WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lagardere SCA v. Contact Privacy Inc. Customer 1245111894 / Hachette Book Group; Domains by Proxy, LLC / Hachette Book Group
Case No. D2019-2113
1. The Parties
The Complainant is Lagardere SCA, France, represented by GPI Marques, France.
The Respondent is Contact Privacy Inc. Customer 1245111894, Canada / Hachette Book Group, United States of America (“United States”); Domains by Proxy, LLC, United States / Hachette Book Group, Nigeria.
2. The Domain Names and Registrars
The disputed domain name <hachettebooksgroup.com> is registered with Google LLC (“Google”).
The disputed domain name <hachettesbookgroup.com> is registered with GoDaddy.com, LLC (“GoDaddy”).
These domain names are referred to collectively in this decision as the “Disputed Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2019. On August 30, 2019, the Center transmitted by email to the Registrars, Google and GoDaddy, requests for registrar verification in connection with the Disputed Domain Names. On September 2, 2019, Google transmitted by email to the Center its verification response confirming that the relevant Respondent is listed as the registrant of <hachettebooksgroup.com> and providing the contact details. On September 3, 2019, GoDaddy transmitted by email to the Center its verification response confirming that the relevant Respondent is listed as the registrant of <hachettesbookgroup.com> and providing 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 11, 2019. 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 one of the world’s leading publishers. Its origins date back to 1862. The annual revenue of the Complainant exceeds EUR 7 billion.
Many of the Complainant’s publishing activities are carried out under or by reference to its trademark HACHETTE. In the United States it operates via a subsidiary called Hachette Book Group Inc. which is a leading United States publisher. Hachette Book Group Inc. is headquartered in New York City with offices in several American cities i.e. Boston, Lebanon, Nashville, Boulder, Philadelphia, and Berkeley. Yearly, Hachette Book Group Inc. publishes approximately 1,400 adult books (including 50-100 digital-only titles), around 300 books for young readers, and 700 audiobook titles. 150 of its published books made the New York Times bestseller list in 2018, including 31 that ranked number one.
The Complainant is the owner of numerous registrations for the trademark HACHETTE all over the world and filed before the date of registration of the Disputed Domain Names including for example French trademark HACHETTE No. 1356085 dated on April 25, 1985, European Union trademark HACHETTE No. 003608551 registered on June 30, 2005, and International trademark H HACHETTE No. 1038697, registered on December 11, 2009, and registered in the United States. These are referred to as the “HACHETTE” trademark in this decision.
The Complainant is also the registrant of various domain names including the HACHETTE trademark for example <hachette.com>, <hachette.fr>, <hachette-livre.com>, <hachette-diffusion.fr>, <hachette-collections.com>, <hachette-education.com>, <hachette-livre-international.com> and <hachette-livre-intl.com>.
The Disputed Domain Name <hachettebooksgroup.com> was registered on July 22, 2019, and the Disputed Domain Name <hachettesbookgroup.com> was registered on July 23, 2019. Neither of the Disputed Domain Names resolve to a website. The Disputed Domain Name <hachettesbookgroup.com> has been used to send at least one fraudulent email impersonating the Complainant and seeking to obtain financial information from the recipient.
After sending a cease and desist letter to GoDaddy and its domain privacy service, the identity of the registrant of the domain name <hachettesbookgroup.com> was revealed by the domain privacy service, i.e. Domains by Proxy, LLC, as being “Hachette Book Group” with an address in Nigeria. No such entity exists and the address in question is that of a shopping mall.
5. Parties’ Contentions
The Complainant alleges that the Disputed Domain Names are each registered by the same unknown person.
The Complainant alleges that each of the Disputed Domain Names incorporates the HACHETTE trademark in its entirety, and combines it with the word “book” and “group” to form typographical variations of its United States subsidiary’s name. The Complainant says that the Disputed Domain Names are confusingly similar to its HACHETTE trademark particularly given that HACHETTE is a worldwide well-known trademark and is not a dictionary word. The public will clearly perceive the trademark HACHETTE in the Disputed Domain Names.
