WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scholastic Inc., v. Sai Tong Ho
Case No. D2001-1011
1. The Parties
The Complainant is Scholastic Inc., of 555 Broadway, New York, NY 10012-3999, United States of America.
Represented by Edward H. Rosenthal, Esq., of Frankfurt Garbus Kurnit Klein & Selz, P.C. of 488 Madison Avenue, 9th Floor, New York, New York 10022, United States of America.
The Respondent is Sai Tong Ho, of 9F Golden Court, 50 Tuen Oi Tong Circuit, Tuen Mun, N.T. Hong Kong, Hong Kong, S.A.R., China.
Respondent is not represented.
2. The Domain Name and Registrar
The domain names with which this dispute is concerned are: <chinascholastic.com>, <china-scholastic.com> and <chinascholastic.net>.
The Registrar with which the domain names are currently registered is Register.com of 575 Eighth Avenue, New York, N.Y. 10018, United States of America.
3. Procedural History
3.1 The Complaint was filed electronically on August 8, 2001, and in hard copy on August 13, 2001, at the WIPO Arbitration and Mediation Center (the "WIPO Center").
3.2 On August 14, 2001, the WIPO Center requested verification of the domain name details from the Registrar and on August 15, 2001, the Registrar verified:
(i) that the domain names are registered with it;
(ii) that the current registrant of the domain names is the Respondent;
(iii) that the domain names are currently in "Active" status;
(iv) that the Respondent is the Administrative Contact for the domain names;
(v) that the Respondent is the Technical Contact;
(vi) The Registrar did not confirm that a copy of the Complaint had been served on it by Complainant as required by Supplementary Rule 4(b) of the WIPO Supplementary Rules for Uniform Domain Dispute Resolution Policy ("the Supplemental Rules"). Furthermore, the Registrar did not provide information with respect to the Billing Contact and no such information is shown on its WHOIS print out.
3.3 On August 16, 2001, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center were found to be in compliance with the applicable ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") Policy, and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The WIPO Center advised Complainant that the Registrar had advised that it had not been served with a copy of the Complaint. Subsequent enquiries by the WIPO Center however, revealed that a copy of the Complaint had in fact been served.
3.4 On August 16, 2001, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding by courier, facsimile and by e-mail to Respondent, the Administrative Contact and the Technical Contact and by e-mail to the postmaster at each of the domain names.
It appears from the record that the e-mail transmissions to the postmaster at each of the domain names was undelivered and that the facsimile transmission to Respondent was undelivered. In the absence of a Billing Contact on the WHOIS database, the WIPO Center was unable to send a copy of the Complaint to the Billing Contact.
Rule 2(a) of the Rules provides that it is the providers responsibility to employ reasonably available means calculated to achieve actual notice to the Respondent. The Rule further provides that this responsibility is discharged by sending the Complaint to each of the addresses shown in the Registrar's WHOIS database for the domain name holder and the Technical and Administrative Contact, and the address supplied for the Billing Contact and by sending the Complaint in electronic form to the respective e-mail addresses, to the postmaster at the domain name and to any address on an active web page to which the domain name resolves and to any other address notified to the sender by Respondent or provided by Complainant. The Panel is of the opinion that in the light of the information available to it, WIPO has employed all means reasonably available to it to achieve notice to Respondent.
3.5 The Administrative Proceeding commenced on August 16, 2001, and the Response was due on September 5, 2001.
3.6 No Response was filed, and on September 11, 2001, WIPO Center sent notification of Respondent default to Respondent and to the Administrative and Technical Contact.
3.7 Complainant requested the appointment of a three member panel and Panelists Professor Frederick Abbott and Professor Xue Hong and Presiding Panelist Mr. Desmond Ryan, having filed Statements of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on October 2, 2001.
4. Factual Background
4.1 Complainant is a U.S. corporation incorporated under the laws of the State of New York which has for many years carried on business as a media and publishing company producing and distributing material for students, teachers and parents. It has carried on business using the trade mark "Scholastic" and trade marks featuring the word "Scholastic" since at least 1922, and has gained significant recognition worldwide; most recently for the publication of the Harry Potter series of books. Complainant has used the "Scholastic" trade mark extensively throughout the United States and other countries of the world including the People's Republic of China and the Hong Kong special administration region.
4.2 Complainant is the registered proprietor of many U.S. trade mark registrations consisting of, or including the word "Scholastic" dating back to as early as 1948, and covering goods in International Classes 9, 16, 25, 28, 35, 41 and 42. Complainant is also the registered proprietor of the trade mark "Scholastic" and "Scholastic and Design" dating back to 1996, in the People's Republic of China.
