ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION RELX Group PLC v. Jack Hamilton Case No. D2022-3452 1. The Parties The Complainant is RELX Group PLC, United Kingdom, represented by Nelson Mullins Riley & Scarborough, L.L.P., United States of America ("United States"). The Respondent is Jack Hamilton, Australia. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2022. On September 16, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 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 (Privacy Service Provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 19, 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 amended Complaint on September 22, 2022. 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 September 26, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 20, 2022. page 2 The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 2, 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 based in the United Kingdom and was formed in 1992 as a joint venture between Reed International plc and Elsevier N.V., focused on scientific, professional, and business publishing of scientific and trade journals and magazines, including the medical journal The Lancet and also having acquired the information service provider LEXIS-NEXIS. The Complainant presently employs over 33,000 people across nearly 40 counties serving customers in more than 180 countries worldwide. The Complainant was initially named Reed Elsevier and then rebranded as RELX in 2015. The RELX trademark has been registered by the Complainant in several jurisdictions (Annex 7 to the Amended Complaint), amongst which: - United States Trademark Registration No. 5,075,594 for RELX, registered on November 8, 2016, in classes 9, 16, 35, 36, 38, 39, 41, 42, 44 and 45; and - International Trademark Registration No. 1262314 for RELX, registered on February 26, 2015, in classes 9, 16, 35, 36, 38, 39, 41, 42, 44 and 45. The disputed domain name was registered on June 25, 2022, and has been used in connection with a website for an alleged chemicals company located in Singapore purportedly selling benzodiazepines, cannabinoids, opioids, and nootropics. Currently no active webpage resolves from the disputed domain name. 5. Parties' Contentions A. Complainant The Complainant asserts to be a multinational information and analytics company operating in four market segments: scientific, technical and medical; risk and business analytics; legal; and exhibitions, having, as of 2020, a market capitalization of USD 48.3bn. The Complainant further asserts that during the 1990s, it grew to be a leading publisher and information provider with principal operations in Europe and North America, having the RELX trademark become internationally well-known, as a result of the Complainant's history and its continuous and extensive worldwide use thereof in connection with the Complainant's renowned products and services. The Complainant contends that the disputed domain name was used by the Respondent to host a website for an alleged chemicals company located in Singapore purportedly selling benzodiazepines, cannabinoids, opioids, and nootropics which are controlled substances under Singapore's Misuse of Drugs Act and the trafficking, manufacture, import, export, possession, and consumption of these substances is illegal under Singapore law (Annexes 10 and 11 to the Amended Complaint). In addition to that, the Complainant notes that the address indicated on the website that resolved from the disputed domain name (xxx Bxxxx Road, xxxxxx, Singapore) is that of a condominium complex (Annex 12 to the Amended Complaint) and that the Respondent only accepted payments via cryptocurrency for its offered products, having the Respondent associated multiple email servers with the disputed domain name (Annex 13 to the Amended Complaint). page 3 According to the Complainant, its Elsevier business unit provides products and services directly designed for and targeting the drug, pharmaceutical, and chemical industries, such as the Elsevier Gold Standard Drug Database, a database of drug manufacturer-reported data and clinical content (Annex 15 to the Amended Complaint), as well as a Drug Information podcast and the ClinicalKey search engine and database providing a clinical search engine and point-of-care database that provides access to thousands of online resources in the field of clinical pharmacology, among others (Annexes 15 and 16 to the Amended Complaint), thus being the term "chemical" directly connected and associated with various product and service offerings of the Complainant and the disputed domain name confusingly similar to the Complainant's well-known trademark. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names given that: (i) the Respondent has no prior rights or legitimate interest in the disputed domain name; (ii) the Complainant has not authorized the Respondent to use the RELX trademark, nor is the Respondent a licensee of the RELX trademark; (iii) the website that resolved from the disputed domain name indicated that the Respondent was purportedly doing business as RELX Chemical, but there is no record of any company in Singapore registered under the name RELX Chemical (Annex 20 to the Amended Complaint); and (iv) the Respondent appears to have used the disputed domain name in connection with conducting illegal activities (purportedly offering for sale illegal substances in Singapore, only accepting cryptocurrency as payment and indicating an address that corresponds to a condominium complex