WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION HM Publishers Holdings Limited v. James Farey Case No. D2009-0365 1. The Parties
The Complainant is HM Publishers Holdings Limited of Hampshire, United Kingdom of Great Britain and Northern Ireland, represented by Graham Watt & Co LLP, United Kingdom.
The Respondent is James Farey of United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2009. On March 20, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 20, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 March 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2009. There was an email filed with the Center by the Respondent on March 26, 2009. Other than that, as will be apparent from this Decision, no Response has been filed by the Respondent.
The Center appointed David Perkins as the sole panelist in this matter on April 28, 2009. 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 4.A. The Complainant
4.A.1 The Complainant is part of the MacMillan Group of publishing companies, the origins of which date back to 1843. The Group is one of the largest and best known publishers in the world, operating in over 70 countries.
4.A.2 The Complainant publishes NATURE magazine, which is the world's foremost weekly scientific magazine. It was launched in 1869. NATURE magazine is available both on paper and electronically/online.
4.A.3 The Complainant is the owner of the following registered trademarks for NATURE.
Country Reg. No. Mark Class(es)
Date of Application and Registration
United Kingdom
2,018,699
NATURE
9
Filed: April 25, 1995
Registered: June 13, 1997
United Kingdom
957,443
NATURE
16
Filed: March 31, 1970
United Kingdom
2,221,528
NATURE
41
Filed: February 7, 2000
Registered: April 19, 2002
United Kingdom
2,312,473
NATURE
42
Filed: October 7, 2002
Registered: March 7, 2003
European Community CTM
E66,100
NATURE
9, 16 and 41
Filed: April 1, 1996
Registered: May 7, 2001
European Community CTM
E1,495,142
NATURE
9 and 41
Filed: February 7, 2000
Registered: July 10, 2003
European Community CTM
E2,878,981
NATURE
40 and 42
Filed: October 4, 2002
Registered: January 20, 2004
United States of America
3,188,408
NATURE
9, 41 and 42
Filed: August 27, 1997
Registered: December 26, 2006
United States of America
1,129,966
NATURE
16
Filed: July 6, 1978
Registered: January 29, 1980
First used in commerce 1869 4.B. The Respondent
4.B.1 The Respondent registered the disputed domain name on September 3, 2008.
4.B.2 The disputed domain name resolves to a website at which offers membership to weekly 40 page online magazines relating to (1) Marine fish, (2) Tropical fish and (3) Wildlife.
4.B.3 In response to the Complainant's cease and desist letter, the Respondent answered by email on January 5, 2009:
“Hi there, no problem, I was only using it as a cover for paypal to allow me to accept payments.
I will take all files from the website and it will be blank.
If anyone is interested in the domain name let me know”
In answer, the Complainant offered to pay the Respondent £200.00 in consideration for transfer of the disputed domain name.
4.B.4 In response the Respondent answered by email dated February 4, 2009 in the following terms:
“Hi there, my apologies for this. I did remove it from my server control panel but for some reason it is still active. I have hundred of domains so keeping tabs on them is a lot of work. I have emailed my hosts so I will get this sorted out asap.
I'm afraid I have already had a few offers for the domain, the current highest offer is £600.
Thanks for your email and my apologies again.” 5. Parties' Contentions 5.A. Complainant Identical or Confusingly Similar
5.A.1 The Complainant points to its rights in the registered NATURE trademark. Those listed in paragraph 4.A.3 above are not exhaustive of its worldwide registrations of the NATURE trademark.
5.A.2 The Complainant also relies on its goodwill and reputation in the NATURE trademark.
5.A.3 The Complainant points to the fact that the disputed domain name contains that trademark in its entirety, followed by the descriptor “magazinesonline”. Given its business (as described in paragraph 4.A.2 above), the Complainant says it is likely that an Internet user would search NATURE, “magazines” and “online” to find the electronic/online version of its NATURE magazine. In the circumstances, the Complainant says that the disputed domain name is confusingly similar to the NATURE trademark. Rights or Legitimate Interests
5.A.4 The Complainant says that there is no evidence to indicate that the Respondent can demonstrate any of the circumstances set out in paragraph 4(c) of the Policy.
5.A.5 In particular, the Complainant points to the use being made of the disputed domain name (paragraph 4.B.2 above) and to the Respondent's statements made in his emails of January 5 and February 4, 2009 (respectively, paragraphs 4.B.3 and 4.B.4 above), both as indicate of a lack of rights or legitimate interests in the disputed domain name. Registered and Used in bad Faith
5.A.6 In the light of the use being made of the disputed domain name and the Respondent's statements in his said emails, the Complainant asserts that the circumstances set out in paragraphs 4(b)(i), (iii) and (iv) of the Policy apply. 5.B. Respondent
5.B.1 Other than the Respondent's two emails from which extracts are set out in paragraphs 4.B.3 and 4.B.4 above, the only communication from the Respondent has been an email to the Center dated March 26, 2009. That email was sent in reply to the Center's notification to the Respondent of the same date: see, paragraph 3 above. That email reads as follows:
“Can I just sell this domain to you? I do not want the hassle and will not be paying any legal fees.”
5.B.2 Other than that email, no Response has been received. 6. Discussion and findings
6.1 Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant has established that it has trademark rights in the mark NATURE.
6.6 The disputed domain name incorporates that trademark in its entirety and addition of the suffix “magazinesonline” only serves, in the Panel's opinion, to add to the likelihood of that domain name being confusingly similar to the Complainant's NATURE trademark.
6.7 Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.8 There is no pretence by the Respondent to assert rights or legitimate interest in respect of the disputed domain name. Further, the use to which it has been put (see, paragraph 4.B.2 above) and the Respondent's readiness to discontinue that use (see, paragraphs 4.B.3 and 4 above) also indicates lack of rights or legitimate interests.
6.9 Additionally, there is no evidence that any of the circumstances set out paragraph 4(c) of the Policy could apply on the facts of this case.
6.10 Accordingly, the Complaint meets requirement of paragraph 4(a)(ii) of the Policy. Registered and Used in bad Faith
6.11 Again, the Respondent does not deny the allegations in the Complaint of registration and use in bad faith.
6.12 On the evidence in the Complaint, the Panel finds that the Respondent's actual use of the disputed domain name falls squarely within paragraph 4(b)(iv) of the Policy.
6.13 Accordingly, the Complaint satisfies the two requirements of paragraph 4(a)(iii) 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.
David Perkins
Sole Panelist
Dated: May 4, 2009
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