WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EBSCO Industries, Inc. v. Henry Chan
Case No. D2004-0140
1. The Parties
The Complainant is EBSCO Industries, Inc., of Birmingham, Alabama, United States of America, represented by Smith, Gambrell & Russell, LLP, United States of America.
The Respondent is Henry Chan, of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name is registered with iH Inc. d/b/a DotR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 23, 2004. On February 23, 2004, the Center transmitted by email to iH Inc. d/b/a DotR a request for registrar verification in connection with the domain name at issue. On March 2, 2004, iH Inc. d/b/a DotR 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. The Center verified that 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 March 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 24, 2004.
The Center appointed Martin Michaus-Romero as the sole panelist in this matter on March 31, 2004. 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 owns the following trademark registrations:
Reg. No.
Denomination
2,314,705
EBSCO CONUSMER MAGAZINE SERVICES
1,789,801
EBSCO FACULTY SUBSCRIPTION SERVICES
1,789,800
EBSCO RECEPTION ROOM SUBSCRIPTION SERVICES
The Complainant submitted copies of the relevant print outs from the government online trademark database for these trademarks as Annex 4. The trademarks are registered to identify magazines subscription and renewal services and cooperative advertising and marketing services for others.
Complainant has used the service marks, in a continuous and uninterrupted manner since 1981 and has established considerable goodwill in its mark throughout United States and the world.
5. Parties' Contentions
A. Complainant
The Complainant stated on his complaint:
1. The service mark EBSCONET is used for rendering computerized subscription services for publication, subscription, agencies since July 1, 1981. It was registered with the U.S. Patent Office on September 7, 1982, and provided the registration number 1207496.
2. The Respondent has no right to use the EBSCONET mark as part of the domain name, because it is used only to confuse, cause mistakes and deceive the public into visiting various websites for publication subscriptions. The Respondent is using the disputed domain name to divert Internet traffic to websites in the magazine subscription industry and advertising which compete with the computerized subscription services provided by the Complainant.
3. Diversion to competing websites or advertising is not a bona fide offering of goods or services and is not a legitimate fair use of the domain name. The illegitimate use made by Respondent is misleading to divert consumers or to tarnish the mark.
4. Respondent has a history of registering other domain names in bad faith and is a known cybersquatter and has registered other domain names that infringe famous marks of others. It provides copy of the decisions whereby several domain names that infringe trademarks have been cancelled.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name violates Paragraph 4(a)(i) of the Policy, provided it is identical to the service mark EBSCONET indicated in Annex 4 in which the Complainant has prior right. The disputed domain name is identical to the EBSCONET service mark and it is used to offer goods or services closely similar to those distinguished by the EBSCONET service mark and divert Internet traffic to websites.B. Rights or Legitimate Interests
The disputed domain name violates Paragraph 4(a)(ii) of the Policy. The Panel considers that the domain name was registered and has been used in bad faith. The uncontested evidence indicates that it was registered and has been used in order to divert Internet users and mislead the consumer. The Respondent has not received permission nor authorization to use the service mark EBSCONET. The Respondent did not reply to the Complainant's contentions, and therefore has not provided any evidence or arguments to prove anything to the contrary. In addition, Complainant's use of the service mark EBSCONET precedes the registration of the domain name. It should be pointed out that the Respondent is not (as individual, business or corporation) known by the name EBSCONET. From the evidence submitted it appears that the Respondent is a well-known cybersquatter.C. Registered and Used in Bad Faith
Based on the statement and documents submitted, the Panel considers that the registry or the use of the domain name identical to the service mark has been done in bad faith, and intended to trade on the goodwill of the Complainant's mark by trying to divert Internet users to magazine subscription. Thus, Paragraph 4(a)(iii) of the Policy is satisfied.
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 be transferred to the Complainant.
Martin Michaus Romero
Sole Panelist
Date: April 14, 2004
Full & Egal Universal Law Academy