WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Perseus Basic Books LLC v. Marco Facchiano / Green Marketing Inc. Case No. D2008-1698 1. The Parties
The Complainant is Perseus Basic Books LLC, of New York, New York, United States of America, represented by Arnold & Porter, United States of America.
The Respondents are Marco Facchiano / Green Marketing Inc., of San Francisco, California, United States of America. 2. The Domain Name and Registrar
The disputed Domain Name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2008. On November 7, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On November 7, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 11, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 14, 2008. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 12, 2008.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 18, 2008. 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 a New York limited liability company with its principal place of business in New York City. The Complainant is a publisher, producing books and other publications of general interest, as well as trade, academic, and professional books. For more than 50 years, the Complainant has labeled its publications with a BASIC BOOKS mark.
The Complainant holds United States of America Trademark Registration No. 1280717 for the standard-character mark BASIC BOOKS. This mark was registered on June 5, 1984, claiming first use in commerce on June 23, 1952. The Complainant also holds United States of America Trademark Registration No. 2335398 for a design mark incorporating the words BASIC BOOKS and a stylized capital letter “B”. This mark was registered on March 28, 2000, claiming first use in commerce on June 1, 1998. That mark appears on the Complainant's website at “”, to which the Complainant's domain name redirects Internet users.
The Domain Name was registered on June 13, 2008, apparently using a domain privacy service. “Domain Administrator” was listed as the registrant, with a postal address associated with the Registrar. Two days after Complainant's counsel emailed the initial UDRP WIPO complaint to the registrant, the WhoIs database was updated to show registration in the name of “Marco, Facchiano”, with “Green Marketing Inc.” listed on the second line and a postal address in San Francisco. The Complaint was amended accordingly.
As no Response was submitted, it is not known whether the registration was intended to be in the name of the individual or a corporation; hence, both “Green Marketing Inc.” and “Marco Facchiano” (the more likely form of the name, despite the oddly placed comma in the WhoIs database, since “Facchiano” is normally a family name) are named as Respondents in this proceeding. The Panel notes that no corporation by the name of “Green Marketing Inc.” is listed in the online database of corporations registered to do business in California, and it is possible that “Green Marketing Inc.” is merely a fictitious name or alter ego for the individual “Marco Facchiano”.
The Domain Name resolves to an English-language advertising portal with third-party advertising links, most of them having to do with categories of books and media offered by retailers in the United States of America. At least some of these compete directly with the Complainant's offerings. There are links as well to the websites of online booksellers A and Barnes&Noble, and to the eBay online auction website, advertising discount coupons for purchases on these websites. A copyright notice at the bottom of the landing page associated with the Domain Name meaninglessly claims copyright in the name of the Domain Name itself. There is no information on the landing page, or on pages linked from the landing page, concerning the party operating the advertising portal. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Domain Name is confusingly similar to its registered BASIC BOOKS trademark, and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant contends that the Respondent had constructive notice of the registered trademark and probably actual notice as well. The Complainant infers that the Domain Name was registered and used in a bad-faith attempt to confuse Internet users as to source or affiliation, for commercial gain. The Complainant argues that the Respondent's use of a domain privacy service further suggests a bad-faith attempt to evade responsibility for trademark infringement. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the 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 Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
The Complainant holds a trademark registration for the BASIC BOOKS mark, which the Domain Name incorporates in its entirety.
The addition of the generic abbreviation “inc”, which signifies a corporation in the United States of America, does not avoid confusing similarity with the Complainant's mark. Indeed, an Internet user might well believe that the mark BASIC BOOKS is based on a company name and so find the “inc” portion of the Domain Name unexceptional.
