WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION HarperCollins Publisher Ltd. v. Digi Real Estate Foundation Case No. D2009-0565 1. The Parties
The Complainant is HarperCollins Publisher Ltd. of London, United Kingdom of Great Britain and Northern Ireland, represented by Arthur Heard, United Kingdom.
The Respondent is Digi Real Estate Foundation of Panama City, Panama. 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 April 29, 2009. On April 30, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On May 1, 2009, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on May 7, 2009. The Center verified that 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 Amended Complaint, and the proceedings commenced on May 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2009.
The Center appointed William F. Hamilton as the sole panelist in this matter on June 10, 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
The Complainant is the owner of a number of registered COLLINS trademarks which are associated with the Complainant's publishing business. A sample of the Complainant's registrations are presented in the below matrix.
Territory
Registration Number
Mark
Status
Classes
Application/Filing Date (Registration date)
UK
1520238
HarperCollins
Registered
09
01 December 1992 ( Registered 10 May 1996)
UK
1364347
COLLINS
Registered
09, 16
09 November 1988 (Registered 12 April 1991)
CTM
000346536
COLLINS
Registered
09, 16
17 July 1996 (Registered 05 February 1999)
CTM
0003936663
Status
09, 16, 41
08 July 2004 (Registered 16 February 2006)
CTM
0006701866
COLLINS
Registered
09,35,41
27 February 2008
USA
1648817
COLLINS
Registered
IC 16. US 002, 005, 022, 023, 029, 037, 038 and 050
10 April 1990 (Registered 25 June 1991)
USA
2134377
COLLINS GEM
Registered
IC 16. US 002, 005, 022, 023, 029, 037, 038 and 050
13 February 1997 (Registered 3 February 1998)
USA
2294109
COLLINS
Registered
IC 16. US 002, 005, 022, 023, 029, 037, 038 and 050
27 March 1998 (Registered 23 November 1999)
USA
3204631
Registered
IC 16. US 002, 005, 022, 023, 029, 037, 038 and 050
24 August 2005 (Registered 30 January 2007)
USA
3204632
Registered
IC 041. US 100, 101 and 107
24 August 2005 (Registered 30 January 2007)
The disputed domain name was registered on July 31, 2006. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its COLLINS trademark because the COLLINS mark is used in the disputed domain name its entirety and the term “dictionary” is a generic word. The Complainant asserts the Respondent lacks any rights or legitimate interests in the disputed domain name. the Complainant contends the Respondent is a serial cybersquatter and that the disputed domain name was registered in bad faith to attract Internet users to the Respondent's landing page which features links to dictionary related websites and services in competition with Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant carries the burden of proof by a preponderance of evidence. (Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc.,WIPO Case No. D2003-0185) A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's widely known trademark for dictionary and related products and services. The mere addition of the generic word “dictionary” to the Complainant's mark is not sufficient to dispel confusion and actually enhances confusion because the added word describes the Complainant's core product and services. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by a respondent, shall be evidence of a respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to respondent, respondent's use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services; or
(ii) respondent has been commonly known by the disputed domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant asserts that the Respondent is not a past or present licensee and Complainant has no business or other relationship to the Respondent. The Respondent appears never to have conducted a bona fide business under the disputed domain name or COLLINS mark nor does it appear that the Respondent been commonly known by the dispute domain name or the COLLINS mark. The use of the disputed domain name is clearly commercial in nature.
The Respondent has failed to address the Complainant's prima facie showing. Accordingly, the Panel determines that the Respondent does not possess any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line locations, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or locations or of a product.
The COLLINS mark is widely known with respect to dictionary related products and services. The COLLINS trademark was in use and duly registered by the Complainant many years before the COLLINS mark was incorporated into the disputed domain name. The disputed domain name resolves to a landing page offering products which compete with the Complainant's products and services. The addition use of the generic word “dictionary” to the Complainant's mark in the disputed domain name is further evidence of the Respondent's intention to confuse and attract Internet users. The Panel accordingly finds the disputed domain name was registered and is being used in bad faith to attract Internet users to the Respondent's website for commercial gain. 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.
William F. Hamilton
Sole Panelist
Dated: June 24, 2007
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