WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elsevier Science Inc. v. M. Moya, Ayom
Case No. D2001-0855
1. The Parties
The Complainant is Elsevier Science Inc., 655 Avenue of the Americas, New York, NY 10010-5107, USA. The Complainant is represented by Nick Phillips of Row & Maw, 20 Black Friars Lane, London EC4V 6HD, U.K.
The Respondent is M. Moya, of an organization named Ayom, the address of which is Clerkenwell, London EC1, U.K.
2. The Domain Names and Registrar
The domain names in dispute are <elsevierscience.com> and <elsevier-science.com>. The Registrar is CSL GmBH (known as Joker.com), Rathausufer 16, 40213 Duesseldorf, Germany.
3. Procedural History
The Complaint submitted by Elsevier Science Inc., was received on July 5, 2001, (electronic version) and July 6, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On July 12, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, CORE.
On July 16, 2001 a further request for Registrar verification was transmitted by the WIPO Center to the Registrar CSL GmbH (known as Joker.com).
By email dated July 17, 2001, the Registrar Joker.com advised the WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registrations <elsevierscience.com> and <elsevier-science.com>.
- The Respondent is shown as the "current registrant" of the domain names.
Having verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the WIPO Center on July 20, 2001, transmitted by post-courier and by email a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Complainant elected to have its Complaint resolved by a single Panelist; it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
No response was received by the WIPO Center from the Respondent within the prescribed time. A Notice of Respondent Default was issued on August 10, 2001. The WIPO Center invited Mr. Ross Carson to be the Panelist in the case. It transmitted to Mr. Carson a statement of acceptance and requested a declaration of impartiality and independence. Mr. Carson forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
4. Factual Background
The Complainant and its associated companies own a number of registrations which include the word "Elsevier". Some of the trademarks date back to the 1950ís. A Compu-Mark report showing a full list of the trademarks together with the countries in respect of which they are registered and the classes for which they are registered is set out in Annex 7 to the Complaint. The UK has not been included in this Compu-Mark report and details of the Complainant's UK registration for "ELSEVIER" are included as the last page of Annex 7. The UK would also be covered by the Community Trademark held by the Complainant for the mark "REED ELSEVIER", details of which appear on the Compu-Mark report.
The trade-mark ELSEVIER was registered on November 5, 1987 in Germany, Algeria, Egypt, Spain, France, Hungary, Italy, Liechtenstein, Monaco, Morocco, Portugal, Rumania, San Marino, Vietnam, Yugoslavia, Croatia, Slovenia, Czech Republic, Slovak Republic and Macedonia in International Class 16, Paper goods and printed matter. The trademark ELSEVIER was also registered in the United States of America on May 14, 1963 in International Class 16, paper goods and printed matter.
The Complainant and its associated companies have made extensive use of the names "Elsevier" and "Elsevier Science" in relation to the publication of scientific, technical and medical information under and by reference to the name "Elsevier Science" since at least 1946.
5. Partiesí Contentions
(i) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Complainant submits that
the Complainant and its associated companies are the holders of a number of
registered trademarks throughout the world which include the word "Elsevier".
(Annex 7 to the Complaint).
The Complainant and its associated companies are also the holders of unregistered trade marks in respect of the names "Elsevier" and "Elsevier Science" by virtue of the extensive use made of these words by the Complainant and its associated companies in relation to the publication of scientific, technical and medical information under and by reference to the name Elsevier Science since at least 1946.
Complainant submits that the domain names in dispute <elsevierscience.com> and <elsevier-science.com> are confusingly similar to the registered and unregistered marks of the Complainant and its associated companies.
(ii) The Respondent has no rights or legitimate interests in respect of the domain names.
Complainant submits that the names "Elsevier" and "Elsevier Science" are unique to the Complainant and its associated companies. The Complainant or its associated companies are aware of no other use of these names anywhere in the world other than by companies connected with it. "Elsevier" is a word which bears no meaning other than to indicate the business run by the Complainant and its associated companies.
(iii) The domain names have been registered and are being used in bad faith.
Complainant submits that the registration and continued holding of the domain names in dispute by the Respondent amounts to the Respondent acting in bad faith for the following basic reasons:
- the Complainant's name "Elsevier Science" has a strong reputation and is widely known, as evidenced by its substantial use world-wide;
- the Respondent can have no bona fide reason for its registration of these domain names;
- the Respondent has taken active steps to conceal its true identity, by operating under a name which appears to be borrowed from a fictional language;
- the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement; and
Taking into account these factors above, it is not possible to conceive of any plausible, actual or contemplated active use of either of these domain names that would not be illegitimate, such by being passing off, or an infringement of the Complainant's rights under trade mark law.
