The Complainant is McGraw-Hill Global Education Holdings LLC of New York, New York, United States of America (the “USA”), represented by Leason Ellis, USA.
The Respondent is P of Queensland, Australia/ ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2013. On November 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2013, the Registrar 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 8, 2013 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 15, 2013.
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 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2013.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on December 18, 2013. 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 an American corporation which offers a wide variety of services, including educational software, online and digital media education services, and especially textbook and other book publishing.
The Complainant has several registered trademarks composed of the terms “MCGRAW HILL CONNECT”.
The Complainant owns in particular the following trademarks:
- MCGRAW-HILL CONNECT, U.S. Federal Trademark Registration No. 3988680 registered on July 5, 2011 in classes 38 and 41;
- MCGRAW HILL EDUCATION CONNECT, Australia, Registration No. 1157240 published on August 15, 2013;
- MCGRAW HILL CONNECT (&design), Australia, Registration No. 1378682 registered on August 19, 2010 in classes 38 and 41;
- MCGRAW HILL CONNECT, Australia, Registration No. 1378683 registered on August 19, 2010 in classes 38 and 41.
The Respondent registered the disputed domain name on August 31, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is substantively identical to and confusingly similar with the MCGRAW HILL CONNECT trademark in which the Complainant has rights, and continues to have rights. It claims that the only differences are that the words “connect” and “Mcgrawhill” are in reverse, that the “Mgrawhill” term lacks the “c” present in “Mcgraw” and the non-substantive addition of “.com”. For the Complainant, the fact that the disputed domain name substantially incorporates its trademark is sufficient to establish confusing similarly under the Policy.
Moreover, the Complainant argues that the Respondent does not have a legitimate interest or right in the disputed domain name. The Respondent is not and has never been a representative or licensee of the Complainant nor is the Respondent authorized by the Complainant to use the mark MCGRAW-HILL CONNECT in a domain name.
Furthermore, the Complainant contends that the Respondent registered and used the disputed domain name in bad faith because:
- the Respondent has chosen to omit the “c” of “Mcgraw” resulting in “Mgraw”, and it is likely the result of a deliberate attempt to attract Internet users who would make a common error in typing looking for the Complainant’s website and to make commercial gain;
- the Respondent is passively holding the disputed domain name, which serves as a landing page for click-through revenue, diverting Internet users to third party websites;
- the Respondent is using the Complainant’s trademark to try to purchase the disputed domain name;
- the Respondent has used a privacy service to hide its identifying information in order to avoid legal proceedings;
- the Respondent has exhibited a pattern of registering domain names that are identical or confusingly similar to other famous marks.
The Complainant therefore requests from the Panel appointed in the administrative proceeding that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant is the owner of, and has rights to, the several trademarks MCGRAW HILL CONNECT.
The only differences between the disputed domain name and the Complainant’s trademarks are that the words “connect” an “Mgrawhill” are in reverse and that the domain name lacks the “c” present in the trademark MCGRAWHILL. These differences do not prevent the disputed domain name from being confusingly similar to the Complainant’s trademarks.
As already established by prior UDRP panels, the fact that the disputed domain name substantially incorporates the Complainant’s marks is sufficient to establish confusing similarity under the Policy (see e.g. Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd.) v. Arthur Wrangle,WIPO Case No. D2005-1105).
Furthermore, the omission of the letter “c” of “Mcgraw” resulting in “Mgraw” is certainly a deliberate attempt to attract Internet users who would make a common error in typing looking for the Complainant’s website (see e.g. Société Nationale des Chemins de Fer Français v. Miguel Casajuna,WIPO Case No. D2008-1593).
This is a practice known as “typosquatting”, and which has been regularly condemned by UDRP panels (see EnBW Energie Baden-Württemberg AG v. Kim Bum / PrivacyP,WIPO Case No. D2013-1036).
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy outlines circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
In line with prior UDRP WIPO panel decisions, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to have the burden of production shift to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Complainant has indeed made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. This finding is based on the non-disputed circumstances brought forward by the Complainant that the Complainant never gave the Respondent any permission or authorization to use the MCGRAW HILL CONNECT trademark as part of a domain name or in any other way (see e.g. Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
In this case, the Respondent did not reply to the Complainant’s contentions and thus has provided no evidence of circumstances specified in paragraph 4(c) of the Policy, nor any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.
In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy outlines circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. These circumstances are:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent have engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s 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 respondent’s website or location or of a product or service on respondent’s web site or location.
The Respondent’s choice of a domain name confusingly similar to Complainant’s trademark is a strong evidence of bad faith. The Panel finds that the Respondent deliberately imitated the Complainant’s MCGRAW HILL CONNECT trademark in its domain name to create confusion and attract Internet users to its website for commercial gain (see e.g. Société Nationale des Chemins de Fer Français – SNCF v. Damian Miller / Miller Inc.,WIPO Case No. D2009-0891).
This Panel further notes that the Respondent has engaged in a pattern of registering trademarks of third parties, preventing them from registering their marks in domain names.
Moreover, a notice on the website at the domain name states: “The domain is for sale! To purchase, call at […] or click here to BUY NOW!”. This also gives rise to the likelihood that the Respondent registered it for the purpose of selling the disputed domain name for valuable consideration (see e.g. Société Nationale des Chemins de Fer Français v. Miguel Casajuna, supra).
Therefore, the Panel concludes that the Respondent registered the disputed domain name in bad faith.
As to the use of the disputed domain name, a landing page showing sponsored links to products of various third party websites, among which some are in connection with the services offered by the Complainant, constitutes an improper use of the Complainant’s trademarks and is evidence of the Respondent’s bad faith use (see e.g. Micro Electronics, Inc. v. J Lee,WIPO Case No. D2005-0170). Using this domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks, is another evidence of bad faith use (see e.g. L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623).
Therefore, based upon the statements and documents submitted by the Complainant and in accordance with the Policy, the Panel considers that the disputed domain name was registered and is used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Date: December 30, 2013
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