WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bentham Science Publishers Ltd v. Dr. Mansoor Alam / DomainSystem Pvt.
Case No. D2011-0411
1. The Parties
The Complainant is Bentham Science Publishers Ltd of Sharjah, United Arab Emirates, represented by Al Tamimi & Co., United Arab Emirates.
The Respondent is Dr. Mansoor Alam / DomainSystem Pvt. of Gulshan, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <bentham.org> (the “Disputed Domain Name”) is registered with Abacus America Inc. d/b/a Names4Ever (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2011. On March 3, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 4, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 9, 2011.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2011. The Response was filed with the Center on April 6, 2011.
The Center appointed Alistair Payne as the sole panelist in this matter on April 20, 2011. 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.
The Panel directed a Panel Order on May 3, 2011 seeking further evidence from the Complainant by May 10, 2011 and allowing for a 7 day right of reply by the Respondent. The respective dates were subsequently extended by one further day to permit the Complainant time to comply with the Panel’s request. The Respondent filed its reply to the Complainant’s submission on May 18, 2011.
4. Factual Background
The Complainant is an international publisher based in the United Arab Emirates of 92 online and print journals and at least 200 open access journals, and related print/online book series in the areas of pharmaceuticals, biomedicals and medical research. The Complainant trades under the name, style or trademark BENTHAM and has made trademark applications in various countries. It maintains a website for its products at the Disputed Domain Name <bentham.org> which now attracts in excess of 5 million hits per month.
The Respondent formerly worked in the information technology services area.
5. Parties’ Contentions
The Complainant submits that it is a well-known publisher in the medical and scientific fields trading under the BENTHAM name or mark. Apart from the very substantial number of international journals that it publishes and its customer base of academic, corporate and government based libraries worldwide as well as on-line subscribers through its website, it has engaged approximately 15000 journal editorial board members internationally to contribute to its publications. For the last 5 years the Complainant submits that its turnover has averaged USD 4,000,000 per year and that it has made approximately USD 200,000 in promotional expenditure on an annual basis including by sponsoring a range of events and involvement in over 200 conferences annually. The Complainant further submits that its website at the Disputed Domain Name attracts in excess of 5 million hits per month. As a result of this use and reputation worldwide, the Complainant submits that its name and trade mark BENTHAM has become well reputed in the international scientific community and that it has applied for trade mark registration for its BENTHAM word mark in classes 16 and 41 in various countries.
The Complainant says that the Respondent was an information technology consultant employed by its IT service provider, Information Technology Services (“ITS”) in Pakistan. The Complainant says that as part of his duties at ITS the Respondent registered the Disputed Domain Name on its behalf in the name of Bentham Science Publishers Ltd on April 11, 2000 and was responsible for the maintenance of the Disputed Domain Name throughout his employment with ITS. The Complainant says that all payments for the Disputed Domain Name were made by the Complainant’s owner from his credit card and that the Complainant’s main website operated at the Disputed Domain Name.
In September 2010 the Complainant became aware that the registrant details for the Disputed Domain Name had been changed out of its name into the name of “Private Domain owner – available for rental contract period”. It contacted the Registrar through its domain name services provider in order to remedy the situation but was advised that the Respondent was the domain administrator and that the Complainant’s details had been removed and the relevant passwords had been changed. In spite of subsequent complaints by its lawyers through ICANN to the Registrar, the Complainant says that it has been unable to retrieve the Disputed Domain Name and as a consequence has initiated these proceedings.
The Complainant submits that the Respondent willfully and without authority changed the administrative details of the Disputed Domain Name with a view to offering it to a competitor of the Complainant or otherwise attempting to make some financial gain from it in bad faith. The Complainant notes that in July 2010 the Respondent failed to report for duties at ITS and in spite of ITS’s and the Complainant’s efforts to contact him in order to retrieve the Disputed Domain Name, he has failed to respond and has evaded all efforts to locate him. The Complainant submits that from this conduct and the background as set out above it is evident that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that its alteration of administrative details and failure to respond are indicative of the Respondent’s bad faith.
The Respondent submits that he has been the legitimate owner of the Disputed Domain Name since the date of its registration.
He says that the Complainant only filed its trade mark applications for BENTHAM some 11 years after registration of the Disputed Domain Name and in an attempt to wrongfully assert rights over the Disputed Domain Name which the Respondent submits amounts to reverse domain name hi-jacking. The Respondent submits that the Complainant has no trademark rights in its BENTHAM mark for the purposes of the first limb of the Policy and there is no evidence to support its claim that it has made substantial revenues in recent years.
