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Encyclopaedia Britannica, Inc. v. UP Networks [2004] GENDND 760 (11 June 2004)

1. The Parties

The Complainant is Encyclopaedia Britannica, Inc., a company with its principal place of business in Chicago, Illinois, United States of America (hereinafter referred to as “the Complainant” or “Encyclopaedia Britannica”). It is represented by the law firm Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, of Chicago, Illinois, United States of America.

The Respondent is UP Networks, a company based in Irvine, California, United States of America (hereinafter referred to as “the Respondent”).

2. The Domain Name and Registrar

The disputed domain name is <brittannica.com>.

The Registrar is Innerwise, Inc., d/b/a/ ItsYourDomain.com, of Schaumburg, Illinois, United States of America (hereinafter “the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on April 7, 2004, and in hard copy on April 13, 2004.

On April 8, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2004, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing contact details for the administrative, billing, and technical contacts.

In response to a notification by the Center on April 15, 2004, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 19, 2004.

On April 21, 2004, the Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 “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 April 21, 2004. In accordance with the Rules, Paragraph 5(a), the due date for the Response was May 11, 2004. The Respondent did not submit any Response by that date. Accordingly, the Center issued a Notification of Respondent Default on May 12, 2004.

The Center appointed D. Brian King as Sole Panelist in this matter on May 26, 2004. The Panel finds that it was properly constituted in accordance with the Rules and the Supplemental Rules. The Sole Panelist 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 facts relevant to the current dispute are set out in the Complaint. Considering the evidence submitted, the Panel finds the following facts to have been established.

The Complainant, Encyclopaedia Britannica, has been in operation since the 18th century and is an internationally-known publisher of encyclopedias, dictionaries, atlases and other reference works under the mark “BRITANNICA”. The Complainant offers its works in printed, digital and online forms.

Encyclopaedia Britannica has for many years used the trade name “BRITANNICA,” and variations thereof, extensively in the United States and in a number of countries around the world. It has held registered U.S. trademarks for the name since 1984 (see Complainant’s Exhibit D), and has likewise registered the mark in more than 69 countries worldwide (see Complainant’s Exhibit E).

The disputed domain name, <brittannica.com>, was registered on May 27, 2003, by Respondent UP Networks (see Complainant’s Exhibit A). It resolves to an active website providing links to various online book stores, including Amazon.com’s “www.amazon.com“ website, Barnes and Noble’s “www.barnesandnoble.com“ website, Half.com’s “www.mediataskmaster.com” website and eCampus.com’s “www.ecampus.com” website (see Complainant’s Exhibit G).

5. Parties’ Contentions

A. Complainant

The Complainant relies on the above facts and contends, inter alia, that the three elements of Paragraph 4(a) of the Policy have been met.

First, the Complainant argues that the contested domain name is confusingly similar to the Complainant’s “BRITANNICA” trademark, in which the Respondent has no prior rights. In support of this contention, the Complainant notes that the disputed domain name consists of a slight typographical variation of the Complainant’s trademark and that the Respondent’s website provides links to other websites selling goods that are similar to the Complainant’s products. On this basis, the Complainant argues that there is a serious likelihood that the Respondent’s use of the disputed domain name will lead to consumer confusion by creating the impression that the Respondent is, or has some connection to, the Complainant.

Second, the Complainant argues that the Respondent has no legitimate rights or interests with respect to the disputed domain name. In this regard, the Complainant notes that the disputed domain name was registered by the Respondent long after the Complainant had established rights in the “BRITANNICA” mark through registration and extensive use.

Finally, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The “BRITANNICA” mark is so well-known, the Complainant argues, that the Respondent could not possibly have been unaware of the Complainant’s rights in the mark at the time it registered the disputed domain name. The Complainant contends that even if the Respondent did not have actual notice of the Complainant’s rights, it had constructive notice based upon the Complainant’s prior registration of the mark with the U.S. Patent and Trademark Office. The Complainant further contends that the Respondent’s purpose in registering and using the domain name is to trade off the Complainant’s goodwill in the mark. This follows, in the Complainant’s submission, from the fact that the Respondent registered a domain name confusingly similar to the Complainant’s famous mark, which name the Respondent uses for an online business offering for sale products competitive to those of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The 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 domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Notwithstanding the Respondent’s default, the Complainant bears the ultimate burden of proof on each of these elements. They will be examined in turn below.

A. Identical or Confusingly Similar

The domain name at issue wholly incorporates the Complainant’s “BRITANNICA” mark, albeit with the spelling slightly altered through the addition of an extra “t”. Domain names with similar misspellings have been held by previous Panels to be identical or confusingly similar to the “BRITANNICA” mark. See, e.g., Encyclopaedia Britannica, Inc v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (June 7, 2000), pages 2 and 3 (finding confusing similarity as to domain names <brtanica.com>, <britannca.com> and <bitannica.com>). On the facts here, the Panel has no difficulty in finding that the Complainant has met the first element under Paragraph 4(a).

B. Rights or Legitimate Interests

The Panel is further satisfied, on the evidence presented, that the Respondent has no rights or legitimate interests in the domain name at issue. In particular, the Panel finds that none of the three circumstances identified in Paragraph 4(c) of the Policy as indicative of legitimate rights or interests is present here.

First, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The “BRITANNICA” mark is sufficiently well known that it is highly unlikely that the Respondent was not aware of the Complainant’s rights in the mark at the time it registered the disputed domain name. In any event, the Respondent was on constructive notice of the Complainant’s rights, given that the Complainant had registered the mark in the United States, the common domicile of both parties, nearly twenty years prior to the registration of the disputed domain name. See 15 U.S.C. § 1072 (trademark registration constitutes constructive notice of the registrant’s claim of ownership thereof). In these circumstances, the Respondent’s use of the disputed domain name in commerce was not bona fide.

Second, there is no evidence to suggest that the Respondent has “been commonly known” by the disputed domain name. The word “brittannica” has no apparent association with the Respondent, its business or the goods and services it offers.

Third, the disputed domain name is being used by the Respondent for commercial purposes and hence does not meet the “non-commercial or fair use” criterion.

Accordingly, the Panel concludes that the Complainant has satisfied the second element under Paragraph 4(a) in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location, or of a product or service on the website or location.

Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith.” This requirement is conjunctive, and therefore the Complainant must establish both bad faith registration and bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), at paragraphs 7.4 to 7.6.

For purposes of the Policy, a finding of any of the four circumstances listed in Paragraph 4(b) will be sufficient to establish registration and use in bad faith. Those four circumstances are, furthermore, not exclusive, and other circumstances may likewise lead, in a particular case, to a finding of bad faith registration and use. See CCA Industries, Inc v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000), at page 3.

The Panel is satisfied in this case that the Respondent’s conduct falls within the circumstance identified in Paragraph 4(b)(iv) of the Policy. It has been established that the disputed domain name is confusingly similar to the Complainant’s mark and that the Respondent has no rights or legitimate interests in the domain name. Furthermore, the Respondent has been using the disputed domain name for commercial purposes. The logical inference, sufficiently supported by the evidence here, is that the Respondent registered and used the disputed domain name – consisting of an intentional misspelling of the Complainant’s trademark – with the purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source or affiliation. In other words, the evidence supports the conclusion that the Respondent has intentionally attempted to trade off the Complainant’s goodwill in the “BRITANNICA” mark, a prime example of bad faith registration and use.

7. Decision

For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <brittannica.com> be transferred to the Complainant.

D. Brian King
Sole Panelist

Dated: June 11, 2004