The Complainants are Springer Nature Holdings Limited, Springer Nature Limited, United Kingdom, represented by Stobbs (IP) Limited, United Kingdom.
The Respondent is Whois Privacy Protection Foundation, Netherlands / Nature Library LTD, United Kingdom, internally 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 October 20, 2020. On October 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 Complainants on October 22, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on October 27, 2020. The Center received an email communication from the Respondent on October 27, 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 October 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2020. Other than the Respondent’s pre-commencement communication of October 27, 2020, no further communications were received from the Respondent. Pursuant to paragraph 6 of the Rules, on November 18, 2020, the Center informed the Parties that it would proceed with the panel appointment process. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 24, 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 Complainants are limited companies registered in England and Wales, United Kingdom. They are both part of the Springer Nature Group (“the Group”). The Group was formed in May 2015 from various pre-existing publishing and media businesses and operates as a global academic and educational publisher serving the needs of researchers, students, teachers, and professionals around the world. The Group’s portfolio of academic journals includes the Nature journal, Scientific American, and the Nature Research portfolio. The Group handles more than 1 million article submissions and publishes around 300,000 articles across almost 3,000 journals and 13,000 books annually. In 2019, the Group generated revenue of EUR 1.72 billion. Nature Research is a division of the Group which produces a variety of academic publications devoted to science and medicine, including the weekly multidisciplinary journal Nature, first published in 1869, which is described by the Complainants as the most-cited multidisciplinary journal in the world. The Complainants’ publications branded “Nature” and “Nature Research” received multiple millions of mentions on social media and featured in more than 100,000 news stories in 2019. Said publications are available online at “www.nature.com”, which website receives around 8 million visitors per month. Some 6,000 subscribers, including licensed institutions, subscribe to said website. The Nature journal has received various awards, including “Journal of the Century” (between the years 1909-2009). The Group operates some of its publications on an “open access” platform. The Complainants have registered many trademarks in the terms NATURE and NATURE RESEARCH since around 1970. For example, the Complainant Springer Nature Holdings Limited is the owner of United Kingdom registered trademark no. 3174031 for the word mark NATURE, registered on October 21, 2016 in classes 9, 16, 35, 41, 42, and 45. The Complainant Springer Nature Limited is the owner of United Kingdom registered trademark no. 3174032 for the device and word mark NATURE RESEARCH, registered on January 27, 2017 in classes 9, 16, 35, 41, 42, and 45. The disputed domain name was created on January 4, 2020. The Respondent is a limited company registered in England and Wales, United Kingdom, which describes itself as “a start-up”. It was incorporated on July 21, 2020 and the nature of its business is publishing activities, including publication of consumer and business journals and periodicals. The website associated with the disputed domain name invites the submission of scientific articles on an “open access” platform. 5. Parties’ Contentions A. Complainants The Complainants contend as follows: Identical or Confusingly Similar The Complainants have many registered trademarks for the marks NATURE and NATURE RESEARCH, some of which can be traced back to 1970, and their brands have obtained substantial recognition in the public domain and have built up a significant reputation, especially among the academic publishing community. The applicable generic Top-Level Domain “.org” is disregarded under the first element test. The disputed domain name is at the very least confusingly similar to the Complainants’ said marks, being subject only to the addition of the term “library” when compared to the NATURE mark or the substitution of the word “research” for such term when compared to the NATURE RESEARCH mark. The word “library” is descriptive, referring to accessing publications, and does not alter the overall impression of the disputed domain name in the eyes of an unsuspecting Internet user. Rights or Legitimate Interests There is no believable or realistic reason for registration or use of the disputed domain name other than to take advantage of the Complainants’ extensive rights, which had existed worldwide long before the comparatively recent registration date of the disputed domain name. The disputed domain name does not provide a bona fide offering of goods or services. The Respondent is impersonating the journals offered by the Complainants in order to persuade people to publish articles on its platform, which is designed to confuse customers into thinking it is endorsed or affiliated with the Complainants. Identical wording has been taken from the Complainants’ website for use on the website associated with the disputed domain name, constituting copyright infringement. By impersonating the Complainants’ open access platform, including adopting nearly identical journal titles, the Respondent seeks to gain financially from