World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The McGraw-Hill Companies, Inc. v. OopWee Web Design & Marketing

Case No. D2012-0816

1. The Parties

The Complainant is The McGraw-Hill Companies, Inc. of New York, New York, United States of America, represented by Proskauer Rose LLP, United States of America.

The Respondent is OopWee Web Design & Marketing of Bolton, Lancs, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <mcgrawhill-textbooks.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On April 18, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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” 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 April 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2012.

The Center appointed J. Nelson Landry as the sole panelist in this matter on May 25, 2012. 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 is a company that has been active using its MCGRAW-HILL trademark since 1909 in association with a wide variety of services relating to book publishing. It subsequently diversified and expanded its business activities to include financial services, information and media as well as text books, pamphlets, brochures, magazines and other book publishing for education.

The Complainant conducts its business through at least 280 offices in 40 different countries. It is a publicly traded company listed on the New York Stock Exchange and has been on the Fortune 500 company list since 1955.

The Complainant is the owner of several registered trademarks in the United States consisting of the term “McGraw-Hill” or comprising the same term along with descriptive terms:

- the first, the MCGRAW-HILL trademark was registered in 1985 claiming a first use in 1909 in association with books, pamphlets, brochures, magazines and newsletters dealing with a variety of subjects such as books for school, businesses, industries and government agencies (herein the “MCGRAW-HILL Trademark”);

- the second, MCGRAW-HILL (design) first used in 2000 and registered in 2004;

- three others, MCGRAW-HILL COMPANIES, one in regular script and two in design, the earlier first used in 1995 and the two others in 2002 and all registered in 2006 and 2007, all in association with various books and pamphlets under class 16 and various publishing services under class 41 (herein all collectively the “Family of MCGRAW-HILL Trademarks”).

Furthermore, there are two MCGRAW-HILL trademarks registered in the United Kingdom, one in 1987 in association with class 16, publications and the other in 1992 in association with class 9, publications and books. Furthermore, the Complainant owns the trademark MCGRAW-HILL CONNECT in regular script and another one in a specific design registered as a European Community Trade Mark both in 2011 and both for products, such as books under class 9.

Finally, the Complainant owns various registrations for the trademarks MCGRAW-HILL or MCGRAW-HILL and variations thereon in more than 50 different countries as well as in the European Union which comprises 27 additional countries.

The Complainant has not authorized the Respondent to use any of its MCGRAW-HILL trademarks in the registration and use of the disputed domain name and further states that the Respondent is not and has not, to the Complainant’s knowledge, been commonly known by the disputed domain name prior to its registration.

The disputed domain name was registered on July 5, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant represents that it owns and has rights in its MCGRAW-HILL Trademark alone or under a different script or associated with other terms as in the Family of MCGRAW-HILL Trademarks, whether used in regular script or design registered in over 50 countries and regularly used in its offices in 40 countries and further represents that the disputed domain name is substantively identical to its famous MCGRAW-HILL trademarks and that the addition of the descriptive word “ textbooks” and the gTLD suffix “.com” does not alter the likelihood of confusion.

Considering its long use of its famous MCGRAW-HILL Trademark, on the one hand, and the fact that the Respondent has incorporated the word “textbooks” in the disputed domain name, on the other hand, when the Complainant is the publisher of many educational textbooks, the Complainant represents that the Respondent not only uses the Complainant’s MCGRAW-HILL Trademark in the disputed domain name, but furthermore uses it in conjunction with the similar goods that are provided by the Complainant when the Complainant has never authorized such use of its MCGRAW-HILL Trademark by the Respondent in registering and using the disputed domain name and therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In respect of the third criterion, namely whether the disputed domain name was registered and is being used in bad faith, the Complainant submits that the website of the Respondent, at the address of the disputed domain name, is by its presentation and content, presented as if it were sponsored or endorsed by the Complainant as a MCGRAW-HILL textbook buy-back program, in that, Internet visitors are informed that they can buy or sell new and used MCGRAW-HILL textbooks. The website of the Respondent has the following statements below the section “search field” in its website:

“McGraw-Hill education textbooks.

Around the world, McGraw-Hill provides people with the information and its insights they need to adapt and grow in changing times.

Mc-Graw-Hill’s business spans the field of financial services, education, and business information with leading brand names such as Standard & Poor’s, McGraw-Hill Education, Platts, and J. D. Power & Associates.

By working together with our customers and partners, these brands are laying the foundation for a smarter, better world.” (Annex 2 to the Complaint, i.e., a printout of the Respondent’s website).

The Complainant states that this text is copied verbatim from the Complainant’s company website at the address of its own domain name “www.mcgraw-hill.com/site/about-us” and is immediately followed by a statement that misleadingly affiliates the Complainant with one of its competitors, Pearson Plc.

The Complainant further submits that the Respondent is attempting to capitalize on the goodwill of the Complainant, attract and comfort Internet users with the following statement at the end of its website “McGraw-Hill a name you Can Trust. Love your books.”

According to the Complainant, these statements demonstrate “that the Respondent registered and is using the [disputed] domain name intentionally to attract for commercial gain, Internet users to the Respondent’s website or other on-line location by creating a likelihood of confusion with the Complainant’s [Trade]mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location”.

