WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HM Publishers Holdings Ltd v. Marcus Costa Camargo Peres
Case No. D2013-1597
1. The Parties
The Complainant is HM Publishers Holdings Ltd of Basingstoke, Hampshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Graham Watt & Co LLP, United Kingdom.
The Respondent is Marcus Costa Camargo Peres of Mossoro, Brazil.
2. The Domain Name and Registrar
The disputed domain name <fuckmacmillan.info> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2013. On September 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2013, the Registrar transmitted by email to the Center its verification response 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 September 12, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 16, 2013.
The Center verified that the Complaint together with 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2013.
The Center appointed Brigitte Joppich as the sole panelist in this matter on October 11, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is part of the Macmillan Group of publishing companies, the origins of which were founded in 1843. The Macmillan Group is one of the largest international publishers in the world, operating in over 70 countries.
The Complainant is registered owner of numerous trademark registrations for MACMILLAN worldwide, inter alia Community trademark registration no. 002878791 MACMILLAN, registered on February 18, 2004, Community trademark registration no. 002061398 MACMILLAN, registered on May 21, 2002, and United States trademark registration no. 0969205 MACMILLAN, registered in September 25, 1973 (hereinafter referred to as the “MACMILLAN Marks”). The Complainant provides information on its company and products at “www.macmillan.com”.
The disputed domain name was registered on January 31, 2013 and is used in connection with a website with links to various activities resembling the Complainant’s activities, including alleged (but false) links to their own Pan Macmillan site.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name fully includes the Complainant’s MACMILLAN Marks and is identical or confusingly similar to such marks, as the expletive “fuck” included in the disputed domain name is a non-distinctive term.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, as the Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name, as the Respondent has acquired no trademark or service mark rights and as the Respondent is making no legitimate noncommercial or fair use of the disputed domain name but misleadingly diverts consumers and tarnishes the Complainant’s MACMILLAN Marks.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant argues that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor. Furthermore, the Complainant contends that the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's MACMILLAN Marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; 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
The disputed domain name fully incorporates the distinctive MACMILLAN Marks in which the Complainant has exclusive rights.
In the view of the Panel, the mere addition of the common or generic word “fuck” preceding the Complainant’s trademark does not eliminate the similarity between the MACMILLAN Marks and the domain name. It is established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, even if they have a pejorative meaning (cf. Koninklijke Philips Electronics N.V v. Selling Domains Best, WIPO Case No. D2002-1041 (<fuckphilips.com>); Bloomberg L. P. v. Secaucus Group, NAF Case No. FA97077 (<michaelbloombergsucks.com>); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (<wal-martsucks.com>); Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 (<berlitzsucks.com>); Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003-0596 (<wachovia-sucks.com> et al.); Cabela’s Incorporated v Cupcake Patrol, NAF Claim No. 95080 (<cabelassucks.com>); Direct Line Group Ltd, Direct Line Insurance plc, Direct Line Financial Services Ltd, Direct Line Life Insurance Company Ltd, Direct Line Unit Trusts Ltd, Direct Line Group Services Ltd v. Purge I.T., Purge I.T. Ltd, WIPO Case No. D2000-0583 (<directlinesucks.com>)).
Furthermore, it is well established that the generic top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Respondent’s use of the disputed domain name was not bona fide under the Policy. The Respondent used the disputed domain name in connection with a website with links to thirds parties’ websites, including “www.amazon.com”. In the present case, such use does not constitute rights or legitimate interests under paragraph 4(c)(i) of the Policy. In any event, based upon the evidence submitted, such use of the website would fail to provide the Respondent with a right or legitimate interest in the disputed domain name as a criticism site, as the demonstrated use of the disputed domain name does not appear to be for criticism but for commercial purposes (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “WIPO Overview 2.0”, paragraph 2.4).
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and thus in bad faith under paragraph 4(a)(iii) of the Policy. The name MACMILLAN is highly distinctive and has been used by the Complainant and affiliated companies for many decades. Given that the Respondent registered the disputed domain name to use it in connection with a website with various links referring to the Complainant and its products, it is almost inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant.
As to bad faith use, the Panel finds that, by using the disputed domain name in the way described above, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.
The Panel consequently finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <fuckmacmillan.info> be transferred to the Complainant.
Date: October 24, 2013