WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

McGraw Hill LLC v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2021-0491

1. The Parties

The Complainant is McGraw Hill LLC, United States of America (“United States”), represented by Leason Ellis, United States.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Names and Registrar

The disputed domain names <mcgraw-hill-education.com> and <mcgrawhilllconnect.com> are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2021. On February 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 22, 2021, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2021. The Respondent did not submit any response. Accordingly, the Center informed the Parties that it would proceed with panel appointment on April 23, 2021.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on April 29, 2021. 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 United States company that operates in the book publishing industry, using the MCGRAW-HILL trademark since 1909. The Complainant’s business has expanded since 1909 to a wide variety of product and services, including educational software, online and digital media education services, textbooks and other book publishing services. Currently, the Complainant operates in many jurisdictions, as well as globally over the Internet through its website at “www.mheducation.com”, under the MCGRAW-HILL trademark as well as other related trademarks that identify its various products and services, including the MCGRAW-HILL EDUCATION and MCGRAW-HILL CONNECT trademarks (collectively the “MCGRAW-HILL marks”).

The Complainant has rights in its MCGRAW-HILL marks in over 70 jurisdictions around the world, including the following:

- United States Trademark Registration No. 1,350,345 MCGRAW-HILL, registered on July 23, 1985, in class 16;
- United States Trademark Registration No. 4,664,266 MCGRAW-HILL EDUCATION, registered on December 30, 2014, in classes 9, 16, 41, and 42; and
- United States Trademark Registration No. 3,988,680 MCGRAW-HILL CONNECT, registered on July 5, 2011, in classes 38 and 41.

Prior decisions under the Policy have considered the MCGRAW-HILL trademark widely known¹ .

The Complainant further owns the domain name <mcgraw-hill.com>, which resolves to its corporate website at “www.mheducation.com”, where the Complainant offers its goods and services since December 2000.

The disputed domain name <mcgraw-hill-education.com> (the “first disputed domain name”) was registered on January 15, 2021, and the disputed domain name <mcgrawhilllconnect.com> (the “second disputed domain name”) was registered on January 22, 2021, both using privacy services. The disputed domain names resolve to websites displaying links to various third parties websites in the education and publishing industries. According to the evidence provided by the Complainant, the first disputed domain name previously resolved to a site requesting users to agree to a Chrome browser extension.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The MCGRAW‐HILL marks are well known around the world.

The disputed domain names incorporate the MCGRAW‐HILL marks with the only difference of an extra hyphen in the first disputed domain name and an extra letter “l” in the second dispute domain name, which cannot prevent a finding of confusing similarity.

The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the terms included in the disputed domain names, and has never been a representative or licensee of the Complainant, not being authorized to use the MCGRAW-HILL marks.

The disputed domain names were registered and are being used in bad faith. Due to the well-known character of the MCGRAW-HILL marks and their long time Internet presence, it is not conceivable any plausible active use of the disputed domain names by the Respondent that would not be illegitimate. The Respondent cannot reasonably deny that the disputed domain names were registered targeting the MCGRAW-HILL marks. The first disputed domain name resolved to a site requesting users to agree to a Chrome extension, which allegedly may be associated with malware and phishing attempts. The second disputed domain name is linked to a website including links to third parties’ websites related to the Complainant’s business, which offer competing products and services. The additional letter “l” in the second disputed domain name is likely a deliberate attempt of typosquatting, trying to attract Internet users who would make a common error in typing the Complainant’s trademark. The use of a privacy service to hide the Respondent’s identity is further evidence of bad faith, and avoided the possibility of contacting the Respondent. The Complainant tried to contact the Respondent using the email addresses in the WhoIs information, but the Registrar declined to reveal the Respondent’s identity. The disputed domain names were registered and are being used to intentionally attract for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s marks.

The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Identical or Confusingly Similar

The Complainant indisputably has rights in the registered MCGRAW-HILL marks, both by virtue of its trademark registrations and as a result of its global goodwill and reputation.

The disputed domain names incorporate the MCGRAW-HILL marks, and the generic Top-Level Domain (“gTLD”) “.com” which is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. The first disputed domain name adds an extra hyphen between the terms “mcgraw-hill” and “education”, and the second disputed domain name deletes an hypen between the term “mcgraw-hill” and includes an additional letter “l” in the word “hill”, which may be misspellings of the Complainant’s trademarks MCGRAW-HILL EDUCATION and MCGRAW-HILL CONNECT respectively. The disputed domain names contain sufficiently recognizable aspects of the Complainant’s trademarks, being these marks recognizable in the disputed domain names. See sections 1.7, 1.9 and 1.11, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.

The Complainant’s assertions and evidence effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain names, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain names in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions.

In the absence of any Response, the Panel notes that the disputed domain names are being used in connection to websites including pay-per-click links (“PPC” links) to competing third parties’ websites in the same business field of the Complainant, which offer competing products and/or services in the education and publishing sectors. There is no indication or evidence showing that the Respondent is commonly known by the disputed domain names, no indication of any bona fide offering of goods or services under the disputed domain names, and no indication of any legitimate noncommercial or fair use of the disputed domain names.

A core factor in assessing potential fair use of the disputed domain names is that it does not falsely suggest affiliation with the Complainant’s trademarks. See section 2.5.1 of the WIPO Overview 3.0. The disputed domain names incorporate the Complainant’s trademarks with misspellings of these marks. Therefore, the Panel considers that there is a clear risk of implied affiliation.

It is further remarkable the Respondent has used a privacy service, and has not replied to the Complaint or provided any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstances that may be considered as rights or legitimate interests in the disputed domain names.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent lacks of any rights or legitimate interests in the disputed domain names, and the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain names have been registered and are being used in bad faith.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2 of the WIPO Overview 3.0.

The Panel notes the centennial existence and use of the MCGRAW-HILL trademark, as well as the extensive presence over the Internet, its international use and global reputation, which have been recognized by previous decisions under the Policy.

The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain names: (i) the disputed domain names incorporate the Complainant’s MCGRAW-HILL marks in their entirety, introducing misspellings (adding a hyphen in the first disputed domain name, and a letter “l” in the second disputed domain name), which intrinsically create a likelihood of confusion and affiliation; (ii) the Complainant’s trademarks are notorious in their sector, and the Complainant operates internationally; (iii) the disputed domain names are linked to websites including PPC links to third parties’ websites in the Complainant’s business sector, offering competing goods and/or services; (iv) according to the evidence provided by the Complainant, the first disputed domain name previously resolved to a site requesting users to agree to a Chrome browser extension, which allegedly may be associated with malware and phishing attempts; (v) the Respondent has used a privacy service to avoid revealing its identity; and (vi) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain names and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.

Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain names were very likely registered targeting the MCGRAW-HILL marks with the intention of obtaining a free ride on the established reputation of the Complainant, intentionally misleading Internet users into believing that there is a connection between the disputed domain names and the Complainant, which constitutes bad faith. It is further possible the first disputed domain name was registered with the intention to request the consent of the Internet users to a Chrome browser extension for illegitimate or fraudulent purposes in a phishing scam or any other type of fraud.

All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain names in bad faith under the third element of the Policy.

7. Decision

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 <mcgraw-hill-education.com> and <mcgrawhilllconnect.com> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: May 13, 2021

¹ See The McGraw-Hill Companies, Inc. v. OopWee Web Design & Marketing, WIPO Case No. D2012-0816.