WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Usborne Publishing Limited v. Texas International Property Associates - NA NA

Case No. D2007-1913

 

1. The Parties

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

The Respondent is Texas International Property Associates – NA NA, Dallas, Texas, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <usbournequicklinks.com> is registered with Compana LLC (“Compana”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 21, 2007. On December 27, 2007, the Center transmitted by email to Compana a request for registrar verification in connection with the domain name at issue. On January 7, 2008, following a reminder email from the Center, Compana transmitted by email to the Center an incomplete response which failed to verify the accuracy of the particulars recorded in its database other than that the Respondent was the registrant of record and had entered into a registration agreement by which it was bound to the UDRP. Despite eight further attempts by the Center between January 8 and 23, 2008 to extract a response from Compana to the questions that Compana is (or at least should be) obliged to answer in order to facilitate the effective functioning of the ICANN mandated Policy, no such answer was ever forthcoming prior to the proceedings being commenced. The Registrar also failed to respond to the Center’s communications seeking confirmation that the disputed domain name had been placed on registrar lock despite it having an expiration date of February 28, 2008. As at March 7, 2008, the WhoIs information shows the disputed domain to be in the name of the Respondent with an expiration date of February 28, 2009. The Panel infers that the domain name has been renewed by the Respondent subsequent to the commencement of this proceeding. Were it not for the Respondent’s filing of a Response, the Panel might not have been satisfied on a number of procedural issues, and may not have been able to proceed to render a decision. The UDRP would thus have been thwarted. The Panel recommends that the Center elevate to Compana’s senior management its failure, at least on this occasion, to comply with its obligations to facilitate the UDRP process. The Panel also invites the Center to forward this decision to the accrediting agency ICANN for consideration (see eg. Mrs. Eva Padberg v. Eurobox Ltd, WIPO Case No. D2007-1886).

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 January 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2008. An emailed Response was filed with the Center at 3.43 am the following day Geneva time, which was 10.43 pm on February 12 Dallas time. The Panel agrees that the Center was right to treat the Response as being received within time, despite the Respondent’s technical non-compliance with the Rules in not having filed hard copies of the Response. In the Panel’s view a complete Response filed wholly in electronic form is sufficient to comply in substance with the Rules where the Panel waives the Respondent’s non-compliance with the requirement to submit an original plus four hard copies of the Response.

The Center appointed Philip N. Argy as the sole panelist in this matter on February 22, 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 paragraph 7 of the Rules.

 

4. Factual Background

The following facts, extracted from the Complaint, are “not admitted” by the Respondent, and thus remain neither denied nor contested:

The Complainant was founded by Peter Usborne in 1973 and is now one of the world’s leading publishers of children’s books.

It owns a large number of national and international trade mark registrations, including for the word mark USBORNE.

The Complainant’s websites are at “www.usborne.co.uk” for domestic UK purposes and at “www.usborne.com” for the rest of the world. The former domain name was registered on October 11, 1996 and the latter on June 6, 1998.

The Complainant registered <usborne-quicklinks.com> on November 8, 2000 with the corresponding website launched in USA, Canada, the UK, Australia, New Zealand, Singapore, Malaysia and South Africa in June 2001 with French, Spanish and Italian language versions launched the following year.

The Complainant also owns numerous domain names incorporating “Usborne” in multiple jurisdictions and across multiple gTLD and ccTLDs.

The Usborne Quicklinks website provides links to recommended, appropriate and carefully researched educational websites as an adjunct to the Complainant’s non-fiction books. Readers find links for their books by entering the book’s keyword on the website.

The Usborne Quicklinks Website has been advertised in every issue of the Usborne annual catalogue since 2000/1 and in numerous other publications and by use of various other methods of promotion.

Since its launch the Usborne Quicklinks website has had over seven million visits.

The disputed domain name was first registered on February 28, 2005.

 

5. Parties’ Contentions

I. Complainant

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The Complainant contends that the Respondent’s mis-spelling of USBORNE as USBOURNE is insufficient to prevent the disputed domain from being identical or confusingly similar to the trade marks incorporating that word in which the Complainant has rights. The Complainant says that the Respondent has simply engaged in “typo-piracy” which is the practice, more usually known as typosquatting, of registering as a domain name a word which is the same as a well known trade mark but with a typographical error of the kind that users could make when keying the ‘real’ trade mark into a browser address bar, or which they could mistake for the ‘genuine’ domain name by reason of a subtle difference that is easily overlooked.

The Complainant’s submission is that <usbornequicklinks.com> is identical or at least confusingly similar to each of two of its trade marks, namely, USBORNE and USBORNE-QUICKLINKS.COM.