the deception caused. The Respondent is likely to be engaged in predatory publishing and is not adhering to the relevant ethical code for scholarly publishing by virtue of adopting confusing or similar journal names, not having a complete peer review process, and not having complete and clear copyright, licensing, and advertising policies. This perpetuates bad research and exploits the open access publishing model. The Respondent’s website also displays signs of being a “sham” as a large number of links are not available. The Complainants have been trading for nearly 200 years under the NATURE brand worldwide, providing nearly identical goods and services, being journals and articles for peer review. Therefore, the Respondent would have been aware of the Complainants’ business at the time of the registration of the disputed domain name. The Respondent has not been commonly known as Nature Library LTD when it registered the disputed domain name or prior to being aware of the Complainants’ rights in their marks. The disputed domain name was registered on January 4, 2020, being earlier than the Respondent’s formal incorporation in July 2020. There is nothing about the disputed domain name which suggests that the Respondent is making a legitimate noncommercial or fair use. Registered and Used in Bad Faith In view of the high level of fame of the NATURE and NATURE RESEARCH marks, particularly in the world of academic publishing, there is no way in which the Respondent could have registered or used the disputed domain name without falling foul of paragraph 4(b) of the Policy. The Complainants’ brands and corresponding trademarks are well-known and the Respondent was aware of these because it uses the disputed domain name for copyright infringement and likely predatory publishing. Any use of a domain name for fraudulent purposes, whether directed at the corresponding rights holder or third parties, amounts to bad faith registration and use under the Policy. The Respondent’s choice to use a privacy service as the domain name holder entitles the Panel to draw a negative inference if such service has been used in order to frustrate proceedings under the Policy and in this case such service has also facilitated phishing and fraudulent activity. B. Respondent The Respondent’s contentions are taken from its pre-commencement communication of October 27, 2020, as no formal Response was filed in this case. The Respondent contends as follows: The disputed domain name represents the Respondent’s legal identity. The Respondent has changed its name to “Natur Library Limited” effective from October 26, 2020. There is a high possibility that the disputed domain name will be used to tarnish the Respondent’s reputation if it is cancelled or transferred. The claim of confusion is unsupported by evidence and is based on improbable assumptions. The Complainants wish to defame the Respondent, suppress its business, and retain a market monopoly. The Complainants have engaged in malpractice and stand accused by readers of taking high charges. The Respondent’s business is not a sham. The Complainants’ review processes are inefficient and take a long time. The claim of nearly identical journal titles is absurd in the field of scientific publishing given that there are more than 400,000 journals globally which target a similar readership. There is no deception for financial gain inherent in the Respondent’s titles. All open access publishers follow similar procedures, such as are listed by the Respondent, including peer review. The Complainants have no exclusivity over such processes. The Respondent is a start-up and has registered a new domain name. There is no logic to suggesting that it should have registered the disputed domain name at least a few years back. Being the owner of a registered trademark does not automatically entitle the Complainants to the disputed domain name. In terms of the EU GDPR, the Respondent is entitled to use a privacy service to protect its identity from disclosure via a single WhoIs search. Without prejudice to its position in reply to the Complaint, the Respondent has attempted to avoid a dispute by not using the word “nature” in its legal entity name and will change its primary domain name (currently the disputed domain name) to suit its new company name. The Respondent will also remove the word “nature” where it represented the Respondent’s company. The disputed domain name will not be in use. 6. Discussion and Findings To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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 disputed domain name has been registered and is being used in bad faith. A. Preliminary Issue - Consolidation of Complainants The present Complaint has been filed by two Complainants, albeit from the same corporate group. The Complainants do not however expressly request consolidation of their respective complaints, nor do they provide any submissions on the topic. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1, provides inter alia as follows: “Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.” As no submissions directly relating to consolidation have been made by the Complainants in this case, the Panel requires to consider the issue based on the Complaint taken as a whole. The Complainants’ submissions indicate that they are members of a single corporate group and that they have a variety of relevant registered trademarks shared between them. The Complainants do not specify the individual roles of their respective companies within the Group, although based upon the use of the word “holding” in the name of one and not the other it seems likely that the first-named Complainant is a holding company and the second-named is an operating company. In any event, the Panel is satisfied that any targeting of the Complainants’ rights by way of the disputed domain name would be likely to affect the Complainants’ interests to a similar extent, such that the Complainants arguably have a common grievance in this case. It follows that, if the Respondent is found to have engaged in such targeting, this could be reasonably regarded as common conduct which would affect the Complainants in a similar fashion. In these circumstances, the Panel considers that it would be equitable and procedurally efficient to permit the Complainants to proceed with a consolidated Complaint. The Panel notes that in its informal response, the Respondent has replied to the Complaint and to the Complainants collectively. This suggests that it does not have any substantive objection to consolidation of their respective complaints. In any event, the Panel cannot identify or foresee any prejudice arising to the Respondent arising from such consolidation being ordered by the Panel. Accordingly, the Panel determines that the Complainants’ respective complaints against the Respondent in this case will be consolidated and will proceed to a decision on that basis. B. Identical or Confusingly Similar The Panel finds that the Complainants have rights in their respective registered trademarks NATURE and NATURE RESEARCH. Comparing these to the second level of the disputed domain name in the straightforward side-by-side approach typically made in terms of the first element analysis under the Policy, it may be seen that the “nature” element is repeated as the first element of the disputed domain name with the word “library” either added, or substituted for the “research” element of the second trademark. The word “library” is descriptive. Its addition or substitution here does not prevent a finding of confusing similarity under the first element. The Complainants’ NATURE trademark in particular is fully recognizable in the disputed domain name. The generic Top-Level Domain, in this case “.org”, is typically disregarded for the purposes of comparison with the relied-upon marks. The extent to which the Complainants’ marks are asserted to be well-known is not a factor to be considered under the first element, and nor is the Respondent’s assertion that its intention is to provide a legitimate offering of goods or services without trading off the Complainants’ reputation. These matters may be relevant to the second and third elements under the Policy and will be reviewed in that context. In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Complainants submit that there is no believable or realistic reason for registration or use of the disputed domain name other than to take advantage of the Complainants’ extensive rights, which had existed worldwide long before the comparatively recent registration date of the disputed domain name. The Complainants also assert that the disputed domain name does not provide a bona fide offering of goods or services and that the Respondent is impersonating the journals offered by the Complainants in order to persuade people to publish articles on its own platform, adding that said platform is designed to confuse customers into thinking it is endorsed by or affiliated with the Complainants. The Panel finds that the Complainants’ above-noted submissions are sufficient to establish the requisite prima facie case. The extremely well-known nature of the Complainants’ rights linked to the publication of its popular and widely-cited journal entitled Nature, extending back for over a century, are a significant factor. The Panel has not required to consider the Complainants’ additional submissions regarding the Respondent’s alleged predatory publishing, breach of ethical standards and/or breach of copyright, and makes no finding in those respects. As the Complainants have established a prima facie case, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests in the disputed domain name. The Respondent’s case consists of a broad denial of the Complainants’ submissions together with an explanation that the Respondent is a start-up organization in the scientific publishing field and that the disputed domain name represents its legal name. This case must be set against the very substantial reputation and longstanding use of the Complainants’ NATURE mark in the same line of business as that adopted by the Respondent. It is inconceivable to the Panel that the Respondent would have been unaware of the Complainants’ rights before it registered the disputed domain name and subsequently incorporated its business. What is more, the Respondent does not deny such prior knowledge of the Complainants and, on the contrary, comments upon the Complainants’ alleged market monopoly and their peer review processes, which in itself indicates both an awareness of the Complainants’ extensive rights in the relevant marketplace and a probable intention to set up and to operate in competition with them. In the circumstances of this case, the Respondent’s choice of name “Nature Library”, recently recast as “Natur Library”, seems to the Panel to be calculated to take unfair advantage of the Complainants’ rights. In the Panel’s view, the present use of the disputed domain name is highly likely to cause confusion to the substantial body of consumers who are already familiar with the Complainants’ marks and considerable activities in the field of academic publishing. The Respondent observes, without supporting evidence, that there are more than 400,000 