ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Camelot UK Bidco Limited and Clarivate PLC v. Carolina Rodrigues, Fundacion Comercio Electronico Case No. D2022-2404 1. The Parties The Complainant is Camelot UK Bidco Limited, United Kingdom, and Clarivate PLC, United Kingdom, both internally represented. The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.1 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2022. On July 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2022, 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 July 7, 2022, 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 amendment to the Complaint July 8, 2022. 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 the Respondent of the Complaint, and the proceedings commenced on July 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 9, 2022. 1 The disputed domain name was initially registered through a privacy service. page 2 The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 17, 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 Background The Complainant is a group of providers of data, information, workflow solutions and domain expertise, that operates under the mark CLARIVATE. The Complainant Camelot UK Bidco Limited owns numerous CLARIVATE trademark registrations in different countries and regions, such as the International trademark No. 1367310, registered on March 22, 2017; the European Union trademark No. 15886419, registered on June 14, 2017; and the United States of Amercia trademark Nos. 5581365 and 6357339, registered respectively on October 9, 2018 and on May 18, 2021. The Complainant Camelot UK Bidco Limited also owns all the domain name registrations comprising the trademark CLARIVATE, e.g., . The Complainant Clarivate Plc is using both trademarks and domain names registrations. The Respondent registered the disputed domain name on March 23, 2022. The Panel accessed the disputed domain name when drafting this decision, at which time it was linked to a website hosting a pay-per-click ("PPC") advertising scheme. At the time of filing of the Complaint, it also resolved to a PPC website. 5. Parties' Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant Camelot UK Bidco Limited is the owner of at least 139 CLARIVATE trademarks that enjoy global reputation and recognition and are registered worldwide. The disputed domain name contains the mark in its entirety, simply transposing the letters "v" and "i" in the middle and adding the generic TopLevel Domain ("gTLD") ".com". Such a practice is equivalent to typosquatting and does not decrease the confusing similarity between the mark and disputed domain name. The extension ".com" present in the disputed domain name is not to be taken into consideration when examining the identity or confusing similarity between the Complainant's trademark and the disputed domain name. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. It is the consensus view among UDRP panels that if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, it is then up to the Respondent to demonstrate rights or legitimate interests in the disputed domain name. The Complainant is not affiliated with the webpage at the disputed domain name nor with the Respondent in any way. The Respondent has not been authorized by the Complainant to use and/or register its trademark or to seek registration of any domain name incorporating the said mark. Moreover, the disputed domain name is so similar to the Complainant's already known CLARIVATE trademark that the Respondent cannot reasonably contend that it was intending to develop a legitimate activity through the disputed domain name. A simple Internet search would have revealed the presence of CLARIVATE trademark and its affiliated domain name . The fact that the Complainant's trademark registration predates the registration of the disputed domain name is another reason why the Respondent ought to have known about the existence of the CLARIVATE trademark. Upon information and belief, the Respondent did not demonstrate use of or make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Instead, the disputed domain name, which resolves to a website displaying links related to "Journal Sci", page 3 "Curriculum CV" and "Curriculum Vitae Template", is misrepresented as being the official website of the Complainant, while the inclusion of the Complainant's slightly different word trademark on the website clearly indicates that the Respondent was indeed aware of the existence of the Complainant's marks. The Complainant is already known for offering Master Journal Lists by using the CLARIVATE trademark. The Respondent is trying to attract traffic to its website by misleading the users into believing that the disputed domain name is affiliated to the Complainant's trademark. Another evidence that the disputed domain name is not being used for bona fide offerings can be found in the fact that the disputed domain name is being used to display pages generated PPC links or to divert Internet users to websites operating from other domain names on which such pages are displayed, what cannot be perceived as a bona fide offering of goods or services. Moreover, the manner of use of the CLARIVATE trademark falsely indicates that the Respondent is endorsed by the Complainant. A worldwide search conducted by the Complainant disclosed no applications or registrations for the CLARVIATE trademark under the Respondent's name as well as no application or registration for CLARIVATE which additionally confirms that the Respondent has no rights or legitimate interests in the disputed domain name. Also, the Respondent is a cybersquatter with a proven history of lost cases before the UDRP panels. At the date of filing the Amendment to the Complaint, the Respondent has already been in 300 UDRP cases, most of which were filed in the last two years. Many of the previous UDRP cases