The Complainant is World Book, Inc. of Chicago, Illinois, United States of America (“United States”), represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Peter Deng, Africa World Books Pty Ltd of Osborne Park, Western Australia, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2019. On January 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 8, 2019, 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 January 9, 2019, 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 January 10, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2019. The Respondent did not submit a formal response. The Center received informal communication from the Respondent on January 12 and 23, 2019, as well as three communications between March 8 to 13, 2019. The proceeding was suspended on February 5, 2019, pursuant to the Rules, paragraph 17. Upon the Complainant’s request, the proceeding was reinstituted on March 8, 2019, at which time the Parties were informed the Center would proceed to panel appointment.
The Center appointed Nick J. Gardner as the sole panelist in this matter on March 19, 2019. 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 relevant facts are straightforward and can be summarized as follows:
The Complainant is a publisher of children’s encyclopedias and educational books. Its history dates back to 1917 when it published the first edition of The World Book Encyclopedia in the United States.
The Complainant is the registrant of various trademarks for the term “World Book” (the “World Book trademark”) including for example Australian trademark 171419 with a priority date of January 3, 1962.
The Disputed Domain Name was registered by the Respondent on April 9, 2018. The evidence filed with the Complaint shows that it used to resolve to a website offering books (generally related to Africa in some way) for sale (see further below). At the time of this decision the Disputed Domain Name no longer resolves to an active website but what appears to be the same website can now be found linked to the domain name (i.e., the Disputed Domain Name but in plural). 5. Parties’ Contentions A. Complainant
The Complainant says that the Disputed Domain Name is confusingly similar to the World Book trademark in that it simply adds the generic geographical term “Africa”.
The Complainant says that the Respondent has no rights or legitimate interests in the term “World Book”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. Its case in this regard is summarised as follows: (i) the World Book Marks have a strong reputation and are widely known and famous; (ii) the Respondent had constructive, and potentially actual, notice of World Book's prior rights in the World Book trademarks when it registered the Disputed Domain Name; (iii) the Respondent is using the Disputed Domain Name to direct consumers to its own business; and (vi) there exist no plausible or contemplated use of the Disputed Domain Name by the Respondent that would be legitimate or lawful. B. Respondent
No Response has been filed. However on January 12, 2019, the Respondent sent an email to the Center which stated “It came to my attention my domain is being disputed and I don,t [sic] know this happened and when I purchased this through Godaddy the domain was available to the public. There is much reason as for why I have chosen the above site. My business is Africa World Books I was purchasing whatever was available so please tell me why and who will refund the money I paid?”
Subsequent communications received from the Respondent appear to indicate that he no longer uses the Disputed Domain Name and has relocated his web site by linking it to the domain name and has no interest in this proceeding – thus for example on March 13, 2019 his email stated “I am still wondering and wander around trying to tell you that this domain is no longer in used [sic] Please contact Godaddy”. 6. Discussion and Findings
Preliminary Matters
The Panel notes that no formal Response has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Moreover, the Respondent communicated with the Complainant and the Center. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any formal Response. While the Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“Registration Private, Domains By Proxy, LLC”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Peter Deng, Africa World Books Pty Ltd and references to “the Respondent” are to that person.
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has rights in the World Book trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. It simply adds the geographic term “Africa”. The Panel agrees in this regard with the approach set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) namely:
“1.8 Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark?
Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third element”.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
In view of the Panel’s finding under Section C below this issue does not need to be determined. C. Registered and Used in Bad Faith
As noted in WIPO Overview 3.0 (Paragraph 3.1), bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. The Panel considers that the Complainant’s case in this regard turns upon its assertion that the Respondent had knowledge of the Complainant or its World Book trademark. The Panel does not regard the Complainant’s case as satisfactory in this regard. The Complaint alleges as follows:
“The World Book Marks have become well-known and recognized as identifications of high-quality, accurate, and reliable encyclopedias and books, and World Book’s current and prospective customers use the Internet to search for World Book’s products, including through World Book’s domain name, .
As a result of World Book’s century-old history, extensive sales, marketing efforts, and the success of the underlying products, the World Book Marks have become famous and represent an exceedingly valuable goodwill associated with and owned by World Book”.
