The Complainant is Elsevier BV., the Netherlands, represented by Nelson Mullins Riley & Scarborough, LLP, United States of America.
The Respondent is Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua, Ukraine / Aleksandr Zvanskyi, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2019. On November 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 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 November 27, 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 December 2, 2019. The Center verified that the Complaint 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 December 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2019. The Response was filed with the Center on December 23, 2019. The Center appointed Assen Alexiev as the sole panelist in this matter on January 7, 2020. 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 global information analytics business, providing information analytics solutions and digital tools in the areas of strategic research management, research and development performance, clinical decision support and professional education. It employs 7,900 people and serves customers in nearly 180 countries. More than 25,000 academic and governmental institutions around the world use the Complainant’s products. Scopus is an abstract and citation database covering life sciences, social sciences, physical sciences and health sciences. It was launched by the Complainant in 2004, covers nearly 5,000 publishers, and has more than 75 million records, more than 24,600 active titles, and more than 194,000 books. The Complainant is the owner of the following trademark registrations for SCOPUS (the “SCOPUS trademark”): - the United States trademark SCOPUS with registration No. 2,952,563, registered on May 17, 2005 for services in International Class 42; - the Canadian trademark SCOPUS with registration No. TMA640758, registered on May 30, 2005 for goods and services in International Class 42; - the European Union trademark SCOPUS with registration No. 3052214, registered on October 1, 2004 for goods and services in International Classes 9 and 42; and - the trademark SCOPUS with registration No. 340475, registered in the Russian Federation on December 26, 2007 for goods and services in International Classes 9, 35, 41, and 42. The Complainant’s official website for the Scopus database is located at “www.scopus.com.” The disputed domain name was registered on November 12, 2014. It resolves to a website which advertises services for the publication of articles in journals included in the Web of Science and the Scopus databases. 5. Parties’ Contentions A. Complainant According to the Complainant, the disputed domain name is confusingly similar to the Complainant's SCOPUS trademark, as it incorporates it entirely, preceded by the element “wos”, which is an abbreviation for Web of Science-the name of Clarivate Analytics’ website that provides subscription-based access to multiple databases with comprehensive citation data for many different academic disciplines. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has not authorized the Respondent to use the SCOPUS trademark, which was registered ten years prior to registration of the disputed domain name by the Respondent, and the Respondent is not commonly known by the names “Scopus” or “Wos-Scopus”. The Complainant points out that the Respondent is using the disputed domain name for a website that offers scientific publishing services, which are related to the Complainant’s products and services. The Complainant stresses that the Respondent is not actually offering access to the Scopus abstract and citation database, and cannot offer any service directly related to publishing in the Scopus database, as it is not authorized to publish any materials in it. Content is placed into the Scopus database only by the Content Section & Advisory Board, whose primary function is to evaluate and determine which peer-reviewed serial titles to be accepted into the Scopus database, and it takes its decisions following a transparent and robust selection policy. It is therefore misleading or false to claim that the Respondent offers services for publication in the Scopus database. Rather, the Respondent’s services may only include publication services in the nature of auditing, editing, and translation services so that such content might be published in a journal that might also happen to be included in the Scopus database. The Complainant also points out that the Respondent’s website contains no disclaimer for the lack of relationship between the Parties. According to the Complainant, the Respondent thus attempts to capitalize on the reputation and goodwill associated with the SCOPUS trademark by attracting potential customers for the Respondent’s publishing-related services and misleading them as to the nature of these services. The Complainant contends that the disputed domain name was registered and is being used in bad faith primarily to disrupt the business of a competitor and to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s SCOPUS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, and to offer them products and services that are highly related to the Complainant’s products and services. According to the Complainant, the Respondent knew of the Complainant and of its SCOPUS trademark and specifically targeted the reputation and goodwill associated to it when registering the disputed domain name. The Complainant points out that the Respondent uses the SCOPUS and ELSEVIER trademarks in connection with false advertising to potential clients of an ability to publish the client’s content in the Complainant’s Scopus database. B. Respondent The Respondent maintains that the disputed domain name is significantly different from the SCOPUS trademark both graphically and phonetically, as the former contains the two elements “wos” and “scopus”, while the latter contains only the element “scopus”, and these elements sound differently. According to the Respondent, the disputed domain name has a specific meaning, where “wos” is an abbreviation of “Whole of Science”, and “scopus” is a Latin word that means “route to a goal that leads to happiness.” The Respondent maintains that it registered the disputed domain name because the mission of its company is to assist scientists and other people who want to publish their articles in scientific press, so it chose a domain name that describes this mission as “Everything about the sciences, and we are your way to the goal”. The Respondent explains that the legislation in force in Ukraine, Russia, and Kazakhstan requires that in order to obtain a scientific degree a person must have scientific publications in journals that are included in the Web of Science Core Collection or in Scopus. The Respondent states that it carries out a legitimate activity, which is to assists scientists and other persons in Russia, Ukraine, Kazakhstan, and Poland to publish their articles, teaches them how to write high quality documents and assists them for the publication of articles in relevant journals listed in Scopus, Web of Science, Google Scholar, AGRIS, ERIC, ERIH Plus. The Respondent’s business is not competitive to the Complainant’s business, but according to the Respondent instead popularizes the Complainant’s activities. The Respondent maintains that the disputed domain name is not intended to cause an association with the Complainant, because the Respondent’s website contains information about the Complainant and a link to its official website. The Respondent further notes that the SCOPUS trademark is registered for services in International Class 42, while the Respondent’s activities fall into International Classes 35 and 41. According to the Respondent, the disputed domain name is not an obstacle for the registration and use of other domain names by the Complainant, because the SCOPUS trademark differs from the disputed domain name. The Respondent further states that the disputed domain name was not registered with the aim to sell or otherwise transfer it to the Complainant, because the Respondent has used it since 2014 for its business and has never offered it to the Complainant. 