include the Respondent's use of domain names for commercial PPC links, which is confusing and disruptive in that visitors to the website might reasonably believe services offered on that website are connected to or approved by the trademark or service mark owner. - The disputed domain name was registered and is being used in bad faith. The mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Since the disputed domain name is so obviously connected with the well-known CLARIVATE trademark, the very use of such disputed domain name represents opportunistic bad faith per se. Moreover, a quick search for CLARIVATE trademarks would have revealed to the Respondent the existence of the Complainant and its trademarks. The Respondent's failure to do so is a contributory factor to its bad faith. Apart from registration of the disputed domain name in bad faith, there are elements that should be put forward to support the finding that the Respondent also uses the disputed domain name in bad faith. The disputed domain name is confusingly similar to the Complainant's well-known trademark CLARIVATE and previous UDRP panels have ruled that a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site. Furthermore, previous UDRP panels have found that configuration of email servers (MX records) on the disputed domain name constitutes use in bad faith since it represents a real risk that the Respondent may be engaged in a phishing scheme, aimed at deceiving Internet users into believing that they were dealing with the Complainant. The Respondent is trying to benefit from the fame of the Complainant's mark. It is evident that the Respondent has registered and used the typosquatted disputed domain name to intentionally attract, for commercial gain, Internet users to the PPC website by using the disputed domain name in a manner that confuses and misleads Internet users. Also, the disputed domain name is being offered for sale for at least USD 899, an amount that is clearly in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name. Finally, the Respondent has engaged in a pattern of conduct of registering third party famous trademarks as domain names. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following 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 page 4 (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. Identical or Confusingly Similar The Panel has no doubt that CLARIVATE is a trademark directly connected with the Complainant's services. Annex 7 to the Complaint shows numerous trademark registrations for CLARIVATE, obtained since at least 2016. The disputed domain name contains the mark in its entirety, simply transposing the letters "v" and "i" and adding the gTLD ".com". Such misspelling of the Complainant's trademark is a practice commonly called "typosquatting", a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors eventually made by Internet users seeking a complainant's website (see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201). It is also already well established that the addition of a gTLD such as ".com" is typically irrelevant when determining whether a domain name is identical or confusingly similar to a complainant's trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is 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 at issue. Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorized the use of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. The Respondent has not indicated any reason to justify why it has chosen the specific term "clarviate" to compose the disputed domain name. There is also no evidence to demonstrate the Respondent's intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant has showed that the Respondent has been using the disputed domain name for a website displaying PPC links. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. page 5 C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or (ii) the respondent 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 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 online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent (in 2022), the trademark CLARIVATE was already registered and directly connected to the Complainant's services. Besides the gTLD ".com", the disputed domain name differs from the Complainant's mark by merely changing the position of two letters. The trademark CLARIVATE has no dictionary meaning. The Respondent had the opportunity to justify the adoption of the misspelling of this distinctive term in the disputed domain name. It preferred to remain silent. Therefore, the Panel concludes that it would not be feasible to consider that the Respondent, at the time of the registration of the disputed domain name, was not aware of the Complainant's trademark, and that the adoption of the term "clarviate" could be a mere coincidence. Also, the disputed domain name is currently linked to a website presenting a PPC advertising scheme. In doing so, the Respondent: (i) creates a likelihood of confusion with the Complainant's trademark; and (ii) potentially obtains revenue from this practice. Former UDRP decisions have considered this type of use of a domain name sufficient to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. Finally, the Complainant has showed that the Respondent is offering the disputed domain name for sale for an amount in excess of the cost of registering it, and the Respondent was the respondent in many UDRP cases in which the panels found the Respondent's bad faith in registering and using the domain names incorporating the trademarks owned by third parties. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy. page 6 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 be transferred to the Complainant Camelot UK Bidco Limited. /Rodrigo Azevedo/ Rodrigo Azevedo Sole Panelist Date: September 1, 2022
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