The Complainant is Elsevier BV., Netherlands, represented by Nelson Mullins Riley & Scarborough, L.L.P., United States of America (“United States”).
The Respondent is Oleg Klochkov, Ukraine, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2020. On April 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 April 14, 2020, 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 April 15, 2020. 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 April 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2020. The Respondent sent an email communication to the Center on April 25, 2020, requesting an extension of the Response due date. The Complainant sent an email communication to the Center regarding the Respondent’s request for an extension of the Response due date on April 29, 2020. The Respondent sent a further request for extension of the Response due date on May 4, 2020. On May 6, 2020, the Center sent an email communication to the Parties extending the due date for Response to May 20, 2020, taking into account the circumstances of this case, including the Parties’ communications. The Response was filed with the Center on May 20, 2020. The Center received a Supplemental Filing by the Complainant on May 27, 2020. On May 31, 2020, the Center received a Supplemental Filing by the Respondent. The Center appointed Jane Seager as the sole panelist in this matter on June 9, 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 private limited company incorporated in the Netherlands. It describes itself as a global information analytics business that helps professionals and institutions advance healthcare, open science, and improve performance for the benefit of humanity. The Complainant provides its information analytics products and services in the areas of strategic research management, research and development performance, clinical decision support, and professional education. The Complainant employs some 7,500 people in 46 countries. Each year, the Complainant publishes over 420,000 peer-reviewed research articles. Since 2004, the Complainant has operated an abstract and citation database called “Scopus”. The Complainant’s database covers some 5,000 publishers, over 75 million records, 24,600 active titles and approximately 194,000 books. For use in connection with the Complainant’s Scopus database, the Complainant has registered the trademark SCOPUS in various jurisdictions throughout the world, including but not limited to: - United States Trademark Registration No. 2952563, SCOPUS, registered on May 17, 2005, for computer services, namely, providing computer databases consisting of bibliographic citations and abstracts of journal articles, reports and research materials in the field of science, in Class 42; - Canadian Trademark Registration No. TMA640758, SCOPUS, registered on May 30, 2005, for computer services, namely, providing access to online computer databases consisting of downloadable and printable bibliographic citations and abstracts of journal articles, reports and research materials in the field of science via a global computer network, in Class 42; and - European Union Trade Mark No. 003052214, SCOPUS, registered on October 1, 2004, for computer software for obtaining information from a computer database via a global computer network in the form of bibliographic citations and abstracts of journal articles, reports and research materials in the field of science, in Classes 9 and 42. The Complainant also owns the domain name The Respondent is an individual based in Ukraine. The disputed domain name was registered on August 2, 2019. At the time of filing the Complainant, the disputed domain name resolved to a website titled “SCOPUS.TODAY”, and stated “Сo‑authors search service for the publication Scopus/Web of Science (WoS) scientific materials of various aims and scope” (the “Respondent’s website”). The Respondent’s website included a link to a “User Agreement”, in which the Respondent included the following disclaimer: “Please note that Scopus.Today is not a part of the official Elsevier’s Scopus or Clarivate Analytics WoS.” After having been notified of the present proceeding, the Respondent appears to have updated his website to include the following disclaimer at the bottom of its main web page: “Notice of Non-Affiliation and Disclaimer: We are not affiliated, associated, authorized, endorsed by, or in any way officially connected with the Elsevier, Clarivate Analytics, or any of their subsidiaries or affiliates.” 5. Parties’ Contentions A. Complainant The Complainant argues, in relevant part, as follows: The Complainant asserts rights in the SCOPUS trademark dating back to 2004. The Complainant submits that the disputed domain name is identical to the Complainant’s trademark. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that it has not authorized the Respondent to make use of its SCOPUS trademark, and that the Respondent is not commonly known by the name “Scopus”. The Complainant submits that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s website advertises the Respondent’s publishing-related services, which are directly related to the Complainant’s publications database products and services. The Complainant argues that such infringing use cannot constitute a bona fide offering of goods or services and cannot confer rights or legitimate interests in the disputed domain name on the Respondent. The Complainant submits that the Respondent is not making a noncommercial or fair use of the disputed domain name. The Complainant asserts that the Respondent’s use of the disputed domain name is commercial in nature, and that the Respondent is using the disputed domain name to create a likelihood of confusion with the Complainant’s trademark in order to offer for sale services that are directly related to the Complainant’s products and services. The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant argues that there is no doubt that the Respondent knew of the Complainant’s rights in the SCOPUS trademark and nevertheless registered the disputed domain name in order to create a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website for the Respondent’s own commercial gain. By using the disputed domain name to resolve to a website that contains multiple, unauthorized uses of the Complainant’s trademark in connection with the Respondent offering a service directly related to the Complainant’s services, the Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant further submits that the Respondent’s publishing-related services are directly related to the Complainant’s services, and target the Complainant’s potential customers. The Complainant argues that such activity constitutes a disruption of the Complainant’s business, amounting to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iii) of the Policy. Finally, the Complainant submits that in light of the Respondent’s infringing use of the disputed domain name, there is no legitimate reason for the Respondent to hide its identity, other than to obstruct the UDRP and legal processes in order to continue the Respondent’s infringing activities. The Complainant requests that the disputed domain name be transferred. B. Respondent The Respondent requests that the Panel deny the Complaint and contends, in relevant part, as follows: The Respondent notes that the Complainant’s trademark is SCOPUS, and that the disputed domain name includes the generic Top-Level Domain (“gTLD”) “.today”. The Respondent states that references to the disputed domain name on his website always mention the gTLD “.today”, and claims that the name of the website and the disputed domain name are intended to mean that the Respondent helps researchers to quickly overcome the financial and language barriers to be published in Scopus/Web of Science indexing journals. The Respondent submits that the combination of the SCOPUS trademark and the gTLD “.today” signals potential legitimate co-existence or fair use, and that the related website content supports such an inference. The Respondent states that he does not dispute the Complainant’s ownership of the SCOPUS trademark, but argues that the presence of a third-party trademark in the disputed domain name is not illegal on its own. The Respondent argues that the Complainant has no registered trademark rights for SCOPUS in Ukraine, and that the disputed domain name was registered legally and that it has always been used in good faith. The Respondent submits that there is nothing illegitimate in helping researchers to find co-authors to share the cost of publishing. The Respondent asserts that the Complainant unfairly provided stripped-down information from a third-party WhoIs service to create the impression that the Respondent was trying to hide his WhoIs information. The Respondent submits that he never intended to sell the disputed domain name, and that he has never registered any other domain names that contain the Complainant’s trademark. The Respondent notes that the gTLD “.today” has been open for registration since 2014, and that the Complainant had no intention of registering the disputed domain name prior to becoming aware of the Respondent having registered the disputed domain name. The Respondent claims that the disputed domain name was registered with good-faith and noncommercial intentions. The Respondent asserts that his website is not an abstract and/or citation database, nor is it a media outlet, nor is it a journal. The Respondent claims that his website is intended to unite scientific authors, collect funds from them, and to spend these funds on publishing their materials in Scopus and/or Web of Science indexing journals. The Respondent submits that a disclaimer in the User Agreement made available via a link on the Respondent’s website makes it clear that the Respondent’s website has nothing to do with the Complainant. The Respondent claims that his website is best described as a not-for-profit organization. The Respondent asserts that he does not use his website to trade in anything, that there are no prices on the website, but that he only lists the cost of publishing for a single author (not for a whole article, which the Respondent claims is much higher). The Respondent submits that his website makes publishing in Scopus journals more accessible for authors, and that it would be appropriate for the Complainant to send the Respondent a letter of thanks. Finally, the Respondent requests that the Panel enter a finding of Reverse Domain Name Hijacking (“RDNH”) on the basis that the Complainant provided a “stripped-down” WhoIs record from a third party; that the Complainant did not attach in evidence a copy of the Respondent’s User Agreement containing a disclaimer; and that the Complainant was not interested in owning the disputed domain name in the five years prior to the Respondent’s registration of