in Singapore and not a commercial office), what cannot characterize a bona fide offering of goods and services under the Policy. As to the registration of the disputed domain name in bad faith the Complainant submits that the Respondent knew of, or should have known of, the Complainant's prior existing rights in the well-known, highly distinctive, and coined RELX trademark when registering the disputed domain name and using it in connection with conducting illegal activities, namely the sale and distribution of controlled substances which are reputed an illegal activity in Singapore. The Complainant further argues that the Respondent's intent was to use the disputed domain name to attract, for the Respondent's own commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant's RELX trademark so as to trade off the goodwill and reputation associated therewith. Furthermore, the Complainant sent a cease-and-desist letter to the Respondent on July 27, 2022, outlining its rights but the Respondent did not reply, what should be regarded as further evidence to support an inference of the Respondent's bad faith registrant and use of the disputed domain name, in addition to the choice to retain a privacy protection service and indicate what appears to be a false address (Annex 24 to the Amended Complaint). B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: page 4 (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar The Complainant has established rights in the RELX trademark, duly registered in various countries. The Panel finds that the disputed domain name reproduces the Complainant's mark with the addition of the term "chemical", which does not prevent the mark from being recognizable within the disputed domain name and thus being confusingly similar therewith. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a "reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name". (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), sections 1.7). The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent's rights to or legitimate interests in a disputed domain name. These circumstances are: (i) before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant to first make a prima facie case against the Respondent. In that sense, the Complainant indeed states that it has not authorized the Respondent to use the RELX trademark, nor is the Respondent a licensee of the RELX trademark. Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel's finding of the absence of rights or legitimate interests. The website that previously resolved from the disputed domain name indicated that the Respondent was page 5 purportedly doing business as RELX Chemical, however the Complainant provided evidence that there is no record of any company in Singapore registered under that name. Another element to consider is the past use of the disputed domain name in connection with the offer for sale of substances which the Complainant alleges are illegal in Singapore, which makes it more difficult to conceive which rights or legitimate interests the Respondent would have in a domain name that reproduces in its entirety the Complainant's well-known trademark with a term directly connected or associated with the Complainant's products and services. Moreover, currently no active webpage resolves from the disputed domain name. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of: (i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or (ii) the respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other 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. Based on the available record, the Panel finds that the Respondent was aware of and targeted the Complainant in bad faith. The Panel finds that the prior use of the disputed domain name is evidence that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's RELX mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. Currently no active webpage resolves from the disputed domain name. Past UDRP panels have already dealt with the question of whether the "passive holding" of a domain name could constitute bad faith. Section 3.3 of the WIPO Overview 3.0 states that "[.] panelists have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put." page 6 In the present case, the current passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith in view of the following circumstances: (i) the prior use of the disputed domain name in connection with the offer for sale and distribution of controlled substances which are reputed an illegal activity in Singapore, accepting cryptocurrency and indicating what appears to be a false address; (ii) Respondent has provided no evidence whatsoever of any plausible contemplated good faith use of the disputed domain name; (iii) the absence of reply to the warning letter the Complainant sent before filing the Complaint (Annex 18 to the Amended Complaint); (iv) the use of a false address in the WhoIs data; and (v) the choice to retain a privacy protection service. Taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), it is not possible to conceive of any plausible contemplated use of the inherently misleading disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law. For the reasons stated above, the Respondent's conduct amounts, in this Panel's view, to bad faith registration and use of the disputed domain name. 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. /Wilson Pinheiro Jabur/ Wilson Pinheiro Jabur Sole Panelist Date: November 16, 2022
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