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Encyclopaedia Britannica, Inc. v. LaPorte Holdings [2005] GENDND 1796 (11 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Encyclopaedia Britannica, Inc. v. LaPorte Holdings

Case No. D2005-0866

1. The Parties

The Complainant is Encyclopaedia Britannica, Inc., Chicago, Illinois, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <britannicaonlinemexico.com>, <britenicaencyclopaedia.com>, <brittaniaencyclopedia.com>, <enciclopediabritannica.com>, <encyclopediabertanica.com>, <encyclopediabrittanica.com>, <sbritannica.com>, <schooleb.com>, <searcheb.com>, and <supportbritannica.com> are registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2005. On August 16, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain names at issue. On August 17, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 26, 2005. 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 August 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2005.

The Center appointed Natasha Lisman as the sole panelist in this matter on September 28, 2005. The Panel finds that it was properly constituted. The Panel 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 Complainant is one of the oldest and best known publishers of encyclopedias, dictionaries, atlases and other reference sources. It sells its publications and related goods and services throughout the United States of America and other parts of the world under its famous trademarks ENCYCLOPAEDIA BRITANNICA and BRITANNICA, as well as the lesser known trademark EB. The Complainant owns numerous and subsisting trademark registrations issued by the United States Patent and Trademark Office and its right to use the BRITANNICA and EB marks has become incontestable by the operation of the United States federal law. In addition, the Complainant is the registrant and owner of a number of domain names, including <britannica.com>, registered in June, 1995, and <eb.com>, registered in April, 1993. The “www.britannica.com” website offers various on-line reference services and information, while the “www.eb.com” website provides resources for schools and libraries.

In the absence of any response by the Respondent, facts concerning it are available only from the Complaint and the evidentiary Annexes thereto, the domain name registrar NameKing Inc., and decisions in prior UDRP proceedings brought by other parties against the same Respondent. All the disputed domain names, <britannicaonlinemexico.com>, <britenicaencyclopaedia.com>, <brittaniaencyclopedia.com>, <enciclopediabritannica.com>, <encyclopediabertanica.com>, <encyclopediabrittanica.com>, <sbritannica.com>, <supportbritannica.com> (hereafter, “the Britannica domain names”), and <schooleb.com> and <searcheb.com> (hereafter, “the EB domain names”), were registered with NameKing between 2002 and 2004 by a registrant identifying itself as LaPorte Holdings, giving the same address in Los Angeles, California, and providing only the same name and address as its administrative, billing, and technical contacts.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has established rights in the ENCYCLOPAEDIA BRITANNICA, BRITTANICA and EB marks and in marks and domain names that incorporate the BRITANNICA and EB marks through more than two centuries of continuous use, billions of dollars’ worth of sales of goods and services, hundreds of millions dollars’ worth of advertising and promotions, and numerous trademark and domain name registrations. The Complainant further alleges that the disputed domain names registered by the Respondent are virtually identical or confusingly similar to Complainant’s famous ENCYCLOPAEDIA BRITANNICA, BRITANNICA and EB marks in that some of them are no more than slight misspellings of these marks and thus constitute the notorious practice of “typosquatting,” while others merely add generic or descriptive terms to the Complainant’s marks and/or incorporate the marks in their entirety.

The Complainant states that it has no relationship with the Respondent and has not licensed or otherwise permitted the Respondent to use any of its trademarks for any purpose, including applying for or using any domain name incorporating any of those marks. The Complainant’s investigation revealed that as of the time of the Complaint, two of the disputed domain names, <sbritannica.com> and <supportbritannica.com>, resolved to websites that redirected the Internet user to the web page for the domain name reseller DomainCargo.com, also registered by the Respondent. Included among the domain name offerings at DomainCargo.com was <supportbritannica.com>, listed for $399.00. The disputed domain names <encyclopediabertanica.com>, <schooleb.com> and <searcheb.com> resolved to web pages containing links to various commercial websites offering encyclopedia and related reference materials, including links to the Complainant’s website and the websites of the Complainant’s competitors, such as Microsoft Encarta and World Book. The remaining disputed domain names did not resolve to any websites.

The Complainant relies on numerous UDRP decisions – 50 in the first seven months of 2005 alone – in which the Respondent has been ordered to transfer domain names to trade mark owners to show that the Respondent is a notorious cybersquatter.

The Complainant argues that the Respondent’s use of several of the disputed domain names, with at least constructive knowledge of the Complainant’s rights in the marks reflected in them and without any license, right or permission from the Complainant, in order to intentionally divert Internet users to the Respondent’s web pages, including one it uses to resell domain names, all manifest the Respondent’s bad faith registration and use of the disputed domain names. The Complainant contends that the Respondent’s passive holding of some of the disputed domain names is likewise evidence of bad faith. The Complainant asserts that the Respondent’s actions are comparable to the pattern of conduct that emerges from the numerous UDRP proceedings ordering the transfer of the Respondent’s domain names to other trade mark owners and, therefore, that the Complainant should be granted the same relief.