However no evidence has been produced to corroborate these statements so the Panel has no evidence or knowledge as to what the claimed “extensive sales” and “marketing efforts” comprise, either in Australia where the Respondent is based, or indeed anywhere else. The Panel has visited the Complainant’s website and notes that its lead product is a publication called The World Book Encyclopedia, which seems to be published in annual editions and which it describes as follows:
“The World Book Encyclopedia, 2019, is a general A-Z look-up source in 22 hard-cover volumes full of accurate and trustworthy facts. Whether you are proving a point during a dinner-table discussion or checking a fact for a homework assignment, answers are here! Tens of thousands of index entries make it easy for you to find information wherever it is in the set. Abundant colorful photos, diagrams, charts, tables, and maps supplement the easy-to-read text. Along with the 17,000 articles is useful advice about studying and report writing for elementary through intermediate grades students”. It is listed for sale at USD 999.
It s clear from the Complainant’s website that it sells its products directly to end purchasers. There is no evidence before the Panel as to whether it also sells its products through dealers or distributors. The Complainant’s website appears to be directed to customers based in the United States or Canada (it contains a statement about shipping policy which states “International Shipping Policy
We currently do not ship outside the U.S. and Canada”). Accordingly the Panel has no knowledge as to whether the Complainant sells its product in Australia at all.
More generally the Panel also has no idea what sales the Complainant achieves. Its World Book encyclopedia is clearly an impressive product costing approximately USD 1,000. The Panel would have thought it likely (but does not know) that customers would be educational establishments and/or libraries as opposed to private individuals, but the Panel simply has no basis for knowing how many sales the Complainant makes to whoever its customers are. The Panel also has no knowledge (beyond the contents of the Complainant’s website) as to what it actually does in terms of advertising and marketing
The Panel notes that the terms “world” and “book” are each dictionary words. Given the lack of evidence about the Complaint’s sales and marketing (either in general or in Australia in particular) it seems entirely possible the Respondent could have independently chosen the words “world” and “book” as part of the Disputed Domain Name. The context in which he has used these words seems to the Panel to represent a natural use of those words for his business of selling books about Africa.
However, the difficulty facing the Panel in the present case is that the Respondent has simply not explained one way or another what his state of knowledge was when he chose the Disputed Domain Name. Faced with the Complaint he appears to have simply abandoned use of the Disputed Domain Name and instead is now using (plural) to link to his website. That domain name corresponds more closely to the name of his company – Africa World Books Pty Limited. Normally the Panel would regard silence by a respondent as to his state of knowledge as a likely determinative factor. However, the Panel is not sure that this is the correct approach here. The emails received from the Respondent would seem to indicate that his approach is relatively unsophisticated and appears to be without the benefit of legal advice.
The Panel therefore has to proceed without knowing what the Respondent has to say about this issue. The content of the Respondent’s website does not in the Panel’s opinion lead to any inferences that the Respondent acted with knowledge of the Complainant or its World Book trademark or was otherwise acting in bad faith. It does not have any indication that it is seeking to imitate the Complainant’s website or to create any confusion. It appears to be a typical website one would expect to see for an online seller of books. The website describes itself as “The home of books by authors of African Descent” and offers a range of individual books about Africa which seem typically to be priced at around AUD 20 (a typical example being “The Politics of Ethnicity and Governance in South Sudan. Understanding the Complexity of the World’s Newest Country” by John Adoor Deng). The Panel does not think it likely that any actual confusion between the Complainant and the Respondent will arise, and no evidence of any such confusion has been provided. The Panel also notes that the Complainant does not publish any titles in the form [Geographical Name] Word Book. Overall, given that (i) “world” and “book” are each ordinary dictionary words and are used by the Respondent in a manner consistent with their dictionary meaning; and (ii) there is no evidence before the Panel as to the Complainant’s fame and reputation in the term World Book; therefore the Panel concludes that these facts do not support a finding that the Respondent had actual knowledge of the Complainant when he chose to register the Disputed Domain Name
The question then arises as to whether the Respondent should be fixed with constructive notice of the Complainant’s rights?
So far as constructive knowledge is concerned WIPO Overview 3.0 provides as follows:
“3.2.2 ‘Knew or should have known’
Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.
On the other hand, where the complainant’s mark is not inherently distinctive and it also corresponds to a dictionary term or is otherwise inherently attractive as a domain name (e.g., it is a short combination of letters), if a respondent can credibly show that the complainant’s mark has a limited reputation and is not known or accessible in the respondent’s location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant’s mark. Particularly noting the Internet’s borderless nature, a sweeping respondent disclaimer of knowledge based as such on its (deemed) presence in a particular location different from the location(s) in which the complainant’s goods or services are accessible may be seen by panels as lacking in credibility or relevance. In this respect, it is noted that the business of cybersquatting often seeks to exploit the global reach of the Internet, and may in fact purposefully target a location other than that in which the respondent may be present.
