WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PLOS (Public Library of Science) v. Sameer
Case No. D2014-1837
1. The Parties
The Complainant is PLOS (Public Library of Science) of San Francisco, California, United States of America, internally represented.
The Respondent is Sameer of New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <plosdentistry.com> is registered with Net 4 India Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2014. On October 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 4, 2014.
The Center verified that 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 proceeding commenced on November 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2014. The Respondent did not submit a formal response, but an individual apparently related to the Respondent sent emails to the Center on November 12, 2014 advising of the removal of its website. The Center acknowledged the email on November 13, 2014 and invited the Complainant on November 21, 2014 to request a suspension of the proceeding pending settlement, however there was no further communication by the parties.
The Center appointed Alistair Payne as the sole panelist in this matter on December 12, 2014. 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 "not for profit" science publisher based in San Francisco, California in the United States. The Complainant owns a word mark registration under number 3201746 in the United States for its PLOS trade mark dating from March 21, 2006. The Complainant owns the <www.plos.org> domain name at which it operates a website and publishes scientific articles and materials.
The Respondent registered the disputed domain name on July 16, 2014 and has used it to resolve to a website that publishes scientific articles in the field of dentistry.
5. Parties' Contentions
The Complainant submits that it owns the PLOS name and registered trade mark as noted above. It says that the disputed domain name incorporates the PLOS name and mark and in particular because the Respondent also holds itself out as a science publisher and is using the PLOS name to ask for submission of research articles, there is a high likelihood of confusion as researchers may think that the Respondent is somehow associated with the Complainant.
It submits as far as the second element of the Policy is concerned that the Respondent is not affiliated with the Complainant in any way and that the Complainant has never authorised the Respondent to use the PLOS name or mark.
In relation to bad faith registration and use the Complainant says that the Respondent is clearly trading on the success of the PLOS name or mark in an attempt to capitalize on it for the Respondent's benefit. In a cease and desist letter sent to the Respondent on October 7, 2014, the Complainant notes that it publishes science research from all over the world, including India, and thus the PLOS name is well-known in India. The Complainant demanded in its letter that the Respondent, who is based in India, should cease from using the PLOS name, in particular in the disputed domain name and in other ways such as in correspondence with authors, such that they might be given the false impression that they are dealing with the Complainant.
The Respondent did not formally reply to the Complainant's contentions. However an individual apparently related to the Respondent did send an email on November 12, 2014, prior to the due date for a response. He stated that following receipt of the Complainant's cease and desist letter he had withdrawn the website at the disputed domain name and had communicated with the Complainant accordingly and apologized for his actions.
6. Discussion and Findings
The Center acknowledged receipt of the above referred email on November 13, 2014 and invited the Complainant to request that the proceeding be suspended pending settlement negotiations. On November 19, 2014 the Complainant replied that it was prepared to withdraw the action if the Respondent agreed to cancellation of the disputed domain name. On November 21, 2014 the Center issued a further invitation to the Complainant inviting a request for suspension pending settlement by November 25, 2014, however there was no further communication by the parties and the proceeding remained on foot.
A. Identical or Confusingly Similar
The Complainant owns a word mark registration under number 3201746 in the United States for its PLOS trade mark dating from March 21, 2006. The disputed domain name wholly incorporates the Complainant's PLOS mark and the substantive element of the disputed domain name is identical to it. Accordingly, the Panel finds that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant is a publisher of scientific research, in particular on its website at "www.plos.org". It notes that it publishes scientific research from all over the world under the PLOS name or mark. It says that the material that it publishes also comes from India, and the Complainant is consequently concerned that researchers or others may falsely associate the disputed domain name and the Respondent's activity in relation to publishing scientific material in the dentistry field with the Complainant and in circumstances that the Complainant has never authorised or approved the Respondent's use of the disputed domain name.
Considering also that the Complainant's mark is apparently an acronym for its name "Public Library of Science", that the mark is highly distinctive in relations to the Complainant's scientific publication activities and that the Complainant has owned its trade mark registration for the PLOS mark since 2006, the Panel finds that the Complainant has made out a prima facie case, as it is required to do under this element of the Policy, that the Respondent who only registered the disputed domain name in July 2014 and operates in a very similar activity, has no rights or legitimate interests in the disputed domain name. As the Respondent has not put any argument or evidence forward to rebut the Complainant's case, the Panel finds that the Complaint succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
As noted above the Respondent only registered the disputed domain name in July 2014. That it chose such a distinctive mark as PLOS for its domain name, when it could have chosen any number of more obvious domain names and that it did so in relation to almost exactly the same activity, namely the publication of scientific articles on a website, is in the Panel's view more than a coincidence. The Panel infers on the balance of probabilities that the Respondent chose the disputed domain name purposefully and registered it with a view to attracting the Complainant's traffic to its website. The Panel notes also that the screen shot of the Respondent's website submitted in evidence includes a heading for "Advertisement" which is indicative of the commercial nature of the Respondent's operation.
Under paragraph 4(b)(iv) of the Policy the intentional use of a domain name to attempt to attract for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website is evidence of registration and use of the domain name in bad faith. It seems to the Panel that this is precisely what has occurred in this case. The Respondent chose and sought to incorporate the PLOS mark into the disputed domain name in order to confuse Internet users into thinking that its website or service was falsely associated or affiliated with the Complainant's in order to attract traffic to its website for commercial gain. The email of November 13, 2014 to the Center confirming that the website at the disputed domain name had been withdrawn and the Respondent's subsequent failure to cancel or transfer the disputed domain name as requested by the Complainant after this proceeding had commenced, only serves to reinforce the Panel's view of the Respondent's bad faith motive.
As a result the Panel finds that the disputed domain name was both registered and used in bad faith and the Complaint succeeds under this element 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 <plosdentistry.com> be transferred to the Complainant.
Date: December 15, 2014