Complainant is Usborne Publishing Limited, United Kingdom, represented by Co-Counsel Limited, United Kingdom.
Respondent is 田哲 (zhe tian), China.
2. The Domain Name and RegistrarThe disputed domain name (the “Domain Name”)
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 21, 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 Complainant on December 21, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint in English on December 22, 2021.
On December 21, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 22, 2021, Complainant submitted a request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 22, 2022.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 28, 2022. 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 BackgroundComplainant is a publisher of children’s books and conducts business worldwide under the USBORNE mark. It is the owner of several trademark registrations for the Usborne mark, including:
- United Kingdom trademark registration number UK00003473385 for the USBORNE word mark registered on August 9, 2020;
- United Kingdom trademark registration number UK00900339242 for the USBORNE word mark registered on September 3, 1999;
- United Kingdom trademark registration number UK00002566143 for the USBORNE word mark registered on April 8, 2011;
- United States of America trademark registration number 4,173,509 for the USBORNE word mark, registered on July 17, 2012;
- United States of America trademark registration number 2,233,673 for the USBORNE word mark, registered on March 23, 1999;
- Chinese trademark registration number 18312729 for the USBORNE word mark, registered on December 21, 2016;
- Chinese trademark registration number 18312728 for the USBORNE word mark, registered on December 21, 2016; and
- Chinese trademark registration number 18312727 for the USBORNE word mark, registered on December 21, 2016.
Complainant’s founder and the managing director of Usborne Publishing is Peter Usborne. Peter Usborne’s name is associated with Complainant’s business and his profile is featured on Complainant’s “www.usborne.com” website and other social media.
Complainant sent a letter of complaint to the Registrar on August 24, 2021. The Registrar placed the Domain Name on a locked status, however the Domain Name remains registered to Respondent.
The Domain Name was registered on March 1, 2021, and at the time of the Decision, the Domain Name reverts to an error page.
5. Parties’ Contentions A. ComplainantComplainant contends that (i) the Domain Name is identical and confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the USBORNE marks and own domain names incorporating the USBORNE marks. Complainant contends Respondent registered and is using the Domain Name to confuse Internet users looking for bona fide and well-known USBORNE products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the ProceedingThe Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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.
Complainant submitted its original Complaint in English. In its Complaint, email communication to the Center on December 22, 2021, and amended Complaint, Complainant requests that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
Complainant contends that the Domain Name is comprised of English (Latin) characters, which suggests that Respondent’s familiarity with English. Complainant also contends that it is located in England and its founder’s name, which is being used in the Domain Name, is also English. Complainant contends that it would be unfairly burdensome for Complainant to translate and conduct the proceeding in Chinese and would also cause unnecessary delay in the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that the Center notified the Parties in both Chinese and English of the language of the proceeding as well as notify Respondent in both Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a Response. Further, the Panel notes that the Domain Name was registered using Latin characters.
The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese.
Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.2. Substantive IssuesUnder paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,
WIPO Case No. D2006-0340.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of their rights in the USBORNE marks, as noted above. Complainant has also submitted evidence, which supports that the USBORNE marks are widely-known trademarks and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the USBORNE marks.
With Complainant’s rights in the USBORNE mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,
WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s USBORNE marks. These marks, which are fanciful and inherently distinctive, are recognizable in the Domain Name. The incorporation of the USBORNE mark with the addition of the term “peter” – which is the first name of Complainant’s found Peter Usborne – in the Domain Name does not prevent a finding of confusing similarity between Complainant’s trademarks and the Domain Name registered by Respondent.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,
WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the USBORNE marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the USBORNE trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the USBORNE marks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent operated the Domain Name. However, upon filing a complaint with the Registrar, the Domain Name was placed on a locked status by the Registrar. The evidence demonstrates that at the time of the Decision, the Domain Name resolves to an error page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,
WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Further, the nature of the Domain Name carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1).
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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 on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the USBORNE marks long predate the registration of the Domain Name by Respondent, more specifically, the USBORNE marks have been registered since at least as early as 1996, well before Respondent registered the Domain Name on March 1, 2021. Complainant is also well established and known. Indeed, the record shows that Complainant’s USBORNE marks and related services are widely known and recognized. Therefore, and also noting the composition of the Domain Name itself, Respondent was likely aware of the USBORNE marks when it registered the Domain Name, or knew or should have known that the Domain Name was confusingly similar to Complainant’s marks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,
WIPO Case No. D2016-1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,
WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,
WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,
WIPO Case No. D2006-0007.
Further, the registration of the Domain Name incorporating Complainant’s USBORNE mark with the addition of the name “Peter” – which is the first name of Complainant’s founder and managing director Peter Usborne – suggests Respondent’s actual knowledge of Complainant’s rights in the USBORNE mark at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that at the time of the filing of the Complaint, the Domain Name was placed on a locked status. At the time of the Decision, the Domain Name resolved to an error page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,
WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. See section 3.3 of the WIPO Overview 3.0.
Here, the present circumstances, including the distinctiveness and reputation of the USBORNE marks, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good faith use to which the Domain Name may be put, support a finding of bad faith. Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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
Kimberley Chen Nobles
Sole Panelist
Date: February 7, 2022