journals available worldwide. This observation on its own does not suggest to the Panel that confusion between the Parties’ respective “Nature” branded publications could be avoided, particularly bearing in mind the extent of the renown of the Complainants’ imprint. The Respondent makes no claim that it is using the word “nature” descriptively, as a dictionary word in connection with its ordinary meaning, or that the term “nature library” is a phrase in ordinary usage. Even if any such claim had been made, it would not be plausible or credible in the face of the Complainants’ extensive and longstanding rights in the NATURE and NATURE RESEARCH marks in the relevant field. The Panel therefore considers that the Respondent’s offering of goods and services under the disputed domain name cannot be considered to be bona fide within the meaning of paragraph 4(c)(i) of the Policy. Considering the Respondent’s case in terms of paragraph 4(c)(ii) of the Policy, the fact that the disputed domain name reflects the Respondent’s legal name, whether before or after its recent change to “Natur Library Limited”, is insufficient on its own to show rights and legitimate interests in the disputed domain name under the Policy. The Respondent would also need to show not simply that it had incorporated under such name but that it was “commonly known” by it. For such a case to be made out, some actual use of the name is required which pre-dates the registration of the disputed domain name (see the discussion in Royal Bank of Canada v. RBC Bank,WIPO Case No. D2002-0672). Here, there is no evidence of any such prior use and indeed the registration of the disputed domain name itself pre-dates the incorporation of the Respondent company by several months. Finally, it may be noted that the Respondent is not suggesting that it is making any legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, in accordance with paragraph 4(c)(iii) of the Policy. It is clear to the Panel that the website associated with the disputed domain name is commercial in nature (for example, the website includes the statement “Contact with us through our representative or submit a business inquiry online”). In all of the above circumstances, the Panel finds that the Respondent has failed to rebut the Complainants’ prima facie case and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(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.” The Complainants’ case on this element focuses on the high level of fame of their NATURE and NATURE RESEARCH marks in the world of academic publishing, the fact that said marks are well-known, and that the Respondent seeks to take unfair commercial advantage from association with these by way of the disputed domain name. The Complainants’ evidence demonstrates to the Panel’s satisfaction that the Complainants’ marks are well-known in the Parties’ chosen line of business. No contrary evidence has been put forward by the Respondent. It follows that, on the balance of probabilities, the Respondent was likely to be aware of such marks when it registered the disputed domain name. Furthermore, the Respondent’s use of the disputed domain name for a website engaging in scientific publishing, bearing in mind the fame of the Complainants’ marks, suggests a bad faith intention to target these. As noted in the preceding section, the Response itself demonstrates the Respondent’s knowledge of the Complainants and their business operations when it refers to their allegedly dominant market position and discusses their peer review practices. It is significant that the Respondent has not only adopted the term “nature” in the disputed domain name but also appears to have duplicated or used close variants of a number of the Complainants’ journal titles. The Panel accepts that such duplication on its own would not necessarily be an indication of bad faith and that there may be limited scope for alternative scientific titles in a crowded field. However, when titles which are notably similar to those of the Complainants’ publications are promoted by way of the disputed domain name incorporating the Complainants’ well-known NATURE mark this seems to the Panel not to be mere coincidence but rather an indicator of deliberate intent on the Respondent’s part constituting bad faith. Such bad faith cannot be cured by a subsequent event such as the renaming and rebranding of the Respondent’s company which, in itself, constitutes a tacit acceptance by the Respondent of the Complainants’ case. In conclusion, the Panel finds that the Respondent has, by using the disputed domain name, intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website, conform to paragraph 4(b)(iv) of the Policy. In making this finding, the Panel has not required to address the Complainants’ submissions regarding the Respondent’s alleged predatory publishing, breach of ethical standards and/or breach of copyright. Furthermore, although the Respondent’s registration and use of the disputed domain name causes impermissible confusion with the Complainants’ marks, there is no evidence before the Panel that the Respondent’s selection of a privacy service as the holder of the disputed domain name has facilitated phishing and fraudulent activity, as the Complainants have alleged. In all of these circumstances, the Panel finds that the disputed domain name has been registered and used in bad faith and accordingly that the requirement of paragraph 4(a)(iii) of the Policy has been satisfied. 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 D. S. Lothian
Sole Panelist
Date: December 14, 2020
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