WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scholastic Inc. v. Travis Concepts
Case No. D2001-1012
1. The Parties
Complainant is SCHOLASTIC INC. ("Scholastic"). Complainant�s address is: 555 Broadway, New York, NY 10012-3999, USA. Respondent is TRAVIS CONCEPTS. The address given by the Respondent to the Registrar is: 20 South 36th Street, 4th Floor, New York, NY 10036, USA.
2. The Domain Name and Registrar
This dispute concerns the following domain name: ("Domain Name"). The registrar with which the domain name is registered is: Internet Domain Registrars ("IDR").
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint by email and in hard copy on August 8, and August 13, 2001, respectively. On August 16, 2001, the Center Notified the Complainant of a Complaint Deficiency. The Center received an Amended Complaint on August 17, 2001. The Center verified that the Amended Complaint satisfies the formal requirements of the ICANN 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). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is August 22, 2001.
Issuance of Complaint
The Amended Complaint lists Respondent Travis Concepts at the following address: 20 South 36th Street, 4th Floor, New York, NY 10036, USA. Complainant sent a copy of the Complaint by email to Respondent. The Administrative and Billing contact for the Domain Name is the same address.
Confirmation of Registration Details
On August 14, 2001, the Center transmitted, via email to NSI, a request for registrar verification in connection with this case. NSI confirmed that it was not the registrar of the domain name. A second request for registrar verification was made on August 16, 2001. On August 17, 2001, IDR transmitted by email to the Center, their verification Response confirming the domain name is registered through IDR and that Travis Concepts is the Registrant and 4System, 4Admin is the Administrative Contact.
Notification of Complaint
On August 22, 2001, the Center transmitted to the Respondent, Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by September 11, 2001.
Filing of Response
No Response was filed by Respondent. On September 14, 2001, the Center notified Complainant of the Respondent�s Default.
Constitution of Administrative Panel
On October 15, 2001, the Center notified the parties via email that the Administrative Panel would consist of Frederick M. Abbott and Diane Cabell and with David Everett Wagoner as the Presiding Panelist.
Compliance with the formalities of the Policy and the Rules
Upon review of the file, the Panel concludes that the Center has fully complied with the formalities of the Policy and Rules, that Respondent was given adequate notice of this proceeding, and that Respondent has been accorded due process.
4. Factual Background
Section 5 (e) of the Rules provides "If a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint." Here there are no exceptional circumstances and, therefore, the Panel decides the dispute based upon the Amended Complaint and the Exhibits attached thereto and finds the following facts as established.
a. Scholastic is a corporation organized under and by virtue of the laws of the State of New York with its principal place of business in New York, New York.
b. Scholastic is a global children�s publishing and media company producing and distributing material for students, teachers and parents. Scholastic is among the leading publishers and distributors of books for students, classroom and professional magazines, software and other educational materials and games, including a popular Internet website called .
c. Scholastic has recently garnered significant worldwide recognition for its publication of the Harry Potter book series, one of the most successful publications ever.
d. Since at least as early as 1922, Scholastic has been using the trademark "SCHOLASTIC" and trademarks featuring "SCHOLASTIC" preceded or followed by another word or words (hereinafter the "SCHOLASTIC Trademarks") in connection with a wide variety of goods and services.
e. Among its many activities, Scholastic uses the SCHOLASTIC Trademarks in connection with thousands of books and magazines used by students in primary and secondary schools, numerous magazines directed at teachers and educational professionals, book clubs, book fairs, the production of television series and feature films, and the publication and sale of educational software and multimedia products to school administrators, teachers, parents and students.
f. Scholastic has continuously, exclusively and extensively used the SCHOLASTIC Trademarks in connection with the promotion and sale of products and services throughout the United States and other countries.
g. Scholastic is the owner of more than 100 trademarks registered with the United States Patent and Trademark Office for the SCHOLASTIC Trademarks in classes including International Class 9 (computer software and related merchandise), Class 16 (periodicals and printed materials), Class 28 (computer games) and numerous other classes. These registered trademarks include, among other things, SCHOLASTIC BOOKS ON TOUR, SCHOLASTIC BOOKLINE, SCHOLASTIC BOOK FAIRS, and SCHOLASTIC BOOK SERVICES. A list of federally registered U.S. trademarks owned by Scholastic using the SCHOLASTIC Trademarks is attached to the Amended Complaint as Exhibit C. Each of these registrations is valid and in effect.
h. Since about 1993, Scholastic has used the SCHOLASTIC Trademarks on and in connection with information and services offered through online services. Specifically, in 1992, Scholastic registered the domain name with Network Solutions, Inc. Beginning in about 1993, Scholastic maintained an area on America Online accessible by using the keyword "Scholastic," and since 1996, Scholastic has used the SCHOLASTIC Trademarks in connection with its Internet websites outside of America Online, including .