the disputed domain name and creation of the Respondent’s website. C. The Complainant’s Supplemental Filing On May 27, 2020, the Complainant submitted an unsolicited supplemental filing rebutting the Respondent’s request for a finding of RDNH. Specifically, the Complainant asserts that the Respondent is offering a service that is directly related to the Complainant’s products and services offered under the SCOPUS trademark, amounting to clear evidence of the Respondent’s bad faith. The Complainant further argues that the Respondent is attempting to convince the Panel that reference to a disclaimer buried in the Respondent’s User Agreement is sufficient to excuse the Respondent’s misappropriation of the Complainant’s well-known trademark and use of the disputed domain name to infringe on the Complainant’s trademark rights. D. The Respondent’s Supplemental Filing On May 31, 2020, the Respondent submitted an unsolicited supplemental filing in reply, reiterating his grounds on which he ought not to be considered as having registered and used the disputed domain name in bad faith, as well as repeating his reasons in support of a finding of RDNH. 6. Discussion and Findings 6.1. Procedural Matter: Admissibility of Unsolicited Supplemental Filings Both Parties have submitted unsolicited supplemental filings. The Policy is intended to provide an expedited dispute resolution procedure and contemplates the submission of a single Complaint filing and a single Response filing. Neither the Rules nor the Supplemental Rules provides for the submission of additional statements, except as requested by the Panel pursuant to paragraph 12 of the Rules, which states that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. Prior UDRP panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its initial submission; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. The Panel has reviewed the Parties’ supplemental submissions and notes that the information therein largely reiterates submissions made in the Complaint and the Response, and that additional information contained therein was reasonably available to the Parties at the time of submission of the Complaint and the Response. The Panel does not consider there to be “exceptional circumstances” warranting the admission of either Party’s unsolicited supplemental filing. In any event, the Panel has duly considered the supplemental filings of both Parties and concludes that the admission of either Party’s supplemental filing would not have materially affected the Panel’s findings below. 6.2. Procedural Matter: Transmission of the Complaint and Annexes to the Respondent The Panel notes that the Respondent appears to take issue with the fact that Annex 9 to the Complaint, consisting of a copy of the WhoIs record for the Complainant’s domain name In order to prevail in its Complaint, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy: (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 the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights in its registered SCOPUS trademark, the details of which are provided in the factual-background section above. Noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element; see WIPO Overview 3.0, section 1.1.2. The disputed domain name consists of the Complainant’s SCOPUS trademark in its entirety and without alteration under the gTLD “.today”. The Panel does not accept the Respondent’s submission that the registration of the disputed domain name under the gTLD “.today” somehow differentiates the disputed domain name from the Complainant’s trademark. Prior UDRP panels have consistently held that the applicable Top-Level Domain is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test; see WIPO Overview 3.0, section 1.11.1. The Panel sees no reason not to apply such reasoning in the present case. Disregarding the gTLD “.today”, the disputed domain name is identical to the Complainant’s trademark. The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests As described above, the disputed domain name resolves to a website purporting to offer a “co-authors search service for the publication of Scopus/Web of Science scientific materials of various aims and scope.” The Respondent’s website lists the following additional information: “Time to publish: 2-6 months Co‑authorship cost: $300‑$500 (depends on the journal quartile and the сount of co‑authors of the article) The h-index (Hirsch) increasing: $40 for one citation (only for articles published via the Scopus.Today service) Number of authors involved in a single article: should not exceed 5 (five) persons Prepayment: 100% Guarantee of publication: 100% or money-back We do not provide service for publication of your scientific materials, only offer co‑authorship in ready‑made articles. Select your preferred article from the list [hyperlink] or send us an email request with your name, scientific direction (theme) and the quartile of journal. We guarantee a complete anonymity of our cooperation!” It is clear from review of the Respondent’s website that the Respondent is purporting to provide services that are ancillary to the publishing services of the Complainant. The Respondent claims that its business is best characterized as a not-for-profit organization. The Panel notes that the services offered on the Respondent’s website are paid, and the Panel lacks sufficient evidence to make a determination whether the Respondent’s services