B. The Respondent has no rights or legitimate interests in respect of the domain name

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

The Complainant contends that the Respondent does not have any legitimate interest in respect of the disputed domain name <usbournequicklinks.com>.

First, the Complainant has not licensed or authorized the Respondent to use its marks. Secondly, there is no evidence that the Respondent had made pre-dispute preparations to use the disputed domain name in connection with a bona fide offering of goods and services (and the Complainant submits that it would be impossible for the Respondent to do so in any event given the Complainant’s extensive reputation evidence). Thirdly, there is no evidence that the Respondent has been commonly known by the disputed domain name. And, finally, that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name and that the Respondent’s usage is plainly intended to divert “the Complainant’s consumers” to the Respondent’s website which is clearly in bad faith.

C. The domain name was registered and is being used in bad faith.

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

The Complainant notes that the disputed domain was first registered on February 28, 2005 and that this is “more than 30 years after the Complainant was founded”. It then contends that at the time of registration of the disputed domain name, the Complainant “enjoyed trade mark protection for the word “USBORNE” in many jurisdictions and that the Complainant’s website receives approximately 1.8 Million visits per annum. According to the Complainant it is “inconceivable that the Respondent did not know of the Complainant’s rights at the time that the [disputed domain name] was registered”.

Secondly, the Complainant notes that typosquatting has always been treated as a bad faith registration, citing Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094, for the proposition that typosquatters intentionally divert Internet users to a respondent’s website for commercial gain by creating confusion as to the Complainant’s affiliation with or sponsorship of respondent’s website.

Thirdly, the disputed domain name resolves to a website with functionality and terminology that could be mistaken for the Complainant’s authorized site at “www.usborne-quicklinks.com”. When a user searches on a keyword, instead of getting the Complainant’s carefully researched and vetted child-safe content correlated with the book of interest, the user sees spurious links and content which essentially generate click-through revenue for the Respondent. Of particular note, says the Complainant, is the correct spelling of Usborne on the Respondent’s site despite the mis-spelling in the disputed domain name. The Complainant submits that the Respondent’s conduct is a clear ‘contravention’ of paragraph 4(b)(iv) of the Policy.

And finally, Complainant draws the Panel’s attention to four prior UDRP cases which have been decided adversely to the Respondent together with a further 43 decisions (39 of which were adverse) against a respondent called “Texas International Property Associates” (in other words, without the “NA NA” which appears in the Respondent’s name according to the WhoIs listing for the disputed domain name). The Complainant submits that this demonstrates a pattern of bad faith conduct of a kind which falls within paragraph 4(b)(ii) of the Policy.

II. Respondent

The Response expressly recites that it is filed before the Center’s deadline of February 12, 2008, notwithstanding that it was in fact filed about 4 hours into February 13, 2008 Geneva time. As noted above, the Panel agrees with the Center’s decision to treat the Response as having been filed within time.

The Response is filed in the name of “Texas International Property Associates” (without the “NA NA”) and states that the disputed domain name is <osram-sylvania.com>. The Respondent does not appear to have replied to the Center’s request for clarification of this apparent error. The Response also wrongly spells the Complainant’s name as “Usbourne Publishing Limited”.

The Respondent did not file an original and four hard copies of the Response. This Panel regards a Response that is complete in its electronic form as sufficient for the purposes of the Policy despite the technical non-compliance with the Rules.

The Respondent denies having received a copy of the Complaint prior to receipt of the formal copy from the Center. Nevertheless the Respondent “agrees to the relief requested by the Complainant and will, upon order of the Panel, do so.” The Respondent then states that “this is not an admission to the three elements of 4(a) of the Policy but rather an offer of ‘unilateral consent to transfer’ as prior Panels have deemed it”.

The Respondent goes on to cite a number of panel decisions in support of its contention that, where a respondent stipulates for transfer to a complainant in this way, the panel should simply order the transfer without issuing an opinion on the merits of the case.

III. Complainant’s supplementary submission

On February 20, 2008, in reply to the Response, the Complainant lodged a supplementary filing and asked the Panel to consider it on the basis that the Complainant could not easily have anticipated the arguments raised by the Respondent. The Complainant also challenges the “factual credibility of certain arguments raised by Respondent”.

The substance of the sole part of the supplementary filing that the Panel is minded to consider asks the Panel to “consider the elements of paragraph 4(a) of the Policy and to order a transfer on the basis that the disputed domain name was registered in bad faith.”

 

6. Discussion and Findings

The first issue is whether the Panel should proceed in the conventional way to make findings under paragraph 4(a) of the Policy on any or all of the three primary bases on which the Complaint is filed, or whether it should simply order a transfer as positively requested by the Respondent, without proceeding to make any such findings and without issuing an opinion on the merits.

