WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harcourt, Inc. v. PX Publishing Ltd
Case No. D2005-1078
1. The Parties
The Complainant is Harcourt, Inc., Orlando, Florida, United States of America, represented by Law Offices of Bruce E. Matter, Potomac, Maryland, United States of America.
The Respondent is PX Publishing Ltd, Dalkeith, Edinburgh, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with ZidoD Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October�12,�2005. On October�14,�2005, the Center transmitted by email to ZidoD Inc. a request for registrar verification in connection with the domain name at issue. On October�14,�2005, ZidoD Inc. 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 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 October�19,�2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November�8,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November�14,�2005.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on November�24,�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
Complainant proved that it has common law rights in the trademark GO.HRW.COM & design, which has been used on Complainant’s webpage since 1999 for educational information services.
It also owns the trademark registration HRW and other trademark registrations containing ‘HRW’ such us WRW MULTIMEDIA CURRICULUM SYSTEMS.
Respondent registered the domain name on August�10,�2005.
5. Parties’ Contentions
A. Complainant
Complainant asserts that:
Harcourt, Inc. is a leading global education and publishing company with a long history, founded in 1919.
On January�10,�1995, Complainant registered the domain name to use in connection with a website developed by its Holt, Rinehart and Winston publishing group.
On or about October�12,�1999, Complainant, through its Holt, Rinehart and Winston
publishing group, began using the sub-domain for educational information services under its common law trademark GO.HRW.COM & design,
which is a well-known trademark.
In addition to various common law ‘HRW’ trademarks, Complainant currently owns the trademark registrations: HRW (registered in Canada on February�21,�1992); HRW MULTIMEDIA CURRICULUM SYSTEMS (registered in the United States on December�26,�1995); HRW MULTIMEDIA CURRICULUM SYSTEMS (registered in the United States on January�16,�1996); HRW (registered in the United States on August�20,�1996) and HRW (registered in the United States on October�15,�1996).
The domain name is confusingly similar to Complainant’s trademarks.
The Respondent has no rights or legitimate interests in respect of the subject domain name. Complainant never authorized the Respondent to use its trademarks. The Respondent is not making a bona fide offering of goods or services. The subject domain name resolves to nothing but a page of sponsored links to various goods and services offered by third parties. Respondent has not, as an individual, business or other organization, been known by the subject domain name for any purpose.
Respondent is not making a legitimate non-commercial or fair use of the subject domain name. The Respondent is making a commercial use of the subject domain name to misleadingly direct web traffic to the Respondent’s website.
The subject domain name was registered and is being used in bad faith.
The Respondent’s use of the subject domain name resolves to a webpage that is a basic list of commercial links intended to divert Complainant’s “www.go.” web traffic for commercial gain.
Respondent has engaged in a pattern of registering domain names to prevent trademark owners from reflecting their respective marks in a corresponding domain name, and has done so with the subject domain name. (See the decision in Disney Enterprises, Inc. v. PX Publishing Ltd., National Arbitration Forum, Case No. FA506604 and Thomas Cooke UK Limited v. PX Publishing Ltd., Nominet, DRS 02568).
The Respondent’s selection of the subject domain name was based upon the popularity and significant web traffic to Complainant’s “www.go.” website.
The Respondent’s business name identifies the Respondent as a publishing venture and thus, at some level, Respondent is Complainant’s competitor.
The Respondent is known as a publisher of adult-oriented sexual content. If the Respondent were to associate the subject domain name with any of its adult-oriented websites, Complainant’s business and its substantial and valuable goodwill as a publisher of elementary, high school and higher educational materials, would be severely tarnished.
The subject domain name currently resolves to a webpage that has no connection with “gohrw” or “hrw” or any other combination of these letters. Respondent is merely using the subject domain name to resolve to a generic webpage of sponsored links to a variety of other commercial websites.
Considering the number of teachers and students who use “www.go.” which generates substantial web traffic – there is a compelling and obvious commercial reason for the Respondent to have selected as a domain name.
Finally, Complainant requests that the domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) The disputed 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 disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint and in accordance with paragraph 14(b), if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences therefrom as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In accordance with the above, in previous UDRP decisions in which a respondent failed to file a response, the panels have based their decisions upon the complainant’s assertions, evidence and inferences drawn from the respondent’s failure to reply (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064) since the respondent’s failure to dispute the allegations of the complainant permits the inferences that the complainant’s allegations are true. K�stritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.
Notwithstanding the above, the panel must not decide in the complainant’s favor solely given the respondent’s default. Cortefiel S.A. v. Miguel Garc�a Quintas, WIPO Case No. D2000-0140.
A. Identical or Confusingly Similar
Complainant has established common law rights in the trademark GO.HRW.COM & design, which has been used on Complainant’s webpage since 1999 for educational information services.
It is evident that Complainant’s trademark GO.HRW.COM & design is almost identical to the domain name .
It is therefore not necessary to determine whether there is a likelihood of confusion between the domain name and the Complainant’s other registered trademarks. The Panel finds that the Complainant has proved the first element required in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel understands that proving “a negative proposition can be particularly difficult” and agrees “that the burden on a complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain names lies most directly within the registrant’s knowledge” and that “once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.” The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.
The Complainant states that the Respondent has no rights or legitimate interests in the conflicting domain name since Respondent has neither been known by the domain name nor has it had any authorization from the Complainant to use “hrw” or “go hrw”. In addition, as explained in point “C” referred to below, Complainant proved that Respondent is not making a non-commercial or fair use of the domain name and that it is not using the domain name in connection with a bona fide offering of goods or services.
On the other hand, Respondent failed to file a Response and therefore it did not bring to these proceedings any element to show that the Respondent has rights or legitimate interests in the disputed domain name.
In view of the above, and in accordance with the paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Complainant has proved the second element required in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Complainant is the owner of the common law trademark GO.HRW.COM & design and has been using the domain name since 1999.
The Panel finds that Respondent’s choice of the domain name was not a mere coincidence. As a publishing company, Respondent knew or should have known of Complainant’s long-standing activity in the publishing field.
Furthermore, as shown in the printouts of Respondent’s website, Respondent clearly uses “Go Hrw” in the main headline of the website. Moreover, there is nothing on the website which could serve to justify such use since it only lists commercial links under the headlines of “Travel”, “Health and Beauty”, “Computers”, “Legal Help”, “Financial Planning”, “Health Products”, “Professional Services”, “Online Store”, etc.
These reasons show that Respondent certainly chose the domain name with the intention to divert Complainant’s web traffic to its website with commercial intentions.
On the other hand, Respondent neither filed a reply nor any evidence to explain why it chose “gohrw” for its domain name.
The fact that two prior panels have ordered the transfer of the domain names and registered by the Respondent (Disney Enterprises, Inc. v. PX Publishing Ltd., National Arbitration Forum Case No. FA506604 and Thomas Cooke UK Limited v. PX Publishing Ltd., Nominet, DRS 02568) shows that this is not the first time in which Respondent has engaged in an abusive conduct, which reinforces the idea that the Respondent has once again acted in bad faith.
The Panel finds that the reasons set out above constitute sufficient evidence that the Respondent registered and uses the disputed domain name with the intention of attracting for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion.
Therefore, and in accordance with paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, the Panel finds that the Respondent has registered and used the domain name in bad faith.
Consequently, the Complainant has proved the third element required in paragraph 4(a) 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 be transferred to the Complainant.
Miguel B. O’Farrell
Sole Panelist
Date: November�30,�2005
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