ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Springer Nature Limited, Springer-Verlag GmbH v. murtuza mehdi Case No. D2023-0774 1. The Parties The Complainants are Springer Nature Limited, United Kingdom, and Springer-Verlag GmbH, Germany, represented by Stobbs IP Limited, United Kingdom. The Respondent is murtuza mehdi, Pakistan. 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 February 21, 2023. On February 22, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 23, 2023, 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 February 24, 2023. 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 March 1, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 22, 2023. The Center appointed Ganna Prokhorova as the sole panelist in this matter on March 27, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainants own of a portfolio of trademarks, which are registered around the world and which consist of or include the trademark SPRINGER. The earliest trademark registrations are: − European Union Trade Mark No. 003745544, SPRINGER, registered on July 15, 2005, for goods in classes of 9, 16 and services of 41; − United States Trademark No. 3118657, SPRINGER, registered on July 25, 2006, for goods in classes 9, 16 and services of 41. The Complainants and its company group own and have been using the domain names since 2009 and since 2015 as their main websites. The disputed domain name was registered on December 12, 2022, and currently resolves to an active website purportedly offering academic editing and proofreading services. 5. Parties' Contentions A. Complainant The Complainants are famous for their global academic and educational publishing services for the needs of researchers, students, teachers, and professionals around the world. The Complainants manage the Springer Nature portfolio of academic journals, including the Nature journal (published since 1869), Scientific American, and the respected Nature Research portfolio. Each year, the Complainants handle more than 1 million article submissions and publishes around 300,000 articles across almost 3,000 journals and 13,000 books. The Complainants serve one of the largest open access research publishers and home to Scientific Reports, one of the world's largest open access journals. In 2018, Springer Nature's content platforms were visited almost 2 million times per day. In 2019, the Complainants generated revenue of EUR 1.72 billion. The Complainants assert that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainants assert that: (1) the disputed domain name is confusingly similar to the Complainants' registered SPRINGER trademark; (2) the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainants have never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name that included its trademark; (3) the disputed domain name has been registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. The Complainants request the Panel to issue a decision finding that the disputed domain name be transferred to the Complainants, in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainants' contentions. page 3 6. Discussion and Findings 6.1 Procedural Issue A. Consolidation of Multiple Complainants The Complaint was filed by two Complainants against a single Respondent. Neither the Policy nor the Rules expressly provides for or prohibits the consolidation of multiple complainants. In this regard, section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states: "In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation." As the Complainants in this case are affiliated companies, the Panel finds it would be both equitable and procedurally efficient to allow the Complainants to proceed with a single consolidated Complaint. The Complainants are referred to collectively as "the Complainant" in this Decision below. 6.2 Substantive issues To succeed, the Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following: (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 bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Moreover, the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein. A. Identical or Confusingly Similar According to paragraph 4(a)(i) of the Policy, it should be established that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. The Complainant has demonstrated ownership of its SPRINGER trademark in various jurisdictions. Therefore, the Panel is satisfied that the Complainant has registered trademark rights in the SPRINGER mark. See WIPO Overview 3.0, section 1.2.1. With the Complainant's rights in the SPRINGER trademark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant's mark. 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". See WIPO Overview 3.0, section 1.7. This test typically page 4 involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. The Complainants submit that the disputed domain name is confusingly similar to the Complainant's mark SPRINGER. The disputed domain name includes the entirety element of the Complainant's mark SPRINGER. As per Section 1.7 of the WIPO Overview 3.0, the disputed domain name should normally be regarded confusingly similar. Merely adding the term "publications" does not prevent a finding of confusing similarity between the disputed domain name and the mark under the Policy, paragraph 4(a)(i). See WIPO Overview 3.0, section 1.8. Bearing that in mind, the Panel accordingly holds the disputed domain name is confusingly similar to the Complainant's trademark SPRINGER. The generic Top-Level Domain ".com" should generally be ignored when assessing confusing similarity as established by prior UDRP decisions. Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of "proving a negative", in particular as the evidence needed to show the Respondent's rights or legitimate interests is often primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy. The Complainant made sufficient statements in order to demonstrate that the Respondent would have no rights or legitimate interests into the disputed domain name. In particular, the Panel notes that the case file does not show that the Respondent would be known as "springer" or "springer publications" or that a legitimate business would be run by the Respondent under the disputed domain name. The Panel has found out that the Respondent is not a licensee of the Complainant and not affiliated with the Complainant in any way. The Complainant has not granted any authorization for the Respondent to make use of its trademarks in a disputed domain name or otherwise. Moreover, according to the case file, there is no evidence the Respondent has or intends to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not provided any rebuttal of the Complainant's prima facie case and has therefore not proved rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. page 5 The Panel finds that the Complainant has demonstrated the Respondent's bad faith registration and use of the disputed domain name. The Complainant holds multiple trademark registrations for the mark SPRINGER worldwide that predate the registration of the disputed domain name by approximately 20 years. Given the level of reputation the Complainant has acquired in its SPRINGER trademark in connection with publishing (particularly academic publishing), English editing and translation services, which, in particular, has been recognized and upheld in previous UDRP decisions involving the Complainant (see Springer Nature Limited v. Registration Private, Domains By Proxy, LLC / Collections Springer Nature, WIPO Case No. D2020-0955), and the fact that the website to which the disputed domain name resolves purportedly offers similar editing and publishing services, it is inconceivable that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademark SPRINGER. Hence, the Panel finds that the Respondent knew or should have known of the Complainant's trademark and deliberately registered the confusingly similar disputed domain name (see section 3.2.2, WIPO Overview 3.0). Furthermore, given the lack of evidence indicating any rights or legitimate interests in the disputed domain name on the part of the Respondent, and the deliberate attempt to deceive, and potentially defraud, consumers through use of the disputed domain name, it is inconceivable that the Respondent had any good faith intention at the time of registering the disputed domain name. Therefore, based on the in-depth analysis of the Complaint and the evidence submitted by the Complainant, the Panel has established that the Respondent's intent in registering the disputed domain name was in fact to profit from or otherwise exploit the Complainant's trademark. The Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name and the Panel does not find any such use plausible. In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) of 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, , be transferred to the Complainant. /Ganna Prokhorova/ Ganna Prokhorova Sole Panelist Date: April 13, 2023
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