WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Encyclopaedia Britannica Inc. v Shedon.com
Case No. D2000-0753
1. The Parties
Complainant: Encyclopaedia Britannica Inc of 310 South Michigan Avenue, Chicago IL 60604, USA
Respondent: Shedon.com of 42 Hakukia Street, Rishon Lezion, NA 75549, Israel
2. The Domain Name and Registrar
Domain Name: britannnica.com
Registrar: Tucows.com Inc
3. Procedural History
The Complaint was filed on July 12, 2000. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with Rules, paragraph 2(a) however no formal Response has been received. The Respondent did, however, on August 31, 2000 send an e mail to the Center stating that he has no interest in keeping the name and wished to cancel it or transfer it to the Complainant. The Complainant has chosen to proceed with the Complaint
The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel's decision was September 14, 2000.
4. Factual Background
The Complainant is the owner of many trademark registrations for BRITTANICA and/or ENCYCLOPAEDIA BRITTANICA in the US, Benelux, Canada, France, Germany, Italy, Switzerland, the United Kingdom and the European Community. It is also the owner of many domain names containing these marks.
5. Parties' Contentions
The Complainant's contentions are as follows:
(a) Since the 18th Century, Complainant has been engaged in the manufacturing, sales and distribution of encyclopedia, dictionaries, atlas and other reference-related goods and services.
(b) Since the late 1870's, Complainant has sold encyclopedia, dictionaries, atlas and other reference-related goods and services throughout the United States under the ENCYCLOPAEDIA BRITANNICA mark.
(c) Since 1934, Complainant has sold junior encyclopedia, atlas, and other reference-related goods and services throughout the United States under the BRITANNICA mark.
(d) On February 1, 1984, Complainant filed an application to register BRITANNICA with the United States Patent and Trademark Office, thereby giving constructive notice of Complainant's use of that mark. On December 18, 1984, Complainant received its first federal registration (Registration No. 1,309,991) for the BRITANNICA mark.
(e) Complainant has also registered or applied to register the following marks with the United States Patent and Trademark Office:
Application No./Registration No.
Ser. No. 75/802,438
Reg. No. 2,287,468
Reg. No. 1,506,869
BRITANNICA BOOK OF THE YEAR
Reg. No. 0,825,337
BRITANNICA INSTANT RESEARCH SYSTEM
Reg. No. 1,914,712
BRITANNICA ELECTRONIC INDEX
Reg. No. 1,916,204
Reg. No. 1,918,562
BRITANNICA MATHEMATICS SYSTEM DEVELOPING MATHEMATICAL POWER DMP2
Reg. No. 1,936,874
BGGS BRITANNICA GLOBAL GEOGRAPHY SYSTEM GEOGRAPHIC INQUIRY INTO GLOBAL ISSUES
Reg. No. 1,950,971
Reg. No. 2,047,536
BRITANNICA MATHEMATICS IN CONTEXT
Reg. No. 2,267,211
Reg. No. 2,267,981
Reg. No. 0,529,006
(f) The BRITANNICA Registrations are valid, subsisting, and owned by Complainant. Registration Nos. 1,309,991 and 825,337 are incontestable in accordance with 15 U.S.C. § 1064 and are "conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce" in accordance with 15 U.S.C. § 1115(b).
(g) Complainant has registered, or applied to register, the BRITANNICA and ENCYCLOPAEDIA BRITANNICA marks (collectively, the "BRITANNICA Marks") in a large number of countries, including the following:
Application No./Registration No.
Reg. No. 498270
Reg. No. 306586
Reg. No. TMA502207
Reg. No. UCA026037
App. No. 1364777
App. No. 198432
Reg. No. 97 672477
Reg. No. 1671220
Reg. No. 1105754
Reg. No. 1704176
Reg. No. 2088612
Reg. No. 624514
Reg. No. 667914
App. No. 2600
Reg. No. 1211745
Reg. No. 1211746
Reg. No. 1454734
Reg. No. 1211743
Reg. No. 687272
Reg. No. 1454743
(h) Complainant is the registrant and owner of the following domain names, among others:
(i) Complainant operates its principal web site at www.britannica.com. This site offers a variety of online reference services, including providing news, sports, market and weather information.
(j) Complainant has sold many billions of dollars worth of encyclopedia, reference and other online goods and services under the BRITANNICA Marks throughout the United States, and Complainant has spent hundreds of millions of dollars to advertise and promote its encyclopaedia, reference and other online goods and services under the BRITANNICA Marks throughout the United States.
(k) By virtue of Complainant's long use, advertising, and promotion, the BRITANNICA Marks have become well known and famous throughout the world and possess a strong secondary meaning signifying the Complainant and the encyclopedia, reference and other online goods and services it offers, and represent an extremely valuable goodwill owned by the Complainant.
(l) On May 18, 2000, Complainant sent a letter and e-mail to Mr. Negev Nosatzki at Shedon.com, the Respondent in this proceeding, requesting that Shedon.com cease and desist from any unlawful use of the domain name britannnica.com and the BRITANNICA mark ("May 18th Letter"). Complainant did not respond to the May 18th Letter.
(m) The Respondent's lack of rights or a legitimate interest in the domain name and its bad faith in registering and using it are demonstrated by numerous facts, including:
(1) On October 19, 1999, Complainant announced the debut of its web site located at www.britannica.com. During its first day of operation, www.britannica.com received approximately 10 million hits. Upon information and belief, the Respondent registered britannnica.com in order to intentionally divert traffic away from Complainant's web site.
(2) As recently as May 15, 2000, Respondent was using the britannnica.com domain name to hyperlink to a gambling website.