In principle, if the former course is taken, it is by no means certain that a complainant would succeed (since it carries the burden of proof), and if the latter course is taken it is possible, for example, for a pattern of bad faith conduct by a respondent to continue without formal findings that might support invocation of paragraph 4(b)(ii) of the Policy in subsequent cases.

It is clear from the most helpful index published by WIPO at “http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=12840” that many panels have followed the course sought by the Respondent in this proceeding. Indeed this Panel has itself done so quite recently in Sanofi-aventis and Sanofi-Aventis Deutschland GmbH v. RareNames, WebReg, WIPO Case No. D2007-1676 (“Sanofi”).

One rationale for taking that course, and followed by many panels, is that summarized in Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207, where the learned panel there held inter alia:

“Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. I am left to decide the appropriate procedure to conclude the case in a situation not directly addressed by the Rules. Several provisions provide guidance. Rule 10(a) gives the panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to “ensure that the proceeding takes place with due expedition”. Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.

“Here, although Respondent has consented to the requested relief, the parties have not agreed to a formal settlement and terminating the proceeding would not effect the parties’ intent. Under Rules 10 and 12, the Panel appears to have authority to delay the decision and permit the parties time to submit confirmation that they have agreed to a settlement. That procedure, however, would delay this proceeding and impose unnecessary cost on both the parties and WIPO. Under the circumstances, I believe the better course is to enter an order granting the relief requested by the Complainant so that the transfer may occur without further delay.

Accordingly, this Panel finds that the disputed domain name can be transferred to the Complainant without determination of the elements of paragraph 4(a).”

In this case the Respondent requests that the disputed domain name be transferred to the Complainant. That exactly matches the relief sought by the Complainant. As in the Williams-Sonoma case, there is nothing before the Panel to indicate that the parties have agreed to any such formal settlement and the Complainant’s supplementary filing indicates to the contrary. Terminating the proceeding would plainly not achieve either the parties’ intentions or the goals of the Policy. Asking the parties to reach and record a formal agreement would thwart the Respondent’s (and the Policy’s) objective of saving costs.

In addition to the rationale set out in Williams-Sonoma, this Panel takes into account paragraph 15(a) of the Rules, which states that “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. It seems to this Panel at least that proceeding to make findings that precluded the Complainant’s requested relief (transfer) would be perverse in the face of the Respondent’s express request to the same effect, the goals and objectives of the Policy, and basic administrative and judicial principles that seek to accommodate parties’ intentions unless to do so would be against public policy or some other clearly applicable rule.

The only ‘public policy’ type of ground that seems of potential application here, as it did to this Panel in Sanofi, is that of preserving for the future a complainant’s ability to rely on paragraph 4(b)(ii) of the Policy in relation to the Respondent’s conduct if the Panel were to make findings against the Respondent in this proceeding which, when combined with similar findings in other proceedings, could support the use of that provision in a subsequent complaint. The real rather than theoretical potential for this to occur seems plausible when one considers the Complaint and the supplementary filing which suggests a pattern of bad faith conduct on the Respondent’s part in numerous other UDRP proceedings.

If panels simply comply with respondents’ surrender when a complaint is filed, and refrain from making factual findings that are open to them which would otherwise be evidence of a pattern, inappropriate “cybersquatting” conduct might be perpetuated.

In this proceeding the Panel has come to the view that the numerous prior decisions against the Respondent on the issue of bad faith do constitute a pattern of the kind referred to in paragraph 4(b)(ii) of the Policy. This is therefore a case where the theoretical underpinning for proceeding to make a formal finding of bad faith could have utility, and the Panel therefore regards it as appropriate in this proceeding to proceed to make a formal finding on the issue of bad faith only.

A Google search for the word “usborne” reveals in excess of 2.5 million entries, all of which in the book publishing context appear to the Panel to relate to the Complainant. The Complaint annexes vast amounts of evidence to support the Complainant’s international reputation and the manner in which the Quicklinks system operates. The Panel agrees with the Complainant’s submission that it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its Quicklinks system. The website to which the disputed domain name resolves makes that conclusion inevitable. When this is combined with the insertion of the letter “u” to change “Usborne” to “Usbourne” and the omission of a hyphen before “quicklinks” in the disputed domain name, the Panel formally finds paragraph 4(b)(iv) of the Policy to be made out in relation to the Respondent’s conduct. In the Panel’s view the Respondent is engaged in classic typosquatting, and appears from the evidence before the Panel to have previously engaged in a pattern of such conduct.

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraphs 10 and 15 of the Rules, the Panel orders that the domain name <usbournequicklinks.com> be transferred to the Complainant.


Philip N. Argy
Sole Panelist

Dated: March 8, 2008