WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HarperCollins Publishers Limited v. Brandon Rowe
Case No. D2013-0390
1. The Parties
Complainant is HarperCollins Publishers Limited, of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Karly Last, United Kingdom.
Respondent is Brandon Rowe of Ardmore, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <michaelmorpurgo.org> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2013. On February 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27 and 28, 2013, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 1, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. In response to this invitation as well as a notification by the Center that the Complaint was administratively deficient in the Registrar’s identity, Complainant filed an amendment to the Complaint on March 4, 2013.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on March 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 26, 2013.
The Center appointed Roberto Bianchi as the sole panelist in this matter on April 3, 2013. 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.
On April 11, 2013, by the Administrative Panel Procedural Order No. 1 the Panel requested additional documentary evidence of Complainant’s rights in the unregistered MICHAEL MORPURGO mark, allowed Respondent to send its comments on Complainant’s submission in compliance with the Procedural Order No. 1, and reset the deadline to issue the Decision to April 27, 2013.
On April 16, 2013 Complainant submitted a written statement by Mr. Morpurgo, dated April 15, 2013. No comments were received from Respondent by April 20, 2013, as allowed by Procedural Order No. 1, or until today.
4. Factual Background
Michael Morpurgo is an English author mainly known for his work in children’s literature. Complainant, a company resident in London, United Kingdom, is the publisher of Mr. Morpurgo’s books.
The disputed domain name was created on April 18, 2005.
5. Parties’ Contentions
In its Complaint, Complainant contends as follows:
The disputed domain name is identical to the MICHAEL MORPURGO mark in which Complainant has rights as the exclusive publisher of books written by Michael Morpurgo. Complainant was previously the registered owner of the disputed domain name, used to market and promote such books.
Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name. There is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona ﬁde offering of goods or services.
The disputed domain name should be considered as having been registered and used in bad faith by Respondent. By using the disputed domain name and refusing to acknowledge or respond to correspondence from Complainant, Respondent is using the disputed domain name to purposefully disrupt the business of a competitor. By placing advertisement links for “Texas Insurance” onto the website “www.michaelmorpurgo.org”, Respondent is seeking to divert business from Complainant.
Respondent did not reply to Complainant’s contentions, and is in default.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the 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 domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The consensus view is that Policy paragraph 4(a)(i) does not refer exclusively to a registered mark. Unregistered marks are also considered for a complainant to establish rights in a mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”, paragraph 1.7 (“1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.”)
The Panel notes that Mr. Michael Morpurgo is a widely known author. After visiting Complainant’s “www.michaelmorpurgo.com” website, the Panel confirms that Complainant is the publisher of Mr. Morpurgo’s 12 picture books, younger fiction (40 books), older fiction (34 books), and 10 gift books and box sets, and that Complainant is marketing these products by providing links to “www.amazon.co.uk” for such products. In the Panel’s opinion, the fact that Mr. Morpurgo has authored so many literary creations, and that his publisher is marketing them under his personal name made this name become an identifier for his literary works as a result from relevant use, i. e. an unregistered mark. Also, in compliance with Procedural Order No. 1, Complainant has provided documentary evidence that Mr. Morpurgo confirms that Complainant, as the exclusive publisher of his literary works, has rights in the unregistered mark MICHAEL MORPURGO to the extent that its use is required to successfully publish, distribute, market and advertise his literary work, and that such rights include the right to control and run any domain name that is registered under his name. Respondent did not contest this evidence, since it has sent no comments on Complainant’s submission in compliance with Procedural Order No, 1.
Accordingly, the Panel is satisfied that MICHAEL MORPURGO is an unregistered mark protecting literary creations, in which Complainant has rights as an exclusive publisher and marketer.
Since the disputed domain name contains the MICHAEL MORPURGO mark in its entirety, without the space between “Michael” and “Morpurgo”, and with the addition of the “.org” gTLD – two minor differences generally considered to be inapt to distinguish a domain name from a mark – the Panel concludes that the disputed domain name is identical to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
It is well established that a complainant must first establish a prima facie case that the respondent lacks any rights or legitimate interests in the disputed domain name, and once this is done, the burden shifts to the respondent to show that it has a right or legitimate interest in the disputed domain name. See WIPO Overview 2.0, paragraph 2.1 (“[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]”).
In the present case, Complainant contends that Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name, and that there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona ﬁde offering of goods or services.
Given Respondent’s failure to explain the nature of its website at the disputed domain name, on April 9, 2013 the Panel connected its browser to the website at the disputed domain name, which showed contents exclusively related to offering Visa and MasterCard credit cards, including solicitations to submit online applications for such cards through certain links, also provided on the website. Presently, no contents related to Mr. Michael Morpurgo or to any of its works are being posted on the website.
Thus, it appears that Respondent’s website at the disputed domain name is clearly not a fan site. Also, it is evident to the Panel that Respondent is using Mr. Morpurgo’ s name and the MICHAEL MORPURGO mark to promote financial products and services totally unrelated to Mr. Michael Morpurgo or to his books. In the Panel’s opinion, there is no evidence of a present or future use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), or of a fair or legitimate noncommercial use without intent for commercial gain pursuant to Policy paragraph 4(c)(iii). Finally, there is no evidence that Respondent ever was commonly known by the disputed domain name, or by a name corresponding to the disputed domain name, pursuant to Policy paragraph 4(c)(ii).
For these reasons, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Given that Mr. Morpurgo is a well-known author of numerous literary works, and that Respondent has posted many references and texts related to Mr. Morpurgo on the website at the disputed domain name, it is evident that at the time of registering the disputed domain name Respondent knew well of Mr. Morpurgo, his books, and of the MICHAEL MORPURGO mark, and targeted this author and his creations, which is a requisite for registration in bad faith.
As to use in bad faith, on the website at the disputed domain name Respondent has posted advertising for financial products and links totally unrelated to Mr. Morpurgo or his works, thus presumably attempting to extract a profit - via commissions or a pay-per-click scheme - from Internet users visiting the website looking for the author and his creations. Thus, Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which is a circumstance of registration and use in bad faith according to Policy paragraph 4(b)(iv).
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 <michaelmorpurgo.org> be transferred to Complainant.
Date: April 26, 2013