Dispute Resolution Policy, the panel found that:

  • the disputed domain name was identical to the school's common law trademark 'Geelong Grammar School';

  • Hunter had no legitimate interest in the domain name since (i) he was not known to be involved with the educational sector, and (ii) the choice of the Aboriginal geographical name 'Geelong' associated with the descriptive word 'school' was unlikely to be fortuitous for a resident of California; and

  • the fact that the domain name was not used to host an active website inferred bad faith.

Accordingly, the panel ordered the transfer of 'GeelongGrammarSchool.com' to the school.

Julian Gyngell, Clayton Utz, Sydney

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