The Complainant is Springer Nature Limited, United Kingdom (“UK”), represented by Stobbs IP Limited, UK.
The Respondent is 南通艾捷意生物科技有限公司 (Na Tong Ai Jie Yi Sheng Wu Ke Ji You Xian Gong Si), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2021, 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, and confirming that the language of the registration agreement as used by the Respondent (the “Registration Agreement”) is Chinese. On the same day, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar. An email regarding the language of the proceeding was also transmitted to the Parties on the same day by the Center. On February 19, 2021, the Center received an email from the Complainant requesting that English be the language of the proceeding. On February 22, 2021, the Complainant filed an amended Complaint reflecting the complete contact details of the Respondent disclosed by the Registrar. The Center received informal communications by email from the Respondent on February 18, 2021 and February 19, 2021. 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 in both Chinese and English, and the proceedings commenced on February 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Parties that the panel appointment process formally commenced on March 18, 2021. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on March 26, 2021. 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 UK-based 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. The Complainant claims that 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 owns an international portfolio of trademarks for SPRINGER NATURE, including, for example, UK trademark registration number 3129573, registered on January 8, 2016 and European Union trademark registration number 015269897, registered on September 13, 2016. The Complainant also has registered trademarks for SPRINGER NATURE in China, where the Respondent resides, such as Chinese trademark registration number 19505692, registered on May 14, 2017 in the Complainant’s former name, Macmillan Publishers Limited. The Complainant also has been operating an official website “www.springernature.com” since 2015. The disputed domain name was created on July 9, 2018. The Complainant submits evidence that the disputed domain name directed to a website promoting professional academic editing, proof-reading, and Chinese-English translation services. On the date of this decision, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain name is identical or confusingly similar to its trademarks for SPRINGER NATURE, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. The Complainant claims that its trademarks are distinctive and used intensively, and submits a prior UDRP decision that has recognized the Complainant’s trademarks’ reputation i.e. Springer Nature Limited v. Registration Private, Domains By Proxy, LLC / Collections Springer Nature,WIPO Case No. D2020-0955. The Complainant particularly submits that there are no justifications for the use of its trademarks in the disputed domain name, and contends that the fact that the Respondent has been using the disputed domain name to promote its academic editing, proof-reading, and Chinese-English translation services is proof that he has registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions substantively. The Respondent merely sent an email to the Center claiming it did not understand the situation and it never violated any laws. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The language of the Registration Agreement is Chinese, and the Complaint is filed in English. On February 18, 2021, the Center notified the Parties that the language of the Registration Agreement is Chinese, and invited the Parties to comment on the language of the proceeding. The Complainant confirmed its request that the language of the proceeding be English on February 19, 2021. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits. The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the fact that the disputed domain name consists of English words and Latin scripts; the fact that all communications from the Center have been sent in English and Chinese to the Parties, and the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while he had the right to do so in Chinese or English); the fact that the Respondent claimed on its website resolving from the disputed domain name that it is a professional editing, proof-reading, and Chinese-English translation service provider, which proves the Respondent has good command of English, and the fact that Chinese as the language of the proceeding could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English. 6.2. Discussion and Findings on the Merits The Policy requires the Complainant to prove three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has shown that it has valid rights in the mark SPRINGER NATURE based on its extensive use and registration of the same as a trademark globally. As to the identity and confusing similarity, the disputed domain name consists of the Complainant’s registered trademark SPRINGER NATURE in its entirety. The applicable generic Top-Level Domain (“gTLD”) “.online” in this case is viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s registered trademark SPRINGER NATURE, as its only distinctive feature. Accordingly, the Panel rules that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark SPRINGER NATURE. The Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests On the basis of the evidence and arguments submitted, the Panel holds that the Complainant has made out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks, carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain name. On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain name. Given the distinctiveness and prior registration of the Complainant’s trademarks, the Panel holds that the registration of the disputed domain name, clearly targeting the Complainant’s trademarks, was obtained in bad faith. Furthermore, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owns the registered trademarks for SPRINGER NATURE and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name. As to use of the disputed domain name in bad faith, the disputed domain name once linked to an online store promoting the Respondent’s professional academic editing, proof-reading, and Chinese-English translation services, and that indicates its intention to use the Complainant’s trademarks and reputation to attract Internet users for the Respondent’s commercial gain. Moreover, the Respondent’s above services are identical or confusingly similar to the Complainant’s relevant services. It further shows the Respondent knows the Complainant, its products, services and its trademarks, and the Respondent intends to mislead consumers that the Respondent is somehow connected, associated with, authorized or endorsed by the Complainant, which is not the case. Currently the disputed domain name resolves to a blank webpage. UDRP panels have found that this would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. The Panel finds so under the circumstances of this case. The Panel has reviewed all elements of this case, and in particular: the identity or confusing similarity of the disputed domain name to the Complainant’s trademarks; the distinctiveness and reputation of the Complainant’s trademarks; the fact that the Respondent linked the disputed domain name to a website promoting professional academic editing, proof-reading and English-Chinese translation services for commercial gain; the fact that after removing the contents of the original website, the Respondent is still operating another website “www.aje-cn.com” which shows similar contents; and the fact that the Respondent directly competes with the Complainant by offering the above identical or similar services. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith. Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 Deanna Wong Wai Man
(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.
Sole Panelist
Date: April 8, 2021
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