WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Usborne Publishing Limited v. Keyword Marketing, Inc.

Case No. D2007-1790

 

1. The Parties

The Complainant is Usborne Publishing Limited, of London, United Kingdom of Great Britain and Northern Ireland, represented by Davenport Lyons, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Keyword Marketing, Inc., of Charlestown, West Indies, Saint Kitts and Nevis.

 

2. The Domain Names and Registrar

The disputed domain names are <usborne-quicklnks.com> and <usbournebooksathome.com> both of which are registered with BelgiumDomains, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on December 3, 2007. On December 4, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain names at issue. On December 7, 2007, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain names and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2008.

The Center appointed John Katz QC as the sole panelist in this matter on January 10, 2008. 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 was founded by Peter Usborne in 1973. It is one of the world’s leading publishers of children’s books translated into almost 90 languages. It has won numerous awards including the English Times Literary Supplement Award.

The Complainant has grown to become a major publisher of almost every type of children’s book from every age from baby to teenager.

The Complainant is the proprietor of a number of trademarks in various countries for the word mark USBORNE and various logos or devices incorporating the word USBORNE. These registrations are in evidence and include registrations in a number of countries worldwide such as the United States, the EU, Australia, Singapore and Republic of Korea.

Additionally the Complainant operates a main website at “www.usborne.co.uk” and “www.usborne.com”. The latter is the website generally used by the Complainant for Internet activities outside the United Kingdom. The main corporate domain name was registered in October 1996 and the <usborne.com> domain name was registered in June 1998.

The Complainant also registered the domain name <usborne-quicklinks.com> and the corresponding website “www.usborne-quicklinks.com” was launched in the United States, Canada, the UK, Australia, New Zealand, Singapore, Malaysia and South Africa in 2001. French, Spanish and Italian language versions were launched in 2002.

In September 2007 this website was visited by users from some 173 countries and in the year 2006 received almost 2 million visits.

In 1981 the Complainant launched its direct sales division under the name and mark USBORNE BOOKS AT HOME. In October 1998 it registered the domain names <usbornebooksathome.co.uk> and <usbornebooksathome.com>. The corresponding website “www.usbornebooksathome.co.uk” was launched in or around 2001 or 2002. In October 2007 this website received almost 50,000 visits.

The sales division USBORNE BOOKS AT HOME is used to sell products directly to end users such as parents, children, schools, libraries and play groups. It operates through some 6,000 organizers active across Europe.

The Complainant also has registrations for other domain names all of which are in evidence and indicate the extent to which the Complainant has registered domain names to protect its legitimate interests.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that as a major publisher of children’s books and with a well known name and registered trademarks protecting its rights together with its domain names that it has established an international reputation in the name and mark USBORNE. It has put in evidence a considerable amount of material that shows the extent to which it has advertised and promoted not only its name USBORNE but also its USBORNE QUICK LINKS website.

B. Respondent

Because the Respondent has defaulted it has not put before the Panel evidence. Nevertheless, the Complainant did send a letter of Complaint to the Respondent in connection with the then known domain name <usborne-quicklnks.com>. No response was received to that letter within the deadline imposed. Subsequently the Complainant learned of the separate registration for the domain name <usbornebooksathome.com> but instead of sending a letter of complaint to the Respondent filed the present Complaint in respect of both domain names. The <usborne-quicklnks.com> domain name was registered as long ago as October 2005.

Although little is known of the activities of the Respondent, its name does appear on a Google search. It was not possible to access any website but it was possible to establish that the Respondent through its website “www.keywordmarketinginc.com” claims that it specializes in using 100% automated linguistic software to register “pre-owned” domain names that are deleted or not renewed by the original owner and have good keyword value. It then provides a link to enable a viewer to contact the Respondent.

 

6. Discussion and Findings

The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.

As part of the process, a Complainant must provide evidence and submissions in support of its Complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.

Paragraph 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:

(i) The Respondent’s 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 Respondent’s domain name has been registered and is being used in bad faith.

Each of three elements must be established by a Complainant to warrant relief.

A. Identical or Confusingly Similar

As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trademarks in which the complainant has rights.

The complainant must establish that it has such rights either to common law or registered trademarks or service marks and that those rights are being abused by the respondent.

The Complainant has a number of registered trademarks in a number of jurisdictions both for the word mark and the work mark coupled with a device or logo. A perusal of its own website also shows the extent of its activities and use of its marks. Further, any person who has any familiarity with children’s books will be well aware of the Complainant’s name and reputation in the field of educational children’s books. Its extensive use of its name and marks in the promotion of its books and services clearly confers on it an extensive international reputation and concomitant goodwill. Clearly the Complainant has significant rights in the name and mark USBORNE and any name or mark that is similar.

There can therefore be no room for argument but that the Complainant has established and continues to enjoy protectable goodwill in the name and mark USBORNE.

It is also clear that through its own domain name registrations and trading activities that the Complainant has established a goodwill in the marks USBORNE-QUICKLINKS and USBORNE BOOKS AT HOME.