i. Among other things, Scholastic uses its websites to promote its goods and services. Scholastic provides visitors to its Scholastic site at with immediate on-line access to its many and varied educational resources and merchandise.
j. Scholastic has expended millions of dollars to promote its SCHOLASTIC Trademarks and the goods and services which bear the SCHOLASTIC Trademarks. As a result of these expenditures and efforts the public has come to strongly associate the goods and services provided by Scholastic with the SCHOLASTIC Trademarks.
k. The Domain Name was registered with IDR in February of 2001, nine years after Scholastic registered the domain name, and over seventy-five years after Scholastic began using the SCHOLASTIC Trademarks. Scholastic first became aware of Respondent�s domain name, , in March of 2001, at which time it attempted to send a letter to Respondent to inform it that the use of said domain name infringed upon Scholastic�s rights. The letter was returned with the statement that the address 20 S. 36th Street was unknown in New York, New York.
l. Scholastic investigated further and learned that: (i) there was no street in New York, New York called 20 South 36th St.; (ii) there was no business called Travis Concepts at 20 West 36th Street; and (iii) 20 East 36th Street did not exist. The zip code provided by Respondent, 10036, covers the area of West 41st through West 48th Street in New York, New York.
m. Scholastic found no listing for Travis Concepts in the New York, New York area telephone book, and no record of such a corporation in New York State.
n. Respondent intentionally provided its Registrar, IDR, with false contact information, including a false street address and non-working e-mail address. Respondent also failed to provide IDR with a telephone or fax number. This has made it impossible for Scholastic to contact Respondent regarding its infringement of Scholastic�s rights.
Note: These facts are taken from Paragraph 12 of the Amended Complaint.
5. Parties� Contentions
A. Complaint
Complainant contends that the domain name is confusingly similar to Scholastic�s domain name and trademarks, that Respondent acquired the domain name with no intention of utilizing it in connection with the provision of legitimate goods or services, and that Respondent registered the domain name in bad faith.
B. The Response
Respondent filed no Response.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove, with respect to the domain name in issue, each of the following:
(1) The domain name in issue is identical or confusingly similar to the Complainant�s trademarks or service marks; and
(2) The Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved, shall demonstrate Respondent�s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar Domain Name
The domain name is confusingly similar to Scholastic�s domain name, , and to the SCHOLASTIC Trademarks, because it uses the word "Scholastic" in conjunction with the word "Books". One of Scholastic�s core businesses is the publishing, distributing and sale of books. Moreover, Scholastic has several registered trademarks specifically incorporating the words "Scholastic" and "Books".
In addition, this Panel has previously held that the word "Scholastic," as used by Scholastic, is not generic or merely descriptive and has likely acquired secondary meaning by virtue of Scholastic�s long-standing use. See Scholastic Inc. v. Applied Software Solutions, Inc., WIPO Case No. D2000-1629.
Consumers who are highly familiar with Scholastic and its products, including its books, are likely to be confused and will think that is a website associated with Scholastic and its goods and services.
B. Domain Name Registered and Used in Bad Faith and Respondent�s Rights or Legitimate Interests in the Domain Name
Literally the Policy requires proof of both Registration "and" use in Bad Faith, Paragraph 4(a). There are indications that the drafters of the policy intentionally chose the word "and" rather than "or".
The issue becomes what sort of evidence is required to prove "use" in Bad Faith. Several examples of Bad Faith registration and use are set forth in Paragraph 4(b) of the Policy. Two of these examples indicate circumstances in which there is no requirement of active use, but instead (i) a purpose of selling the Domain Name or (iii) a purpose of disrupting the business of a competitor. The Policy also indicates that these examples of Bad Faith use are "without limitation".
It is apparent that the drafters of the Policy intended that under certain circumstances, evidence of Bad Faith use could be established without proof of active use.
"The Panel Confirms the opinions of numerous previous decisions, starting with the Telstra Decision (WIPO Case No. D2000-0003), holding that use of a domain name may include passive holding of the domain name, even if the web site has not been activated." EBAY, WIPO Case No. D2000-1444.
Thus, the question becomes one of proof. Are there circumstances that justify an inference that the contemplated use will be in Bad Faith? Initially the burden of proof is on the Complainant.
Here the Scholastic Trademarks were well known and had a high value in the market. It is apparent that Respondent was aware of these Trademarks and their value. Respondent�s Domain Name incorporated the word "books" which describes the best known area of Complainant�s business. Respondent provided false contact information to the Registrar and the Registration was in Bad Faith. Respondent has not actively used the Domain Name and there is credible evidence that the registration was for the purpose of the sale of the Domain Name.