No Response was submitted by the Respondent.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements:
(i) That the Complainant has rights in a trademark or service mark with which the Respondentís Domain Names are identical or confusingly similar; and
(ii) That the Respondent has no rights or legitimate interests in the Domain Names; and
(iii) That the Domain Names have been registered and are being used in bad faith.
(a) Identical or confusingly
It is clear that the Complainant has substantial trademark rights in the mark ELSEVIER and trade name ELSEVIER SCIENCE, INC., and that the domain names in dispute are confusingly similar to the Complainantís marks. The domain names in dispute, <elsevierscience.com> and <elsevier-science.com>, are comprised of the Complainantís trademark ELSEVIER and trade name ELSEVIER SCIENCE followed by the word <.com> which identifies a generic top level domain name. The domain names in dispute <elsevierscience.com> and <elsevier-science.com> are confusingly similar to the Complainantís well-known trademarks ELSEVIER and trade name ELSEVIER SCIENCE, INC.
(b) No legitimate
rights or interests
The Respondent does not
have the consent of the Complainant to register or to use the domain names <elsevierscience.com>
The evidence of the Complainant
is that the Respondent has never used "ELSEVIER" alone or as part
of a trademark, trade name or other trade symbol, or in a descriptive or informative
manner to describe the Respondentís goods or services. The Respondent never
made any preparations to use the domain names, <elsevierscience.com> and
<elsevier-science.com>, in connection with a bona fide offering of goods
or services before notice of the dispute. The Respondent is not known by the
designation "Elsevier". The Respondent did not file any evidence to
demonstrate any rights or legitimate interest in the domain name in dispute
as the Respondent is entitled to do pursuant to Paragraph 4.c of the UDRP. Complainant
advised that it made a number of attempts to contact the Respondent at the yahoo
address provided to the Registrar, but Complainant was advised that the address
had been disabled or discontinued. Attempts to contact the Respondent at email@example.com,
firstname.lastname@example.org, email@example.com and firstname.lastname@example.org
were returned marked "Service unavailable". UK2.net, the seller of
the domain names to the Respondent provided a telephone number which the Complainant
called. Complainant was advised that the number had changed. The new number
was answered by "Wicket Web" who described themselves as website designers
and advised that they had no knowledge of Ayom, lemaclights, or either of the
domain names in dispute. (Annex 3). Complainant submits that if Respondent felt
it had any legitimate rights or interests in the domain names it would have
put forward an explanation of its rights to use these names.
The Panelist determines that the Respondent has no legitimate rights or interests in the domain names in dispute.
(c) Registered and used in bad faith
The Complainantís trademarks are inherently distinctive being created trademarks not used by anyone other than the Complainant. The Complainantís trademarks and trade name are well known and the balance of probabilities is that the Respondent knew of the Complainantís trademarks and trade name at the date of registration.
The Respondent is a passive holder of the domain names in dispute. The Administrative Panel in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 stated at Paragraph 7.9 "... the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case it can be said that the Respondent is acting in bad faith."
The facts in this proceeding lead to the conclusion that the positive registration of the domain names in dispute demonstrates that the Respondent is acting in bad faith. The Respondent has registered domain names in which the distinctive portion of the domain names incorporates the well known created trademarks of the Complainant. If websites featuring the domain names were to be activated the public would be immediately confused and associate the websites with the Complainant. Additional relevant facts are that the Complainant attempted to contact the Respondent as discussed in (b) above but received no response at any of the e-mail addresses or telephone numbers. The Respondent has given as the name of its organization an invented word in a fictional language meaning "anywhere, wherever (except here)", which is evidence of the Respondentís bad faith. The Respondent provided the Registrar with a false name and address in breach of the Registration Agreement. The Respondent held the domain names in dispute since March 22 and 23, 2000 without making any kind of legitimate commercial, noncommercial or fair use of the subject domain name.
The Panel determines the domain names<elsevierscience.com> and <elsevier-science.com> were registered and are being used in bad faith.
Pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel grants the Complainantís request for transfer to it of the domain names <elsevierscience.com> and <elsevier-science.com> .
Dated: August 30, 2001