The Complainant is Simon & Schuster, Inc., United States of America (“United States”), represented by Viacom International Inc., United States.
The Respondent is Joanna Harrington, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 8, 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 October 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 October 22, 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 November 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on December 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 subsidiary of United States’ National Association of Securities Dealers Automated Quotations (“NASDAQ”) listed mass media conglomerate ViacomCBS Inc, and operates a consumer publishing business with a significant international publishing, distribution and sales presence that typically releases more than 2000 titles annually. The Complainant holds registrations for the trademark SIMON & SCHUSTER, and variations of it, in numerous countries, including United States trademark registration No. 1192095 SIMON AND SCHUSTER registered on March 16, 1982 with a date of first use January 2, 1924 and Australian Registered trade mark No. 378991 for the mark SIMON & SCHUSTER registered on July 28, 1982 in class 16 for books. The Complainant is also the owner of, inter alia, the domain name The Disputed Domain Name The Complainant cites its trademark registrations of the trademark SIMON & SCHUSTER in various countries as prima facie evidence of ownership. The Complainant submits that the mark SIMON & SCHUSTER is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the SIMON & SCHUSTER trademark and that the similarity is not removed by the substitution of the letter “m” with the letters “r” and “n”, and addition of the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is being used to perpetrate an email scam, and because its web presence resolves to an inactive webpage. The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademark, and that it was being used to further the perpetration of a fraud as part of a “phishing” scheme. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced evidence to demonstrate that it has registered trademark rights in the mark SIMON & SCHUSTER in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the SIMON & SCHUSTER trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark SIMON & SCHUSTER; (b) with the letter “m” deleted and replaced with the letters “r” and “n”; (c) followed by the gTLD “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “sirnonandschuster”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, the substitution of one letter “m” with two letters “r” and “n”: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Simon & Schuster, Inc. v. Domain Administrator Limited,WIPO Case No. D2008-0278). This Panel finds that the substitution of the letter “m” in the word “Simon” with two letters “r” and “n” placed in such a way as to appear visually similar, on a cursory read, to the letter “m”, is confusing and does not in itself prevent a finding of confusing similarity. The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the mark SIMON & SCHUSTER is not a dictionary word but rather a highly distinctive and well-known name. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant submits that “Respondent is using the Disputed Domain Name to carry out a phishing operation to impersonate Complainant’s employees and to fraudulently obtain copies of manuscripts, books and other valuable intellectual property from authors and their respective representatives.”. The Complainant also supplied copies of emails purporting to be from employees of the Complainant sent to a number of third parties who are either authors or their representatives, in the hope that they would be sent a manuscript or other intellectual property by the unwitting recipient, presumably for the purpose of blackmail, nefarious distribution or other unlawful obtaining of a financial advantage by the perpetrator. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an online phishing scam using email communications pretending to be from fake employees of the Complainant operating under the brand SIMON & SCHUSTER to the purpose of misleading the recipients based on the wide recognition of the Complainant’s mark SIMON & SCHUSTER with the intention to deceive the recipients of those communications into replying with attached manuscripts or other valuable intellectual property. The Panel notes also that the Disputed Domain Name does not resolve to an active webpage. It could therefore reasonably be inferred that the Respondent was opportunistically using the Complainant’s mark in the furtherance of the perpetration of a fraud. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy requires that the complainant must also demonstrate that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230). The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, this Panel accepts the Complainant’s evidence of the conduct of the Respondent by pretending to be employees of the Complainant in email communication with third parties, usually authors and their representatives, as evidence that the Respondent was well aware of the Complainant’s trademark SIMON & SCHUSTER when registering the Disputed Domain Name. The Panel finds that the most likely reason for the Respondent registering the Disputed Domain Name and then using it to assume the identity of employees of the Complainant in email communications asking authors or their reps for their manuscripts, is that the Respondent was attempting to perpetrate a fraud. Further, a gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could flow from the Respondent’s registration by 96 years. On the issue of use, the Complainant’s evidence is that the Respondent attempted to deceive the recipients of the phishing emails into believing it was a legitimate communication from a domain name associated with the Complainant’s SIMON & SCHUSTER brand. The obvious risk of deception or confusion as to the origin of such an email, or affiliation of the email communication with the Complainant is, in this Panel’s view, the very essence of bad faith under paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.4. Evidence was also furnished that the Disputed Domain Name resolves to an inactive webpage unconnected with any bona fide supply of goods or services by the Respondent. Having regard to (i) the high degree of distinctiveness and well-known reputation of the SIMON & SCHUSTER mark, (ii) the failure of the Respondent to submit a response despite signing for receipt of the Complaint and evidence, (iii) the adverse inference this Panel draws from the Respondent’s use of a privacy shield; and (iv) the implausibility of any good faith use to which the domain name may be put, in the circumstances finds this as further evidence of the Respondent’s bad faith (see WIPO Overview 3.0, section 3.1.4). In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark SIMON & SCHUSTER and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by creating an email address comprised of a misleading misspelling of the Disputed Domain Name then has used that email address to pretend to be employed by the Complainant, for the purpose of seeking to obtain copies of manuscripts in an attempt to defraud book authors, an activity that falls into a category of conduct known as “phishing”. Numerous previous UDRP panels have held that the registration and the use of a disputed domain name in connection with a fraudulent “phishing” scheme constitutes bad faith under the Policy (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Linklaters LLP v. Domain Admin, Privacy Protect, LLC / Patrick Leitner, WIPO Case No. D2019-0096). Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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, Nicholas Weston
Sole Panelist
Date: December 20, 2020
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