Complainant has submitted evidence consisting of a screen shot of a Netscape browser showing the URL in the address/location line, "scholastic-�" in the Windows taskbar active program line at the bottom of the screen, the header " � Domain For Sale! � Netscape" at the top left of the browser, and the banner "Domain For Sale at: DomainC, Click Here". This evidence credibly indicates that Respondent offered the domain name for sale to the public. Although the panel majority accepts that Respondent might have rebutted this prima facie showing, Respondent failed to respond, having provided false contact details to the registrar. The apparent offer for sale is one of several factors in the majority�s overall determination regarding bad faith.
There is no evidence whatsoever that Respondent has established rights or legitimate interests in the Domain Name. Respondent has not been commonly known as SCHOLASTIC-BOOKS as an individual, business or other organization.
Under these circumstances it is appropriate to draw the inference that Respondent had a Bad Faith purpose in both registration and use. The evidence is sufficient to shift the burden of proof to Respondent to produce some evidence of a Good Faith use. There is no such evidence here.
Indeed, Respondent has declined to appear and produce any evidence to justify its registration and use. Because of Respondent�s Default, it is proper under Section 5(e) of the Rules for the Panel to base its decision upon the allegations of the Complaint.
On the basis of the forgoing, the majority of the Panel finds the Respondent has no rights or legitimate interests in the Domain Name and that the Domain Name has been registered and is being used in Bad Faith.
7. Decision
In light of the foregoing, the majority of the Panel decides that:
(1) The Domain Name registered by Respondent and at issue here is confusingly similar to Complainant�s trademarks,
(2) Respondent has no rights or legitimate interests in respect of the Domain Name at issue, and
(3) The Domain Name at issue has been registered and is being used in bad faith by Respondent.
Accordingly, the Panel decides that the Registration of the Domain Name set forth in paragraph 2 of this Decision shall be transferred to Complainant.
David Everett Wagoner
Presiding Panelist
Frederick M. Abbott
Panelist
Dated: November 1, 2001
DISSENT
The UDRP Policy Section 4(a) is quite clear that both bad faith registration and bad faith use must be proven by the trademark owner to sustain a Complaint. While the false registration data of the Respondent supports an interpretation of bad faith registration, the evidence submitted to show bad faith use is not credible. The domain does not resolve to an active website nor was any evidence presented that it ever did. No claim was made that the domain was used for any other purpose, such as email addressing. The only claim of use is an alleged offer of the disputed domain for sale, however, that evidence, as discussed below, is simply not substantiated. The trademark owner already has acquired domain names that reflect its mark and many variations thereof and is therefore in no way blocked from using the mark online. Therefore, I would permit the domain holder to retain the disputed registration until such time as actual use occurs that falls within the prohibitions of the UDRP.
In Section 12(t) of the Complaint, the Complainant claims, "Respondent has also listed the domain name for sale on DomainC. See Exhibit G."
Exhibit G does not show any valid evidence regarding an offer of sale of this particular domain name, much less by whom the offer was made. (Note: See copy of Exhibit G attached below). Exhibit G is a screen shot of a search portal. However, it looks nothing like the pages on the website, nor is it the screen that appears under the disputed domain name (which is inactive). Complainant appears totally mistaken in stating that this Exhibit represents the site of . It is actually the site of a page at (an address that appears in the lower location bar and which is verified by entering that address into a browser location bar).
Complainant provides no evidence of any relationship between and other than the fact that DomainC has been permitted to place a banner ad on this page. The banner ad makes a general offer of domains for sale; not a specific one for .
Another presumed piece of evidence also lacks validity. The URL appears in the upper location bar on this screen shot. However, this is also the space where any Internet user will type in the address of the page where that user wants to go next. Until the user hits the "Enter" key, the "new" URL will remain displayed on the same screen as the "old" page, thus giving a false appearance of relationship. The mere fact that the disputed domain name appears in that location does not indicate that it has any connection with the particular page which one is viewing.
Additionally, the title for this page includes the term but titles are entered by the owner of the site, not the owner of the site or by the owner of the contested domain name unless either one happens to also own/have access rights to the domain. No such evidence was presented.
Lastly, Complainant supplied no confirming evidence from as to their authority to offer for sale, or whether they in fact did make such an offer.
The printout itself contains no identification of the URL or of the date, something which the Complainant can easily choose to include when making the print. Failure to include this data further weakens the strength of this item of evidence. It has been my experience in prior UDRP cases that many domain name resellers do not scruple to obtain such permission in advance, but approach the domain owner after the fact with what they believe will be a tempting offer.
The alleged offer for sale is the only allegation of any active use of the domain name. I do not find the evidence submitted sufficient to sustain that allegation.
Diane Cabell
Panelist
Dated: November 1, 2001
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