The Complainant is Macmillan Publishers International Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Macmillan, Jennifer Tate, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 2021, 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 August 17, 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, and the proceedings commenced on August 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on September 20, 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 BackgroundThe Complainant is company incorporated in the United Kingdom which is part of the Macmillan group of publishing companies, first created in 1843. The Macmillan group has operations in over 70 countries and in 2019 the Complainant had an annual turnover of 140 million pounds sterling with net assets of 40 million pounds sterling. The Complainant promotes its products under a mark consisting of the word MACMILLAN (the “MACMILLAN Mark”) through various methods including catalogues, book covers and its websites, including its United States website at “www.us.mcamillan.com” (“Complainant’s Website”).
The Complainant holds trade mark registrations in various jurisdictions for the MACMILLAN Mark including German registered mark no. DD643144, registered August 20, 1980 for various goods and services in classes 9, 16 and 28.
The Domain Name was registered on July 18, 2021. The Domain is presently inactive but prior to the commencement of proceedings resolved to the Complainant’s Website. The evidence in the Complaint is that the Domain Name has been used by the Respondent as an email address in the address format “[name]@macmillanpublishing.com” from which the Respondent sends emails purporting to be official emails from an employee of the Complainant seeking services on behalf of the Complainant.
5. Parties’ Contentions A. Complainant(i) that the Domain Name is identical or confusingly similar to the Complainant’s MACMILLAN Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the MACMILLAN Mark, having registered the MACMILLAN Mark in various jurisdictions. The Domain Name consists of the MACMILLAN Mark in its entirety with the addition of the descriptive term “publishing”.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the MACMILLAN Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather, the Domain Name has been used for emails impersonating the Complainant, which does not grant the Respondent rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name is being used to create phishing emails that impersonate the Complainant in order to perpetuate fraud on third parties.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarTo prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the MACMILLAN Mark, having registrations for the MACMILLAN Mark as a trade mark in Germany and other jurisdictions.
The Domain Name consists of the MACMILLAN Mark with the term “publishing” (the Top-Level Domain “.com” being discounted for the purposes of comparison). The addition of a term (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the Domain Name is confusingly similar to the Complainant’s MACMILLAN Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsTo succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a 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 trade mark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the MACMILLAN Mark or a mark similar to the MACMILLAN Mark.
There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. While the Domain Name is registered to an individual known as “Macmillan, Jennifer Tate”, the Panel finds, on the balance of probabilities, that this name is simply a fake name, designed to give some implied legitimacy to the Respondent. The contact details provided by the Respondent are fake in that they are the address of the Complainant’s New York office and the Complainant has confirmed (and the Respondent has provided no evidence to suggest otherwise) that there is no individual known as Jennifer Tate Macmillan at that location.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Simply redirecting the Domain Name to the Complainant’s Website is not a bona fide offering of goods or services or a legitimate noncommercial use. Furthermore, it appears from the evidence submitted by the Complainant that the Respondent has used the Domain Name to send emails passing itself off as an employee of the Complainant with the aim of misleading recipients into providing services with the expectation that they would be paid by the Complainant. Such conduct is fraudulent and is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the prima facie case that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith (Policy, paragraph 4(b)):
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(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 the Respondent’s website or location.
The Panel finds that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Domain Name resolved to the Complainant’s Website and has been used to create an email account from which the Respondent sent emails purporting to be from an (named and actual) employee of the Complainant. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant. The registration of the Domain Name in awareness of the Complainant and its rights in the MACMILLAN Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to send emails seeking to mislead recipients as to the identity of the sender for its own commercial gain. Such conduct is deceptive, illegal, and in previous UDRP decisions has been found to be evidence of registration and use in bad faith, see The Coca-Cola Company v. Marcus Steiner,
WIPO Case No. D2012-1804. The Panel finds that the Respondent is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Nicholas Smith
Sole Panelist
Date: September 27, 2021