The Complainant says that the Respondent has no rights or legitimate interests in the term “hachette”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Names is in bad faith. The Complainant says that it is inconceivable that the Respondent would not be aware of the famous trademark HACHETTE at the time of registration of the Disputed Domain Names. By virtue of the wide spread use and reputation of the trademark HACHETTE, Internet users would believe that the entity owning the Disputed Domain Names is the Complainant or in some way associated with the Complainant. It says it is clear the Respondent is engaged in fraudulent “phishing” activity using typographical variations of its United States subsidiary’s name.
The Complainant also relies on its rights in the name of its subsidiary, Hachette Book Group Inc., and in effect repeats what it has said above.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
This is a case which is in formal terms brought against multiple Respondents, one (see below) for each of the Disputed Domain Names.
A complaint is allowed to proceed with multiple respondents when the domains or websites are under common control. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.11.2 where it states: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
With reference to the above, the Panel agrees with the Complaint that the Disputed Domain Names are more than likely under common control given that (a) they were registered within a day of each other and (b) they each comprise a typographical variation on the name of the Complainant’s United States subsidiary. The Panel concludes it is likely that both of the Disputed Domain Names are being controlled by a single entity, and thus are subject to common control. See Eli Lilly and Company v. Darren K. Headley, Tim B. Hartman, Lana D. Cummings, Dante K. Ruiz, Esther G. Roberts, Joey W. Durfee, WIPO Case No. D2013-1303, and the cases therein cited.
The Panel also notes this is a case where two named Respondents (“Domains by Proxy, LLC” and “Contact Privacy Inc. Customer 1245111894”) appear to be privacy or proxy services. Another Respondent, Hachette Book Group is a fictitious name and does not exist (according to the evidence in the case file).
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be the unknown person who corresponds to the privacy or proxy services and who also effected registration in the fictitious name “Hachette Book Group”; references to “the Respondent” are to that person.
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the HACHETTE trademark. The Panel also finds the Complainant has common law trademark rights in the term HACHETTE BOOK GROUP (see WIPO Overview 3.0, section 1.3 in this regard).
The Panel concludes each of the Disputed Domain Names is confusingly similar to the HACHETTE trademark and HACHETTE BOOK GROUP trademark. The Panel agrees in this regard with the approach set out in WIPO Overview 3.0, section 1.9, namely:
“Is a domain name consisting of a misspelling of the complainant’s trademark (i.e., typosquatting) confusingly similar to the complainant’s mark?
A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Names for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the HACHETTE trademark and the HACHETTE BOOK GROUP trademark are, on the evidence before the Panel, terms in which the Complainant has developed a significant reputation and where there is no evidence of anyone else using those terms.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use 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 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 consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use HACHETTE trademark or the HACHETTE BOOK GROUP trademark. The Complainant has prior rights in the HACHETTE trademark and the HACHETTE BOOK GROUP trademark which precede the Respondent’s registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The filed evidence establishes that the Disputed Domain Name <hachettebooksgroup.com> has been used fraudulently in terms of phishing for financial data. The Panel infers the Respondent either has or intends to carry out similar activity with the other Disputed Domain Name. The Panel concludes that the Disputed Domain Names have either been used or are intended for use in connection with activity which is intended to obtain data which can then in all probability be used in further fraudulent activity directed against the Complainant or its customers. See Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031, and the cases therein referred to, for further analysis of why phishing activities amount to use in bad faith. See also Grupo Financiero Inbursa S.A. de CV v. ibuirisa, WIPO Case No. D2006-0614 to similar effect. Furthermore, the Panel notes the Disputed Domain Names differ from the HACHETTE BOOK GROUP trademark only by the addition of an “s”. Such obvious misspellings of the Complainant’s trademark carry an implied risk of affiliation or association with the Complainant (and its subsidiary) and as such leads to a further inference of the Respondent’s bad faith registration and use of the Disputed Domain Names. The fact that there are no active websites does not prevent a finding of bad faith.
As a result the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 Names, <hachettesbookgroup.com> and <hachettebooksgroup.com>, be transferred to the Complainant.
Nick J. Gardner
Date: October 26, 2019