The Respondent says that he has never been employed as a “senior manager” anywhere and that the Complainant’s account concerning him is wrongfully concocted and false and that he has always been the legitimate owner of the Disputed Domain Name. Further the Respondent says that the Complainant has made wrongful attempts to obtain the Respondent’s domain name information and to change its details in bad faith.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated a very substantial international publishing business operated under the BENTHAM name or mark and for which it is currently seeking trademark registration in various countries. In the Panel’s view the scope of this business based on the number of journals published, the broad customer base worldwide, the substantial revenues generated from journal sales and subscription and considerable promotional expenditure over numerous years indicates that it is likely to have developed a significant goodwill and reputation in connection with the BENTHAM name such as to distinguish the Complainant’s products and services in the course of trade. There is no evidence to contradict the Complainant’s assertions in this regard and the factors taken into account are consistent with those considered by many previous panels undertaking a similar analysis as set out at section 1.7 of the WIPO Overview of WIPO Panel Views On Selected UDRP Questions, Second Edition ( “WIPO Overview 2.0”). Therefore the Panel finds that the Complainant owns unregistered trade mark rights in the BENTHAM name or mark for the purposes of the Policy and that the key element of the Disputed Domain Name is identical to the Complainant’s BENTHAM mark.
Accordingly the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
It appears from the evidence provided by the Complainant that the Respondent was engaged by it from 2000 at which time the Complainant was still based in the Netherlands, to carry out information technology work for it. After the Complainant’s relocation to the United Arab Emirates the Respondent was employed by ITS and in that capacity continued providing IT services to the Complainant. Evidence of email correspondence between the Respondent and the Complainant from before and after the Respondent’s employment with ITS indicates that Mr. Honan, the principal of the Complainant, paid for annual domain name renewal fees and web hosting services on various occasions using his credit card and that payment was facilitated by the Respondent. The Panel is satisfied after having seen in evidence a copy of the Respondent’s employment agreement and of the IT services agreement between the Complainant and ITS that the Respondent did indeed carry out IT services on behalf of ITS for the Complainant. The Panel is also satisfied that the website at the Disputed Domain Name was used throughout to publicise the Complainant’s business and that the Respondent appears to have assisted the Complainant in developing and maintaining the website over a long period of time.
Unusually, neither the relevant Registrar (even after an additional request on behalf of the Panel), nor the Complainant has been able to provide a copy of registration details indicating that the Complainant was registered as the original owner of the Disputed Domain Name. However there is also nothing to indicate to on the contrary that the Respondent was listed as the original owner.
In the circumstances that the Respondent carried out the IT services for the Complainant on an outsourced basis and corresponded throughout with the Complainant as if he was assisting with the development of the BENTHAM website and services for the Complainant, including by facilitating payment using Mr. Honan’s credit card for domain name renewals and web hosting services, the Panel finds that on the balance of probabilities the registration of the Disputed Domain Name was undertaken in the first place on behalf of and for the Complainant.
The Respondent’s case that he was the original registrant is completely unsupported by an explanation as to why he chose the BENTHAM name as a domain name back in 2000 or what goods and services he proposed to provide and lacks all credibility in the circumstances of his role as IT service provider to the Complainant as outlined above. For these reasons and as set out below in relation to bad faith the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and as a result, the Complainant succeeds under the second limb of the Policy.
C. Registered and Used in Bad Faith
The Registrar for the Disputed Domain Name confirmed in writing to the Complainant in October 2010 that the Complainant’s company details had been removed from the domain name records, the password changed and that the WHOIS and account details had been updated. The Respondent as registrant had changed the owner details to “Private Domain owner – available for rental contract period” and subsequently appears to have changed the details to “Private Domain owner- Private Domain –DomainSystem Pvt”. This change appears to have been made following the Respondent’s failure to report for work at ITS and the Respondent then failed to reply to ITS’s or the Complainants communications concerning the unauthorized change of details for the Disputed Domain Name.
This Panel finds that the Respondent’s unauthorized alteration of the registration details for the Disputed Domain Name to change ownership details from the Complainant to himself was clearly made by the Respondent in order to ensure that the Complainant would be deprived of the benefit of the Disputed Domain Name. This amounts to a new registration in the same way that transfer of a domain name to a third party has been found by previous panels to amount a new registration as is noted at section 3.7 of the WIPO Overview of WIPO Panel Views On Selected UDRP Questions. To the extent that this transfer was undertaken without the Complainant’s knowledge or authority and was made to transfer ownership of the Disputed Domain Name to the Respondent, it amounts to a registration in bad faith.
There is no evidence to suggest that the Disputed Domain Name has been actively used by the Respondent to date. However his breach of good faith in changing the Disputed Domain Name details without the Complainant’s authority for his own benefit, in circumstances that the Complainant had clearly paid for the Disputed Domain Name to date and that the Respondent had acted for the Complainant for many years in maintaining the registration on the basis that the Complainant owned the Disputed Domain Name, is indicative of a bad faith intention to deprive the Complainant of the use of the Disputed Domain Name. Further the change of ownership details to indicate that the Disputed Domain Name was “available for a rental contract period” (which the Panel notes has not been denied by the Respondent) is indicative of an intention to use the Disputed Domain Name for the Respondent’s gain in bad faith. Overall the Panel is satisfied that the circumstances and conduct of the Respondent in this case amount to bad faith cybersquatting and that the Complaint therefore succeeds under the third element of the Policy.
D. Reverse domain name hijacking
Based on the foregoing, the Respondent’s claim for reverse domain name hijacking is denied.
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 Name <bentham.org> be transferred to the Complainant.
Dated: May 30, 2011