The Complainant is Springer Nature Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Collections Springer Nature, United States. 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 17, 2020. On April 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2020, 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 20, 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 24, 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 May 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2020. The Center appointed Cherise Valles as the sole panelist in this matter on June 5, 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 academic and educational publisher serving researchers, students, teachers and professionals around the world. The “Springer Nature” portfolio of academic journals includes the Nature journal, Scientific American and the Nature Research portfolio. Each year, the Complainant handles more than one million article submissions and publishes around 300,000 articles in almost 3,000 journals and 13,000 books. The Complainant is one of the largest open access research publishers and is home to Scientific Reports, one of the world’s largest open access journals. In 2018, the Complainant’s content platforms were visited almost two million times per day. In 2019, the Complainant generated revenue of EUR 1.72 billion. The Complainant’s brands are known worldwide, both as printed publications and as digital publications available through databases and platforms such as Springer Nature Experiments and SpringerLink. The Complainant has extensively used the SPRINGER NATURE mark on publishing goods and services, as well as related goods and services such as databases. Through the Complainant’s ongoing and extensive use of the Springer Nature brand throughout the world, the Complainant has developed a reputation and goodwill across a broad range of products and services. The Complainant ranks as a top hit on popular search engines like Google when Internet users enter the term “springer nature” into the search bar. Additionally, when Internet users enter the term “springar nature” into the search bar, popular search engines like Google presume this is a misspelling and attempt to correct the search to “springer nature”. The Complainant owns a number of trademarks in jurisdictions around the world, including the following: - United States trademark Registration No. 5563056 for SPRINGER NATURE, registered on September 18, 2018, in international classes 9, 16, 35, 38, 39, 40, 41, 42 and 45; and - United States trademark Registration No. 5477555 for SPRINGER NATURE in stylized form, registered on May 29, 2018, in international classes 9, 16, 41 and 42. The disputed domain name was registered on July 17, 2019. It currently resolves to an error page, and it has been used in a phishing attempt to persuade people to pay fake invoices. 5. Parties’ Contentions A. Complainant The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that: The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. - The disputed domain name is confusingly similar to the Complainant’s registered SPRINGER NATURE trademarks. The Respondent lacks rights or legitimate interests in the disputed domain name. - The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks. The disputed domain name has been registered and is being used in bad faith. - The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements: (i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name was registered and is being used in bad faith. The Complainant has the burden of proof in establishing each of these elements. The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark. The Complainant is the sole and exclusive owner of multiple registrations worldwide for the term “springer nature” as indicated in Section 4 above. The disputed domain name differs from the Complainant’s SPRINGER NATURE trademarks only in the switching of the “e” in the word “springer” with an “a” and with the addition of the generic Top-Level Domain (“gTLD”) “.com”. The disputed domain name is only one letter off from incorporating the Complainant’s SPRINGER NATURE mark in its entirety. Previous UDRP panels have held that replacing one letter for another in a trademark does not alter the overall impression of the domain name in the eyes of an unsuspecting Internet user. See, e.g., Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Purple Bucquet / Privacy Protect.org.,WIPO Case No. D2010-1787. Previous UDRP panels have also held that the gTLD “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark. In the light of the foregoing, the Panel finds that the disputed domain name Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent): “[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not satisfied this burden. In the absence of a Response or assertion that any such right or legitimate interest exists, this must lead to a presumption that the Respondent is unable to show that such a right or legitimate interest exists. There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. Although the disputed domain name resolves to an error page, it appears as though the Respondent is still using the disputed domain name by using an email address purporting to be the Complainant for the purpose of sending fraudulent emails to various individuals, impersonating the Complainant’s Credit Control & Collections team in an attempt to persuade people to pay fake invoices. For example, the Respondent applied the Complainant’s letterhead, address, and products and services to a false invoice sent from this email address and requested payment of the sum of EUR 81,990.32 as asserted by the Complainant. The Panel finds that such use cannot constitute a bona fide offering of goods or services, since by producing false invoices it is seeking to financially gain from the deception caused. Previous UDRP panels have consistently held that using domain names for illegal activity (in this case phishing) is evident of illegitimate intent. There has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the Complainant’s trademarks in any manner whatsoever, including in, or as part of, the disputed domain name. The Respondent does not own any valid trademark or trade name rights in the term “springer nature” and, to the best of the Complainant’s knowledge, the Respondent is not commonly known by the name “springer nature”. The disputed domain name was only created on July 17, 2019, by which point the Complainant already had extensive rights and established a considerable reputation in the SPRINGER NATURE brand worldwide. Given the Respondent’s use of the disputed domain name, the Panel concludes that the Respondent is deliberately seeking to confuse Internet users by impersonating the Complainant for the purpose of sending fraudulent emails. Previous UDRP panels have held that merely registering a disputed domain name is not sufficient to establish rights or legitimate interests, and that the use of a domain name for illegal activity (including fraudulent or phishing activities) can never confer rights or legitimate interests on a respondent. See, e.g., Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci,WIPO Case No. D2000-1244. In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the 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 the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location. The Respondent cannot claim not to have had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name given that the registration of the Complainant’s trademarks pre-dates registration of the disputed domain name, and given the widespread reputation of the Complainant and its SPRINGER NATURE trademarks. The use of the disputed domain name for fraudulent purposes suggests that the Respondent registered the disputed domain name in bad faith in order to take predatory advantage of the Complainant’s reputation. This is supported by previous UDRP decisions, e.g. Microsoft Corporation v. Webbangladesh.Com,WIPO Case No. D2002-0769. Finally, the Panel notes that the Respondent registered the disputed domain name under a privacy service. Whilst the Panel accepts that there are recognized legitimate uses of privacy and proxy registration services (as reflected in section 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)), panelists may draw negative inferences when circumstances indicate that the privacy service has been used in order to frustrate proceedings such as this. On these facts, given the Respondent’s use of the disputed domain name for fraudulent purpose, the Panel concludes that the Respondent’s choice to use a privacy service is more likely than not to allow it to carry out its phishing and fraudulent activity and to disrupt these UDRP proceedings. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. 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 Cherise Valles
Sole Panelist
Date: June 17, 2020
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