In limited circumstances – notably where the parties are both located in the United States and the complainant has obtained a federal trademark registration pre-dating the relevant domain name registration – panels have been prepared to apply the concept of constructive notice. Application of this concept may depend in part on the complainant’s reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant’s mark”.
It is not straightforward to apply these principles to the facts in the present case particularly given that the Respondent has not explained to the Panel what he says his knowledge actually was or why he chose the Disputed Domain Name. As discussed above there is no corroborating evidence before the Panel supporting the Complainant’s claim that its trademark is widely known. The Respondent is not a domainer and appears relatively unsophisticated, and the Complainant’s trademark comprises two dictionary words. On the other hand, the Complainant has a registered trade mark in Australia and had the Respondent carried out any basic searches involving the words “world” and “book” together it seems likely he would have discovered the existence of the Complainant. However had he done so it seems to the Panel, given the content of the Complainant’s website (see above), he might reasonably have concluded the Complainant’s activities were confined to the United States and Canada. Weighing all these factors up the Panel has concluded that the Complainant has failed to carry the burden of proof that it has to establish. The Panel does not consider that the doctrine of constructive knowledge should apply in relation to two ordinary dictionary words which are not inherently distinctive and where there is no evidence as to any sales or reputation the World Book trademark enjoys in Australia, and where the Complainant’s website indicates it only ships to the United States and Canada
Accordingly the Panel does not consider the filed evidence is such as to establish a presumption that the Respondent had either actual or constructive knowledge of the Complainant or its World Book trademark.
Additionally the Panel concludes that there is no evidence the Disputed Domain Name is being used in bad faith. A fair comparison between the Respondent’s website and that of the Complaint does not show any intention by the Respondent to trade off the Complainant’s reputation or to confuse customers. Further the Respondent’s product range (namely books concerning Africa priced at around AUD 20) does not compete with the Complaint’s product range of high-end encyclopedias. The Panel cannot conceive that any consumers are likely to be confused or that the Complainant will lose any sales or suffer any harm to its business as a result of the Respondent’s activities
As a result the Panel declines to finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Consent to Transfer
Whilst the Panel finds for the reasons set out above that the Complaint has failed to establish the elements necessary to succeed in accordance with paragraph 4(a) of the Policy, the Panel nevertheless reaches the conclusion based on the correspondence from the Respondent that he consents to the transfer of the Disputed Domain Name to the Complainant. Specifically on January 23, 2019 he wrote to the Center “I want to inform you that Africa World Books Pty Ltd has decided to release this domain www. as suggested we have amended our field to suit the business as mentioned earlier. Dispute team at Godaddy has been informing to unlock the disputed. However, they want to email from your esteem team”.
And on March 9, 2019 he stated that “I don,t owned this domain anymore please let me know what to tell GoDaddy”.
The Panel therefore adopts the approach set out in WIPO Overview 3.0, section 4.10 as follows:
“How do panels handle cases involving a respondent’s informal or unilateral consent for the transfer of the domain name to the complainant outside the ‘standard settlement process’ described above?
Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the ‘standard settlement process’ described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis)”.
See for example Infonxx.Inc v. Lou Kerner, WildS, WIPO Case No. D2008-0434, where the Panel stated as follows:
“However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an order for transfer without consideration of the paragraph 4(a) elements. As was noted by the Panel in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132, when the Complainant seeks the transfer of the disputed domain name, and the Respondent consents to transfer, the Panel may proceed immediately to make an order for transfer pursuant to paragraph 10 of the Rules. Accordingly, and in light of the parties’ stipulations set forth above, the Panel will order the transfer of the disputed domain name to the Complainant. This is clearly the most expeditious course. Id.; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207”.
Applying these principles too this case the Panel considers it appropriate to order that the Disputed Domain Name be transferred to the Complainant. 8. Any Further Complaint
As noted above it appears that when faced with this Complaint the Respondent abandoned use of the Disputed Domain Name and instead adopted (plural). The Panel is mindful that the Complainant may well decide to bring a further complaint against the Respondent in relation to his new domain name where it would likely argue that the Respondent was fixed with actual knowledge of the Complainant’s rights as a result of the present Complaint; although perhaps unusual to record in a decision, the Panel would respectfully urge caution on the Complainant’s part before considering whether to do so. The determination of any such complaint will be for the appointed panel but it seems likely that amongst other factors the provisions of paragraph 4(c)(ii) of the Policy may be relevant, as would the present decision. The Panel respectfully suggests that in those circumstances the Respondent seeks appropriate legal advice. 9 Decision
For the reasons set out in section 7 above and pursuant to paragraph 10 of the Rules the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: April 9, 2019
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