The Respondent has registered as the disputed domain names effectively the same names save for subtle and perhaps almost imperceptible differences. In the first instance, the Complainant’s domain name is <usborne-quicklinks.com> and the disputed domain name is <usborne-quicklnks.com>. Many people would not notice the subtle omission of the “little i” in the middle of the disputed domain name. Moreover, this could readily be missed by simple misspelling or typographical error. In the second instance the Complainant’s domain name is <usbornebooksathome.com> whereas the disputed domain name is <usbournebooksathome.com>. Again the difference is subtle and would often be imperceptible, namely the introduction into the disputed domain name of the second letter “u”. Phonetically the pronunciation is identical. It is not necessary to descend into semiotics to be able to see that differences such as these are often imperceptible and go unnoticed. Indeed, many people in all probability would commonly misspell the Complainant’s name by incorporating into it the second “u” contrary to the fact.

There is a considerable body of case law in relation to what constitutes the same or identical mark in trademark jurisprudence.

In the European Court decision of LTJ Diffusion SA v. Sardas Vertdaubet SR [2003] FSR 34 the Court considered what constituted use of an identical mark. It held that a mark used by a respondent is identical with a complainant’s mark if the former “reproduced without any modification or addition all the elements constituting the trademark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.

The Panel considers this statement equally applicable to the facts of the present Complaint. If one looks at the two disputed domain names from the viewpoint of whether or not when viewed as a whole each contains differences so insignificant that they go unnoticed by the average consumer, it must follow that the disputed domain names incorporate the identical mark to that for which the Complainant has protection in each case.

However, even if that was not so there can be absolutely no quarrel with the argument that the disputed domain names in each case are confusingly similar. This must especially be so where the differences are of such a minor nature that to most people they would go unnoticed or at best would simply, if noticed, be dismissed as inconsequential.

The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.

B. Rights or Legitimate Interests

As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to any of the trademarks in suit thereby justifying a proprietory right to the mark.

Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate non commercial or fair use.

Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no legitimate rights or can claim none.

The Complainant has stated that it has not licensed or authorized the use of its marks by the Respondent.

There is no evidence of any rights or legitimate interest that the Respondent may have.

Additionally, as is set out in the section below, this Respondent is not unknown to other Panelists and there are a number of decisions of other Panelists involving this Respondent where orders have been made transferring disputed domain names registered by the same Respondent. These decisions and a consideration of the reasoning in them tends to confirm the view that even on the best possible interpretation for a respondent that has not replied, this Respondent would not be able to put forward any claim to rights or legitimate interests in respect of either or both of the disputed domain names.

The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.

C. Registered and Used in Bad Faith

As to the third ground, this requires that the domain name be registered and used in bad faith. As has previously been said in other Panelists’ decisions together with earlier decisions of this Panelist, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.

Any person who came across either or both of the Respondent’s disputed domain names would immediately assume that it was a domain name owned and operated by the Complainant, contrary to the fact. An attempt by the Panel to access the corresponding website was blocked and therefore unsuccessful.

However, the Complainant has put in evidence that the disputed domain name <usborne-quicklnks.com> hosts a website “www.usborne-quicklnks.com”. A printout of the homepage of this website is in evidence. Accessing this website and the jump links provided enables a viewer to go to some websites which are indeed associated with the Complainant together with some of its competitors. This is not only confusing but is also misleading and deceptive. It is also contended and is likely to be the case that the Respondent gains in some way a revenue stream through this website and the links which are provided.

The Complainant has also put in evidence that the disputed domain name <usbournebooksathome.com> hosts a website “www.usbournebooksathome.com”. A printout of this website shows that links which can be accessed enable a viewer to order books which in some instances can only be described as inappropriate on a website which purportedly is owned or has some connection with the Complainant, a well known publisher of children’s books.

There can be no question whatsoever but that this Respondent has registered both disputed domain names for the purposes of trading on the reputation and goodwill of the Complainant. Whether the Respondent benefits by a click per view payment or some other revenue stream through advertising on its associated websites is not clear but its activities permit of that inference especially given the absence of any response by the Respondent.

However, perhaps the most telling feature against the Respondent is its involvement in a number of decisions of other Panelists. Many of these decisions are set out in the decision of the Panelist in Beds Direct Nationwide Limited v Keyword Marketing Inc., WIPO Case No. D2007-0406 (May 10, 2007). Since that decision however this Panel has identified at least 2 or 3 even later decisions. All of them involve the same Respondent and all consistently have found registration and use in bad faith and have directed transfers of the disputed domain names to the complainants in the various instances. This readily allows the inference to be drawn that the Respondent trades in these sorts of activities to the detriment of rights owners.

There can therefore be but no dispute that this Respondent has registered and is using the two disputed domain names in bad faith.

The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <usborne-quicklnks.com> and <usbournebooksathome.com> be transferred to the Complainant.


John Katz QC
Sole Panelist

Dated: January 24, 2008