4.3 According to the WHOIS database for the domain names, they were each registered on March 6, 2000, though Complainant asserts that on information and belief the names were registered in August of 1999. Complainant asserts that it first became aware of the registration of the domain names in November 2000, and on November 20, 2000, Complainant, through its attorneys, sent a letter to Respondent at the address shown in the WHOIS database. The letter was returned annotated with the words "at this address no such person – don't ask other people to sign for packages again!".
4.4 No information other than the name and address is known in respect of Respondent.
5. Parties Contentions
5.1 Complainant's contentions may be briefly summarised as follows:
(i) The domain names are confusingly similar to Scholastic's trademarks. They contend that trade mark "Scholastic" is not generic or merely descriptive, and cite in support the decision in Scholastic Inc. v. Applied Software Solutions Inc., WIPO Case No. D2000-1629.
(ii) Complainant further contends that consumers who are familiar with it and its products are likely to be confused and will think that the domain names are web sites associated with it, especially given that Complainant's products and services are available in the People's Republic of China and that the trade marks have been used and registered in that jurisdiction.
(iii) On the basis that Respondent is not currently using the domain names and has no apparent intention to do so and that the domain names do not resolve to an active web site, Complainant contends that Respondent registered or acquired the domain names primarily for the purpose of selling, renting or otherwise transferring them to Complainant for consideration in excess of Respondent's out-of-pocket expenses.
(iv) Respondent has not been commonly known by the domain names and has acquired them with no intention of utilising them in connection with the provision of legitimate goods or services.
(v) Respondent has either deliberately provided false contact information to the Registrar, or has failed to update its records to reflect its actual address.
5.2 No Response was filed.
6. Applicable Dispute
6.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution Policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.
6.2 To succeed in its Complaint, Complainant must show that each of the conditions of Paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
7. Discussion and Findings
Identical or Confusingly Similar Trademarks
7.1 The domain names each clearly incorporates Complainant's "Scholastic" trademarks. The domain names are, however, preceded by the prefix "China". On ordinary principles of the comparison of trademarks, considerable weight should be afforded to the first part or syllable of the word. Due weight should also be given to the fact that the mark is, or includes a descriptive word. However, having regard to the very substantial and long standing use by Complainant of its trade mark, and the fact that the added initial syllable is the geographic designator "China", the Panel is of the opinion that Internet users seeing the domain names would be likely to be confused into thinking that the domain names were directed to, or indicated the China branch, or China affiliate of Complainant.
The Panel therefore holds that the domain names are each confusingly similar to Complainants "Scholastic" trademarks.finds
Legitimate Right or Interest
7.2 Whilst the onus is on Complainant to show that Respondent has no legitimate right or interest, the burden of proof is a shifting one – see, for example, Hoblaw v. Carlow Borbosa – AF – 0163, Dow Jones v. Hephzabah Info-Net Project Ltd. WIPO Case No. D2000-0704. Where, as here, Complainant has raised a prime facie presumption of Respondent's lack of such right or interest, and Respondent has failed to rebut that presumption, the Panel is entitled to accept Complainant's assertion. The panel therefore finds that Complainant has established that Respondent has no legitimate right or interest in the domain names.
Use and Registration in Bad Faith
7.3 There is no information available as to the circumstances surrounding the registration of the domain name, nor is there any current use of the domain name as the address of a web site. However, Complainant has shown that it has continuously and extensively used the "Scholastic" trademarks in connection with the promotion and sale of products and services in many countries and regions, including in Hong Kong, S.A.R. in People's Republic of China. So, it is fair to presume that Respondent registered the disputed domain names with knowledge of Complainant's trademark. As to use of the domain name, Respondent's inactivity, coupled with its apparent use of a false or inaccurate address, appears to indicate a "passive holding" of the domain name of the kind referred to in Telstra Ltd. v. Nuclear Marshmallows – WIPO Case No. D2000-0003. Respondent has failed to rebut Complainant's prima facie showing of registration and use in bad faith.
The Panel therefore concludes that the domain name was registered and has been used in bad faith.
8.1 The Panel decides and orders that:
(i) The domain names are confusingly similar to a trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in the domain names;
(iii) The domain names were registered and are being used in bad faith;
(iv) The domain names shall be transferred to Complainant.
D. J. Ryan
Dated: November 1, 2001