(3) Respondent has registered at least 20 domain names in addition to britannnica.com which are simply mis-spellings and variations of widely-known and famous trademarks, including: AOL4CELLULAR.COM, BENNYTON.COM, CNN4CELLULAR.COM, CNNCHANNEL.COM, E-GAP.COM, LUCENTNETWORKS.COM, MSN4CELLULAR.COM, MTVSHOW.COM, NISAN.ORG, ORION-TELECOM.COM, PALMMATE.COM, PALMOBILE.COM, PALMTOY.COM, POPYE.COM, TICKETBLASTER.COM, VISAALFA.COM, VISACLUB.COM, VISA-CLUB.COM, VISACLUB.ORG, VISA-CLUB.ORG, VISAYES.COM, and YAHOO4CELLUALR.COM.
(4) Respondent's ownership of numerous domain names which are virtually identical to widely-known and famous trademarks suggests a bad faith intent to profit from the activities of others. See J.P. Morgan v. Resource Marketing, Case No. D2000-0035, ¶6, p.4 (Administrative Panel Decision, March 23, 2000).
(5) Respondent's Ownership of a site which is a mis-spelling of Complainant's britannica.com site and which Respondent used to hyperlink to a gambling site demonstrates Respondent's bad faith registration and use of the britannnica.com domain name. See Shields v. Zuccarini, 2000 U.S. Dist. Lexis 3350,*19 (March 22, 2000) (Defendant violated plaintiff's rights by registering five variations of plaintiff's trademarks and using them to subject site visitors to advertisements); Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, Case No. D2000-0330, ¶2-3, pp. 1-2; (Administrative Panel Decision, June 7, 2000) (Respondent showed bad faith by registering various mis-spellings of Complainant's mark and using them to hyperlink to advertisement web pages.)
(6) Upon information and belief, Respondent does not conduct any legitimate commercial or non-commercial business activity using the britannnica.com domain name.
(7) The Respondent is not commonly known by the britannnica.com domain name and has not acquired any trademark or service mark rights to such name. The Respondent has not applied for or obtained any state or federal trademark or service mark registration for the britannnica.com domain name.
(8) Complainant has not licensed or otherwise permitted Respondent to use the BRITANNICA Marks or to apply for or use any domain name incorporating those marks. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003, ¶7.2, p. 4 (Administrative Panel Decision, February 18, 2000); Parfume Christian Dior v. 1 Netpower, Inc., Case No. D2000-0022, ¶ 6D, p.5 (Administration Panel Division, March 3, 2000).
(9) In addition to any actual knowledge Respondent may have of Complainant's rights in the BRITANNICA Marks, Respondent has had constructive notice of Complainant's trademark rights in the ENCYCLOPAEDIA BRITANNICA and BRITANNICA marks since 1950 and 1984 respectively.
(10) Notwithstanding Respondent's constructive notice of Complainant's prior rights in the ENCYCLOPAEDIA BRITANNICA and BRITANNICA marks and probable actual knowledge of Complainant's rights in the BRITANNICA Marks, Respondent obtained the britannnica.com, domain name in order to intentionally attempt to attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web sites.
(11) Respondent's britannnica.com domain name is virtually identical and confusingly similar to Complainant's BRITANNICA and BRITANNICA.COM registrations and BRITANNICA and BRITANNICA.COM marks. As evidenced by Complainant's numerous trademark registrations for, and wide reputation in, the BRITANNICA Marks, "it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name" britannnica.com. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003, ¶7.7, p. 9 (Administrative Panel Decision, February 18, 2000).
(12) The facts that (i) Complainant's BRITANNICA Marks have a strong reputation and are widely-known throughout the world; (ii) Respondent has demonstrated a history of obtaining domain names which are mis-spellings or variations of widely-known or famous trademarks; (iii) Respondent has used the britannnica.com domain name to intentionally divert traffic away from Complainant's www.britannica.com web site; (iv) Respondent has used its www.britannnica.com web site to link to a gambling site; and (v) it is not possible to conceive of any plausible or contemplated active use of the britannnica.com domain name by Respondent that would not be illegitimate or unlawful, constitute evidence of the registration and use of the domain name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy.
The Respondent has not submitted a formal response and is in default. He has indicated in his e mail to the center of 31st August that he does not claim any rights in the name and wishes to transfer it to the Complainant.
6 Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
(i) The 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 domain name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
It is prima facie obvious that the Domain Name is confusingly similar to the Complainant's BRITANNICA mark.
B. Rights or legitimate interest of the Respondent
The Respondent admits he has no interest in the domain name and is in default. The panel can, therefore, assume that he has no rights or legitimate interest in the domain name.
C. Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its web site or location or of a product or service on its website or location.
The Respondent is engaged in the practice of registration of domain names containing the trademarks of others including misspellings such as the Domain Name and others, e.g., Bennyton.com, Nisan.org and Popye.com. The Domain Name has been used to hyperlink to a gambling site. Accordingly, it is clear that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site or other online location, by creating confusion as to the source, sponsorship, affiliation or endorsement of its products or services. I, therefore, find that bad faith has been demonstrated under Paragraph 4(b)(iv) of the Policy.
In light of the foregoing the panelist decides that the domain name is confusingly similar to the Complainant's trademark BRITANNICA, the Respondent has no rights or legitimate interest in respect of the Domain Name, and the Domain Name was registered and used in bad faith.
Accordingly, it is ordered that the Domain Name BRITANNNICA.COM BE TRANSFERRED to the Complainant.
Dated: September 6, 2000