The Panel finds that the generic letters “inc” are not distinctive and that the Domain Name is confusingly similar to the Complainant's mark for purposes of the first element of the UDRP Complaint. B. Rights or Legitimate Interests
The Respondent has not claimed a relationship with the Complainant or disputed the Complainant's assertion that it has not authorized the Respondent to use its BASIC BOOKS mark. This establishes the Complainant's prima facie case on the second element of the Complaint, and the burden shifts to the Respondent to produce evidence of its rights or legitimate interests under paragraph 4(c) of the Policy. See Admiral Insurance Services Limited v. Mr. Adam Dicker,WIPO Case No. D2005-0241; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753. The Respondent has not done so.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has not come forward with a Response in this proceeding, and there is no indication in the record, or from a perusal of the website associated with the Domain Name, that the Domain Name corresponds to a name identified with the Respondent or that it was used for noncommercial purposes.
The use of the Domain Name for an advertising portal, presumably to generate pay-per-click advertising revenues, could arguably represent a legitimate interest in connection with a bona fide offering of goods or services, particularly where the Domain Name is comprised largely of dictionary English words. This would not reflect a bona fide commercial offering, however, if the evidence established that the Respondent more likely than not selected the Domain Name for its trademark rather than generic value, in a bad-faith effort to mislead Internet users and trade on the reputation of the Complainant's mark. That issue is better addressed below, in analyzing the bad-faith element of the Complaint. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy lists the following as an instance of bad faith:
“circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 respondent's website or location or of a product or service on its website or location.”
It is probable that the advertising portal associated with the Domain Name was established for commercial gain, and the key question is whether the Respondent likely selected the Domain Name because of its potential for attracting consumers familiar with the BASIC BOOKS mark. This is somewhat problematic, because the mark is comprised of two dictionary words and the trademark registration itself expressly disclaims any exclusive right to use the word “books” alone.
The Complainant has not furnished abundant evidence to support its assertion that the BASIC BOOKS mark is “famous”, and most WIPO UDRP panels have declined to apply the principle of constructive notice to the bad-faith element of WIPO UDRP complaints. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 3.4. Generally, there can be no finding of bad faith under the Policy unless there is evidence from which it can be inferred that the Respondent had the Complainant's mark in contemplation and targeted that mark when it registered the Domain Name. See, e.g., Kooks Custom Headers, Inc. v. Global DNS, LLC,WIPO Case No. D2008-0233; Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827; ExecuJet Holdings Ltd. v. Air Alpha America, Inc.,WIPO Case No. D2002-0669.
However, the record does establish that the BASIC BOOKS mark is long-established and well known in the United States of America, where the Respondent is located. It has been used nationally for more than half a century. The Complainant has a significant online sales presence using the mark, and the leading results of search engine queries based on the mark refer to the Complainant. The Domain Name resolves to an advertising portal entirely focused on books and DVDs, in direct competition with the Complainant's offerings.
Moreover, the misleading addition of the abbreviation “inc” to the Domain Name, when there is an absence of evidence that the Respondent was involved in any corporation named “Basic Books”, shows that the Respondent was not employing the noun “books” and the descriptive adjective “basic” purely for their generic value. Rather, the Domain Name itself suggests that it is associated with a corporate website. Consumers familiar with the Complainant's well-established mark might well assume that the Domain Name is used by the owner of the mark, under the false impression that the mark reflects the name of the company that employs it.
It is possible, of course, that the Respondent was unaware of the Complainant's mark and did not select the Domain Name in bad faith. The Respondent has not come forward with an alternative explanation, however, and the form and use of the Domain Name suggest an intention to mislead consumers for commercial gain through a false association with a well-established mark, rather than an innocent use of dictionary words for related advertising.1 The Panel concludes, from the totality of the circumstances, that the Respondent more likely than not acted in bad faith in registering and using the Domain Name.
The Panel finds, therefore, that the second and third elements of the Complaint have been established. 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.
W. Scott Blackmer
Sole Panelist
Dated: January 16, 2009
1 The Complainant points as well to the Respondent's use of a domain privacy service as further evidence of bad faith. The Panel finds this fact inconclusive, because there are legitimate reasons for registrants to employ such a service, such as avoiding spam to email addresses automatically harvested from publicly available WhoIs databases.
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