ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Macmillan Publishers International Limited v. Stafford Aslam Case No. D2025-1442 1. The Parties The Complainant is Macmillan Publishers International Limited, United Kingdom, represented by NORDEMANN, Germany. The Respondent is Stafford Aslam, Pakistan. 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 April 8, 2025. On April 9, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2025, 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 (UNKNOWN) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 11, 2025, 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 on April 14, 2025. 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 April 16, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2025. On May 1, 2025, the Respondent sent an email communication to the Center mentioning: “…we have taken appropriate action and successfully released the domain.” Pursuant to paragraph 6 of the Rules, on May 15, 2025, the Center informed the Parties that it would proceed with the panel appointment process.
page 2 The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 19, 2025. 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 global book publishing company with prominent imprints around the world. It publishes a broad range of award-winning books for children and adults in all categories and formats. The Complainant is a part of Holtzbrinck Publishing Group, a large family-owned media company headquartered in Stuttgart, Germany. The Complainant has rights in a number of trademarks, including but not limited to, the following: - European Union word mark MACMILLAN, registered on March 18, 1998 under no. 00066225; - United Kingdom word mark MACMILLAN, registered on October 12, 1978 under no. UK00001102865; - Germany word mark MACMILLAN, registered on April 24, 1980 under no. 1001188; - Switzerland word mark MACMILLAN, registered on May 21, 1993 under no. 401760; and - Mexico word mark MACMILLAN, registered on November 30, 2009 under no. 1133104. The Complainant offers products online, inter alia on the website at the domain name . The Complainant also owns, inter alia, the domain names and , and a large number of other domain names incorporating the word MACMILLAN which direct to the websites of the Complainant. The disputed domain name was registered on January 21, 2025. It resolves to an English-language website which uses the trademark of the Complainant in giving the impression that it is an official website and offering ghost writing and book design services. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, an email was sent to the Center on June 1, 2025, stating the following: “[…] We have thoroughly reviewed the domain dispute report regarding the domain macmillanbookpublisher.com. After discussing the matter in detail with our client, for whom the domain was originally reserved in the USA, we have taken appropriate action and successfully released the domain. For your reference, please find the attached screenshot confirming this action. We trust this resolution will help move the matter forward smoothl […]”. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
page 3 (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. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or 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”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the MACMILLAN mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms “book” and “publisher” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel further finds that the composition of the disputed domain name consisting of the Complainant’s mark plus the terms “book” and “publisher” together with the content of the disputed domain name carries a risk of implied affiliation and effectively suggest sponsorship or endorsement by the Complainant. Additionally, UDRP panels have held that the use of a domain name for illegal activity (e.g., impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a
page 4 respondent. See WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Based on the undisputed information and evidence provided by the Complainant, the Panel finds that there is bad faith registration. At the time of registration of the disputed domain name, the Respondent was or should have been aware of the Complainant and the trademarks, since: - the Respondent’s registration of the disputed domain name occurred 46 years after the registration of the trademark by the Complainant. - the Respondent has incorporated the trademarks on the website at the disputed domain name including the Complainant design mark and its red color; - a simple trademark register search, or even an Internet search, prior to registration of the disputed domain name would have informed the Respondent of the existence of the trademarks. The Panel concludes that 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. The paragraph 4(b)(iv) of the Policy is applied here, and see also WIPO Overview 3.0, section 3.1.4. The Panel finds that the Complainant has established the third element 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. /Pablo A. Palazzi/ Pablo A. Palazzi Sole Panelist Date: June 4, 2025.
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