B. Respondent

By failing to submit a Response, the Respondent has neither disputed the Complainant’s contentions nor made any of its own.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, a complainant has the burden of establishing the existence of the following three elements:

(i) The disputed domain names are 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 disputed domain names; and

(iii) The disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

As the Complainant amply demonstrates, it holds incontestable rights in the BRITANNICA and EB marks and all three of its marks are, indeed, famous and extremely valuable. The record is likewise clear that the Respondent has utilized well-known and transparent methods – typosquatting, addition of generic or descriptive terms, and wholesale incorporation – to devise and register a series of domain names that on their face are confusingly similar to the Complainant’s trade marks. It cannot plausibly be doubted that members of the general public, educators, students, and librarians seeking on-line access to, and information about, the Complainant’s highly regarded reference materials and services will be confused and diverted by the Respondent’s domain names mimicking or incorporating variations of the Complainant’s ENCYCLOPEDIA BRITANNICA, BRITANNICA and EB marks. The Panel therefore has no difficulty in concluding that the Complainant has discharged its burden under paragraph 4(a)(i) of the Policy of establishing that each of the disputed domain names is confusingly similar to either the marks in which the Complainant holds rights.

B. Rights or Legitimate Interests

The determination of whether the Respondent has rights or legitimate interests in respect of any of the disputed domain names is somewhat more difficult. The Complainant is only in the position to deny that it has ever authorized the Respondent to use its trademarks and to offer the obvious observation that the widespread fame of the marks makes it impossible to conceive of any legitimate right or interest that the Respondent could have in domain names that mimic them.

However, concrete affirmative evidence of the Respondent’s rights or interest in its domain names, if any, would necessarily have to be in the Respondent’s hands and it has chosen not to put any such evidence into the record. Paragraph 4(c) of the Policy and Paragraph 5 of the Rules emphasize to respondents the importance of demonstrating their rights and interests in a disputed domain name and provide helpful guidance as to several alternative ways in which the requisite demonstration can be made. Under these circumstances, it is only fair to shift the burden to the Respondent, and/or draw a negative inference from its failure affirmatively to contest the Complainant’s negative allegations. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004- 0110; Sony Kabushiki Kaisha v. sony.net, WIPO Case No. D2000-1074; The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

On these grounds, the Panel concludes that the Respondent lacks any rights or legitimate interests in any of the disputed domain names and deems paragraph 4(a)(ii) to have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that Respondent both registered and is using the disputed domain names in bad faith. Paragraph 4(b) of the Policy offers a non-exclusive set of different circumstances, any one of which would suffice to prove bad faith registration and use.

In the present case, the evidence of bad faith presented by the Complainant shows that some of the disputed domain names were serving as a vehicle for the Respondent’s on-line domain name selling enterprise, where various domain names, including one confusingly similar to the BRITANNICA mark, were listed at prices that appear likely to be in excess of the out-of-pocket costs directly related to them. Other of the domain names led users to links to both the Complainant’s and its competitors’ similar products, while the remainder were not being put to any use.

Without more, this evidence is incomplete and more suggestive than conclusive. However, it must be combined with the Respondent’s patently evasive registration of the disputed domain names without disclosing the identity of any natural person as a contact, its blatant typosquatting in composing the domain names, its failure to submit a Response to the Complaint, and the pattern of bad faith conduct found in other UDRP decisions against the Respondent. Taken together, the available facts, inferences and circumstances adequately support the conclusion as to each of the disputed domain names that the Respondent registered and was using it, or holding it for use, for such illegitimate purposes as speculation in domain names for profit, interfering with the Complainant’s ability to reflect its trademarks in corresponding domain names, and intentionally fostering confusion among Internet users, for commercial gain, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.

In sum, the registration and use of domain names “so obviously connected with such a well-known product… by someone with no connection with the product suggests opportunistic bad faith.” General Electric Company v. LaPorte Holdings, Inc., WIPO Case No. D2005-0076; see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Accordingly, the Panel concludes that the bad faith showing required by paragraph 4(a)(iii) has also been made out.

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 disputed domain names <britannicaonlinemexico.com>, <britenicaencyclopaedia.com>, <brittaniaencyclopedia.com>, <enciclopediabritannica.com>, <encyclopediabertanica.com>, <encyclopediabrittanica.com>, <sbritannica.com>, <schooleb.com>, <searcheb.com>, and <supportbritannica.com> be transferred to the Complainant.

Natasha Lisman
Sole Panelist

Date: October 11, 2005