are for profit, or not. Notwithstanding the above, prior UDRP panels have held that domain names identical to a complainant’s trademark carry a high risk of implied affiliation; see WIPO Overview 3.0, section 2.5.1. The term “scopus” appears to be a term coined by the Complainant, with no immediately discernable descriptive meaning in English or Ukrainian. The Panel considers the SCOPUS trademark to be exclusively associated with the Complainant and its abstract and citation database. In the circumstances, Internet users viewing the disputed domain name are likely to be misled into thinking that the disputed domain name is affiliated with or endorsed in some manner by the Complainant. In light of the identity between the disputed domain name and the Complainant’s trademark, the Panel finds that the Respondent’s use of the disputed domain name is not of a nature so as to confer rights or legitimate interests in the disputed domain name on the Respondent. Moreover, at the time of filing the Complaint, the Respondent’s website did not prominently disclose the Respondent’s lack of any relationship with the Complainant; see WIPO Overview 3.0, section 2.8.1. As the Complainant points out, the Respondent’s disclaimer stating that “Scopus.Today is not a part of the official Elsevier’s Scopus or Clarivate Analytics WoS” appeared in the body of the Respondent’s User Agreement (ostensibly the Respondent’s terms of use), accessible via a hyperlink on the Respondent’s homepage. Even if the Panel were to take the view that the Respondent’s website is noncommercial, in some ways analogous to a fan site, such sites should be clearly distinct from any official complainant’s site; see WIPO Overview 3.0, section 2.7.1. Even in the case of noncommercial websites, a domain name that is identical to a trademark risks being misunderstood by Internet users as being somehow sponsored or endorsed by the trademark owner; see WIPO Overview 3.0, section 2.7.2. For reasons set out above, the Respondent’s website fails to sufficiently distinguish itself from the Complainant in order to support a legitimate interest in the disputed domain name pursuant to paragraphs 4(c)(i) or 4(c)(iii) of the Policy. The Respondent is listed in the Registrar’s WhoIs record as “Oleg Klochkov”, which does not bear any resemblance to the disputed domain name. The Respondent is not making use of the disputed domain name, independent from any association with the Complainant’s trademark, so as to confer any reputation in the disputed domain name on the Respondent. The Panel does not consider the Respondent to be commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. For reasons set out above, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant has provided evidence of its rights in its SCOPUS trademark dating back to 2004. Since then, the Complainant’s database has gained international reputation, conferring substantial goodwill on the Complainant’s SCOPUS trademark. The disputed domain name identically reproduces the Complainant’s trademark under the gTLD “.today”. Noting the global nature of the Internet, it is of little consequence that the Complainant has not provided evidence of its trademark being registered in Ukraine, where the Respondent is apparently based – the Respondent’s website makes clear reference to the Complainant and its trademark and offers services to an English and Russian speaking audience. For reasons set out under the preceding element, the Panel does not consider that the Respondent’s use of the disputed domain name amounts to a bona fide use as a service provider, even if the Respondent’s services are not intended to be for commercial gain. The Respondent’s website does not contain any comprehensive information about its author. The footer of the website simply states “© Scopus.Today 2020” with an email address “[email]@scopus.today”. As a result, Internet users are likely to be misled into thinking that the disputed domain name and the Respondent’s website are provided by or otherwise endorsed by the Complainant. The Respondent’s inclusion of a brief disclaimer in its User Agreement does not cure the Respondent’s bad faith. The Panel finds that the Respondent has registered and used the disputed domain name, exactly matching the Complainant’s trademark in order to create a misleading impression of affiliation with the Complainant, with a view to taking reputational advantage of the goodwill attached to the Complainant’s trademark. There being no relationship between the Parties or authorization for the Respondent to make use of the Complainant’s trademark, in a domain name or otherwise, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith. The Panel does not accept the Respondent’s justification that the Complainant was not interested in registering the disputed domain name from 2014 to 2019, during which time the gTLD “.today” was open for registration. It is the Respondent’s registration and use of the disputed domain name that has led to Complainant filing the present Complaint against the Respondent, to enforce its rights, as envisaged by a proper application of the Policy. The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. In light of the above, the Panel need not further consider the Respondent’s claims of RDNH. 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 Jane Seager
Sole Panelist
Date: June 24, 2020
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