The Complainant concludes its argument of registration and use of the disputed domain name in bad faith with a statement inspired by previous UDRP decisions namely “it is not possible to conceive of any plausible actual or contemplated active use of the [D]omain [N]ame by the Respondent that would not be illegitimate, such as by being a passing off, and infringement of consumer protection legislation or an infringement of the Complainant’s rights under trademark law”. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name registered by the Respondent 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Considering that the Trademark MCGRAW-HILL has been used by the Complainant, an internationally-known book company, active for more than a century in 40 different countries and that the company has progressed in such a way to be listed for more than 50 years on Fortune 500 company list, the Panel agrees with the representations of the Complainant that considerable fame is associated with the MCGRAW-HILL Trademark in which the Complainant has rights and furthermore, although no financial data has been provided, there is in this Panel’s view sufficient evidence to consider the MCGRAW-HILL Trademark widely-known.

The mere addition of the descriptive word “textbook” which corresponds to the major line of business of the Complainant does not in any way diminish the distinctive character of the MCGRAW-HILL Trademark nor the likelihood of confusion of the disputed domain name with the famous MCGRAW-HILL Trademark. Furthermore as it is well established in UDRP decisions, the addition of the suffix “.com” does not diminish in any way the confusing similarity.

The Panel finds that the Complainant has rights in the MCGRAW-HILL Trademark and the Family of MCGRAW-HILL Trademarks and that the disputed domain name is confusingly similar to the said MCGRAW-HILL Trademarks.

The first criterion of the Policy has been met.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this proceeding. Therefore, the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name, is not making a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s MCGRAW-HILL Trademark or to register the disputed domain name.

The evidence is to the contrary as it will be seen under the consideration of the third criterion where the Respondent is giving Internet visitors to its website the impression that they are visiting the Complainant’s website or that of a representative of the Complainant and where said Internet visitors are invited to buy or sell new or used books, which in this Panel’s view are commercial activities. As noted by the Panel in the Telstra case (supra), the name in the disputed domain name here is McGraw-Hill, not a descriptive word, more analogous to an invented word, such as Telstra in the Telstra case (supra) and the name McGraw-Hill- textbooks is not one traders would legitimately choose unless deliberately seeking to create an impression of association with the Complainant as the Panel finds in the present case.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

It should be noted that circumstances evidencing bad faith registration and use are not limited to the above.

The considerable similarity between the MCGRAW-HILL Trademark and the disputed domain name which incorporates the most distinctive element, McGraw-Hill in the MCGRAW-HILL Trademark and the Family of MCGRAW-HILL Trademarks is not diminished by the addition of the descriptive word “textbook”. The similarity is rather enhanced by this term which corresponds to the line of products marketed by the Complainant and could even be considered as a further development or addition of the trademark, MCGRAW-HILL TEXTBOOKS to its Family of MCGRAW-HILL Trademarks, in particular when one considers the content and statements present in the Respondent’s website.

Obviously in the present case, this is no surprise when we consider the statements that the Respondent blatantly borrowed from the website of the Complainant as reproduced herein. This confirms that the Respondent was fully aware of the existence of the MCGRAW-HILL Trademark in part considering its international use and corroborated by the fact that the MCGRAW-HILL Trademark is registered in the United Kingdom where the Respondent is located.

The Panel finds that the disputed domain name which was registered without the authorization of the Complainant to incorporate in it its famous MCGRAW-HILL Trademark, has been registered in bad faith.

A perusal of the above mentioned activities of the Respondent as they are represented on the Respondent’s website at the address of the disputed domain name, the high degree of similarity along with perception of an extension of the activities of the Complainant with the buy-back program in respect of the purchase or sale of new and/or used MCGRAW-HILL textbooks, substantiate the representations of the Complainant, which the Panel accepts, as evidence, namely that the use of the disputed domain name was to intentionally attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s famous MCGRAW-HILL Trademark so as to cause Internet visitors to see therein sponsorship, affiliation or endorsement of said website by the Complainant. This similarity and borrowing from the Complainant’s website by the Respondent is much more telling than the bad faith resulting from the passive holding noted by the UDRP panels in the three cases cited by the Complainant.

The Panel agrees with and adopts the statement cited by the Complainant as the Panel does not see in this activity of the Respondent in its website any that would not be illegitimate in that in this Panel’s view, there are clearly passing off activities and infringement of the Complainant’s rights in its registered MCGRAW-HILL Trademark in adopting a disputed domain name which is or can be considered a plausible extension of the Family of MCGRAW-HILL Trademarks.

The Panel finds that the disputed domain name is used in bad faith.

The third criterion under paragraph 4(a) of the Policy has been met.

7. Decision

The Panel concludes that:

(a) the disputed domain name <mcgrawhill-textbooks.com> is confusingly similar to the Complainant’s MCGRAW-HILL Trademark; and

(b) the Respondent has no rights or legitimate interests in the disputed domain name <mcgrawhill-textbooks.com>; and

(c) the disputed domain name <mcgrawhill-textbooks.com> has been registered and is being used in bad faith.

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mcgrawhill-textbooks.com> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist
Dated: June 7, 2012

 

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