The Complainant is Elsevier BV., Netherlands, represented by Nelson Mullins Riley & Scarborough, L.L.P., United States of America (“United States”).
The Respondent is Dr. Devid Corner, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2020. On July 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 July 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2020. The Center appointed Andrew F. Christie as the sole panelist in this matter on August 18, 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 specializing in the fields of science and health. It employs 7,900 people and serves customers in nearly 180 countries. The Complainant’s “ScienceDirect”, one of the world’s largest database dedicated to peer-reviewed primary scientific and medical research, has 16 million monthly unique visitors accounting for 1 billion articles downloaded by researchers. Additionally, more than 25,000 academic and governmental institutions around the world use the Complainant’s products. The Complainant is the owner of numerous trademark registrations around the world for the word trademark ELSEVIER, including United States Registration No. 749,444 (registered on May 14, 1963), United States Registration No. 4,181,271 (registered on July 31, 2012), and United States Registration No. 5,393,561 (registered on February 6, 2018). The Complainant is also the owner of various trademark registrations worldwide for the stylized design trademark that contains the words NON SOLUS, including United States Registration No. 751,756 (registered on June 25, 1963), and United States Registration No. 4,166,200 (registered on July 3, 2012). The Complainant, or its predecessors and/or successors in interest, are the registered owners of the domain name On or around March 27, 2020, the Complainant became aware of the Respondent’s registration of the disputed domain name and its use of the disputed domain name to host a website. The Complainant identified the website resolving from the disputed domain name as being an imposter, and posted a notice on the Complainant’s “Journal of World Business” Facebook page warning its followers that the Respondent was charging USD 250 for purported publishing services. On May 7, 2020, the Complainant sent a cease and desist letter to the Respondent. On May 7, 2020, the Complainant received a response from the Respondent stating that Ajai S. Gaur, the “Journal of World Business” Editor-in-Chief authorized the Respondent’s registration and use of the disputed domain name for a fee of USD 2,000. The Complainant contacted Mr. Gaur to confirm the veracity of the Respondent’s statements, to which Mr. Gaur replied that he had provided no such authorization to the Respondent and that, in fact, he was the person who alerted the Complainant of the Respondent’s unauthorized registration of the disputed domain name. The disputed domain name was registered on March 12, 2020. The Complainant has provided undated screenshots of the website resolving from the disputed domain name, at which appears the Complainant’s ELSEVIER word trademark and NON SOLUS stylized design trademark, and text that includes: “WELCOME TO JOURNAL OF WORLD BUSINESS (ASIA)” and “WHY CHOOSE ELSEVIER?” 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because the disputed domain name is comprised solely of the Complainant’s registered ELSEVIER word trademark (which dates back to at least as early as 1963, when it was registered in the United States), and the Complainant’s common law JWB trademark (which dates back to at least as early as 1965, when the “Columbia Journal of World Business” was founded), joined together by a hyphen. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Complainant has not authorized the Respondent to use the ELSEVIER or JWB trademarks; (ii) the Respondent is not a licensee of the ELSEVIER or JWB trademarks; (iii) the Respondent is not commonly known by the name ELSEVIER, JWB or ELSEVIER-JWB; (iv) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name; (v) the Respondent’s excessive and unauthorized use of the Complainant’s trademarks throughout the website resolving from the disputed domain name unquestionably creates a false suggestion of an affiliation between the Respondent and the Complainant; (vi) the Respondent uses hyperlinks throughout the website resolving from the disputed domain name that link directly to the Complainant’s websites; (vii) the Respondent’s unauthorized and deliberately infringing use of at least 10 of the Complainant’s trademarks, most importantly the ELSEVIER and JWB trademarks, in connection with the use of the disputed domain name cannot confer legitimate rights or interests in the disputed domain name; (viii) the Respondent’s use of the disputed domain name is commercial in nature as it is apparently charging USD 250 for purported publishing services; (ix) the Respondent attempted to sell the disputed domain name to the Complainant for USD 2,000 under the guise of being compensated for the Respondent’s alleged payment to Mr. Gaur for authorization to register and use the disputed domain name, when in fact no such authorization was provided, and no such payment was made; and (x) the disputed domain name is confusingly similar to the Complainant’s ELSEVIER and JWB trademarks, and is being used intentionally to capitalize and trade on the reputation and goodwill associated with these trademarks in order to attract potential clients for the Respondent’s purported publishing services. The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent is using the disputed domain name to resolve to a website that mimics the Complainant’s websites, by holding itself as the Complainant or as being affiliated with the Complainant, and is purporting to offer publishing services related to the Complainant’s services; (ii) it is clear that the Respondent registered the disputed domain name intentionally targeting the ELSEVIER and JWB trademarks in order to siphon away Internet users, and thus disrupt the business of a competitor; (iii) there can be no doubt that the Respondent knew of the Complainant and its ELSEVIER and JWB trademarks and specifically targeted the reputation and goodwill associated therewith when registering the disputed domain name; (iv) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s ELSEVIER and JWB trademarks as to the source, sponsorship, affiliation, or endorsement of the website; and (v) the Respondent attempted to sell the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs, namely for USD 2,000. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Once the generic Top-Level Domain “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered ELSEVIER word trademark followed by a hyphen and the letters “jwb”. The Complainant’s ELSEVIER word trademark is clearly recognizable within the disputed domain name. The addition of the hyphen and letters “jwb” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s ELSEVIER word trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), 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. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its ELSEVIER word trademark or its NON SOLUS stylized design trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The string “-jwb” that follows the Complainant’s ELSEVIER word trademark in the disputed domain name is capable of being read as an initialism of the Complainant’s “Journal of World Business”. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a website that mimics the website of the Complainant, by stating “WELCOME TO JOURNAL OF WORLD BUSINESS (ASIA)” and “WHY CHOOSE ELSEVIER?”, and also displaying the Complainant’s ELSEVIER word trademark and NON SOLUS design trademark. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered many decades after the Complainant first registered its ELSEVIER word trademark. The evidence on the record provided by the Complainant with respect to the use of its ELSEVIER word trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s ELSEVIER word trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being 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 Andrew F. Christie
Sole Panelist
Date: September 1, 2020
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