6. Discussion and Findings 6.1. Procedural issue – Language of the proceedings In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant submitted its Complaint in the English language, and requests the proceeding to be held in English. The Complainant argues that the translation of the Complaint into Russian would unreasonably burden the Complainant and delay the proceedings, and that the Respondent has a good command of English. In this regard, the Complainant points out that the Respondent’s website contains English-language content, that the Respondent’s business includes the translation of articles and papers into English, and that the Respondent has communicated in English in this proceeding. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has objected to the Complainant’s request that the proceedings be held in English, but has not denied the arguments of the Complainant in respect of the language of the proceeding, which are also supported by the evidence in the case. These considerations satisfy the Panel that the Respondent can communicate in English. Taking all the above circumstances into account, the Panel accepts that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account all evidence and arguments of the Respondent that are in the Russian language. 6.2. Substantive issues Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical 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; and (iii) the Respondent has registered and is using the disputed domain name in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …” A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the SCOPUS trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name. As discussed in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the textual components of the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that trademark for purposes of UDRP standing. As further discussed in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. The relevant part of the disputed domain name is the sequence “wos-scopus”. It consists of the elements “wos” and “scopus”, separated by a hyphen, where the “scopus” element is identical to the SCOPUS trademark, and is clearly recognizable in the disputed domain name, while the inclusion of the letters “wos” in the disputed domain name does not prevent a finding of confusing similarity to the SCOPUS trademark. Therefore, the Panel finds that the disputed domain name is confusingly similar to the SCOPUS trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the disputed domain name and the Complainant has not authorized the Respondent to use the SCOPUS trademark. The Complainant points out that the Respondent is using the disputed domain name for a website that misleadingly offers the publication of scientific articles in the Complainant’s Scopus database, which the Respondent is not authorized to do, because content is placed into the Scopus database only by the Complainant’s Content Section & Advisory Board. The Complainant also points out that the Respondent’s website contains no disclaimer for the lack of relationship between the Parties. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent maintains that it has legitimate interest to use the disputed domain name, because it is not infringing the trademark rights of the Complainant and the elements of the disputed domain name have a specific generic meaning, which describes the mission of the Respondent’s company. The Respondent claims that it is carrying out a legitimate activity to assist scientists to publish their articles in relevant journals listed in Scopus, Web of Science, and other databases. As discussed in section 6.2.A above, the disputed domain name is confusingly similar to the SCOPUS trademark. The Panel is not convinced by the Respondent’s arguments about the meaning of the elements of the disputed domain name and the purpose for which it was chosen by the Respondent. The Respondent’s website prominently offers “publication in Web of Science databases” and “publication in foreign journals indexed in Scopus DB by all knowledge branches in the shortest possible time,” and features the SCOPUS trademark a number of times. This website content makes it much more likely that the Respondent chose the disputed domain name, because it contains “wos”-the abbreviation for Web of Science, and “scopus”, which is identical to the name of the Complainant’s Scopus database. The Respondent does not dispute the Complainant’s statement that it is not authorized to publish content in the Scopus database, so the advertising on the Respondent’s website that its potential clients will get their articles published in journals listed in the Scopus database in the shortest possible time is incorrect and misleading. The activities of the Respondent to assist scientists to prepare and translate their articles for submission in scientific journals, which may as such be legitimate, do not require and do not make legitimate the registration and use of the disputed domain name which is confusingly similar to the SCOPUS trademark for the misleading advertising of services that have not been authorized by the Complainant. In view of the above, the Panel concludes that by registering and using the disputed domain name the Respondent attempts to improperly capitalize on the reputation and goodwill associated with the SCOPUS trademark. Therefore, the Panel finds that the Respondent does not have rights and legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” As discussed above, the disputed domain name is confusingly similar to the SCOPUS trademark and the name of the Scopus database, and also contains the element “wos”, which is an abbreviation for the Web of Science database. The Respondent’s website prominently offers “publication in Web of Science databases” and “publication in foreign journals indexed in Scopus DB by all knowledge branches in the shortest possible time,” and features the SCOPUS trademark a number of times. This is sufficient to satisfy the Panel that the Respondent knew of the Complainant and of the SCOPUS trademark when it registered the disputed domain name, and it was registered with a view of the popularity of the SCOPUS trademark and of the Scopus database of the Complainant. The Respondent does not dispute that it is not authorized to publish content in the Scopus database, so the advertising of the Respondent’s services on the website at the disputed domain name is incorrect and misleading. The Respondent points out that its website contains information about the Complainant and a link to its official website. However, the website does not disclose that there is no relationship between the Parties and that the services of the Respondent have not been authorized by the Complainant. Instead, the website states that “Big Time, product names and abbreviations used in this document are product marks, registered trademarks, and service marks used under license”, followed by a statement that the SCOPUS trademark is owned by the Complainant.The combination of the two statements causes confusion that the Respondent has been licensed to use the SCOPUS trademark. It should also be noted here that the SCOPUS trademark has a valid registration in the Russian Federation, which is one of the jurisdictions where the Respondent claims to be carrying out activities. In view of the above, the Panel accepts that it is more likely than not that by creating a likelihood of confusion with the Complainant’s SCOPUS trademark, the Respondent has attempted for commercial gain to attract Internet users to the disputed domain name and confuse them to wrongly believe that the services offered on the website at the disputed domain name have been somehow endorsed by the Complainant. Therefore, the Panel finds that the Respondent has registered and used the disputed domain name 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 Assen Alexiev
Sole Panelist
Date: January 23, 2020
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