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HM Publishers Holdings Limited v. Webserve LLC [2005] GENDND 1613 (22 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HM Publishers Holdings Limited v. Webserve LLC

Case No. D2005-0741

1. The Parties

The Complainant is HM Publishers Holdings Limited, Basingstoke, Hampshire, United Kingdom of Great Britain and Northern Ireland, represented by Alison J. Cole, London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Webserve LLC, Roseau, Dominica.

2. The Domain Name and Registrar

The disputed domain name <macmilan.com> is registered with Fabulous.com Pty Ltd., Brisbane, Australia.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on July 13, 2005, and in hardcopy on July 19, 2005.

On July 13, 2005, the Center transmitted by email a request for registrar verification in connection with the domain name at issue to Fabulous.com Pty Ltd.. On July 14, 2005, the Center received a response by email from Fabulous.com Pty Ltd. confirming that the Respondent is listed as the registrant and providing the contact details for the administrative contact.

On July 21, 2005, the Center requested a signed version of the Complaint, as it is required by Paragraph 3(b)(xiv) of the Rules. A signed version of the Complaint was filed with the Center on July 21, 2005 by email and in hardcopy on July 25, 2005.

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2005. In accordance with paragraph 5(a) of the Rules, the due date for the Response was August 18, 2005. The Respondent did not submit a response. The Center notified the Respondent’s default on August 24, 2005.

The Center appointed Haig Oghigian as a Sole Panelist in this matter on September 12, 2005. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

4. Factual background

The Complainant coordinates the activities of the Macmillan Group of publishing companies. It is the proprietor of the Macmillan Trademarks and has exclusive rights to license the Macmillan name and other Trademarks and Intellectual property rights for the benefit of all Macmillan Group companies. The Complainant is regarded in the publishing world with global imprints including Pan Books, Picador, Palgrave Macmillan, Nature and Macmillan.

The Complainant has been the owner of the domain name <macmillan.com> since August 11, 1994.

The Complainant is the owner of 150 Trademarks containing or comprising the word MACMILLAN. The Complainant is the proprietor of several trademark registrations, such as in the UK, USA, New Zealand, Australia, Japan and the EU.

There is little information about the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the domain name <macmilan.com> be transferred from Respondent to Complainant.

According to the Complainant, the company operates in over 70 countries. All activities of the Complainant’s group of companies have always borne reference to the name MACMILLAN. The Complainant states that its goods and services are available worldwide via sales of books and online publications through various websites. According to the Complainant the MACMILLAN trademark is Complainant’s house mark and one of the major business assets of the Complainant.

The Complainant submits that the registration at issue in these proceedings consists of the Complainant’s MACMILLAN trademark except for leaving out an “L” in the spelling. The contested domain name is confusingly similar to the said trademarks of the Complainant as it reproduces these dominant distinctive elements. The omission of the letter L is not sufficient to create a different mark from MACMILLAN. It is just “typosquatting” – an attempt to profit from typing errors by person seeking the Complainant’s address “www.macmillan.com”. (see Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639).Furthermore, the Complainant submits that an Internet user typing “www.macmilan.com” would most certainly be attempting to access a Complainant’s website. The Complainant states that each month the website “www.macmillian.com” receives approximately 2,439,845 “hits”.

The Complainant asserts that the Respondent has no rights or legitimate interests with respect to the domain name <macmilan.com> as it is not the Respondent’s business, trading name nor the trademark of the Respondent.

Moreover, the Complainant states that the Respondent is not making a legitimate non-commercial or fair use of the <macmilan.com> domain name without intent for commercial gain to misleadingly divert customers, or to tarnish the Complainant’s trademarks and name. On the contrary, the Respondent has registered and is using the <macmilan.com> domain name for the purpose of selling books.

The Complainant submits that the Respondent registered and is using the domain name in bad faith. The Respondent has registered the domain name in order to obtain business directed at the Complainant. The Respondent’s actions have therefore unduly interfered with the ability of the Complainant to promote its own goods and services and therefore the domain name has been registered primarily for the purpose of obstructing the business of the Complainant.

Furthermore, the Respondent’s absence of any authorization by, or in connection with the Complainant (or any part of the Complainant’s group of companies) and the subsequent registration and use of the domain name, leads to the inevitable conclusion that the Respondent is using the domain name with the intent that it should be used to attract, for commercial gain, internet users to its website by creating a likelihood of confusion.

The Complainant submits that unsuspecting Internet users, while searching for the Complainant’s website when using the Respondent’s domain name, are being re-directed to a website owned and operated by an apparent competitor.

Consequently, this constitutes in the Complainant’s view registration and use of the domain name in bad faith as demonstrated in recent cases (see Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639; Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019; and Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

With regard to the first element of paragraph 4(a)(i) of the Policy, the Panel is satisfied that the Complainant has established that it has rights in the MACMILLAN registered trademark.

The Complainant uses the trademark MACMILLAN in connection with the coordination of the activities of the Complainant’s group of publishing companies (see Factual Background, supra).

Even though more relevant under the third element of the UDRP, the Panel notes that the Complainant’s rights in the trademark MACMILLAN arose prior to the Respondent’s registration of the domain name <macmilan.com>.

The Respondent has registered the domain name <macmilan.com>. This name is identical to the Complainant’s trademark MACMILLAN, except that the second letter “L” was omitted.

The Panel is also satisfied that the domain name at issue is confusingly similar to that mark. The omission of the letter “L” does not attribute a distinctive character to the domain name. It is a difference without legal significance.

In these circumstances the disputed domain name is inherently similar to the Complainant’s trademarks and likely to be confusing to the public on face value as suggesting either an operation of the Complainant or one associated with it. The Panel has particular regard to and agrees with the comments made in this regard in the UDRP decisions AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2002-0666; Telstra Corp. Ltd. v. 11/Shinpyo Kang, WIPO Case No. D2001-0623; and Pivotal Corp. v. Discovery Street Trading Co., WIPO Case No. D2000-0648; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances can be:

- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

- legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

The Respondent did not file a Response, and it makes no claim whatsoever of rights or legitimate interests in the domain name at issue.

The Panel is of the opinion that the Complainant has established on the balance of probabilities that the Respondent has no rights or legitimate interests in the domain name at issue.

The Complainant has no relationship with the Respondent and has not authorized the Respondent to use the domain name <macmilan.com>. There is no indication in the file that the Respondent is known under the disputed domain name.

Therefore, the Complainant has established the second element of the UDRP.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. It states among others, that it is sufficient to support a finding of bad faith if in the circumstance of 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 website or location or of a product or service on the website or location. See also Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panelist is of opinion that the Respondent, when registering the domain name at issue, intended that the domain name referred to the Complainant and its business. Given the reputation of the Complainant’s trademark, it is improbable that anyone would chose the word “macmilan” for any purpose except to refer to the Complainant. (See also Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).

The Respondent apparently wants to profit from typing errors of Internet users seeking the Complainant’s address “www.macmillan.com”. This appears to be a “typosquatting” case.

It is not possible for the Panel in these circumstances to make a finding that the Respondent’s registration of the said domain name is bona fide.

As stated before, the Respondent failed to submit a Response in this proceeding. Therefore, the Panel may accept all reasonable allegations included in the Complaint as true, in accordance with paragraph 14 of the Rules (See Ross-Simons, Inc. v. Henry Chan, WIPO Case No. D2003-0970; Southern communications service v. Henry Chan, WIPO Case No. D2004-0214).

This amounts to bad faith under paragraph 4(b) of the Policy.

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 domain name <macmilan.com> be transferred to the Complainant.

Haig Oghigian
Sole Panelist

Dated: September 22, 2005