WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McGraw Hill LLC v. Domain Admin, Hush Whois Protection Ltd.
Case No. D2021-0530
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 Admin, Hush Whois Protection Ltd., Seychelles.
2. The Domain Name and Registrar
The disputed domain name <mcgrawhillconnectplus.com> (the “Disputed Domain Name”) is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2021. On February 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 23, 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. In response to a clarification request by the Center, the Complainant filed an amended Complaint on March 15, 2021.
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 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 notified the Respondent’s default on April 11, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on April 18, 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 corporation organized under the laws of the United States that operates a business with a presence in numerous countries selling books, and digital services including educational software, online education services, and digital media education services. The Complainant holds registrations for the trademark MCGRAW-HILL in numerous countries, including United States Reg. No. 1350345, registered on July 23, 1985; and United States Reg. No. 3988680 for the trademark MCGRAW‐HILL CONNECT, registered on July 5, 2011 with an effective date of August 19, 2010 and a first use date of January 1, 2009.
The Complainant is also the owner of, inter alia, the domain name <mcgrawhill.com>.
The Disputed Domain Name <mcgrawhillconnectplus.com> was registered on December 3, 2011. The Complainant has provided the evidence that the Disputed Domain Name dynamically redirects to different web pages including a pay-per-click (“PPC”) parking page that included links to publishing and educational related goods and services including those offered by the Complainant.
5. Parties’ Contentions
The Complainant cites United States Reg. No. 1350345, registered on July 23, 1985, and other registrations that include the mark MCGRAW-HILL, as prima facie evidence of ownership.
The Complainant submits that the mark MCGRAW-HILL is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the MCGRAW-HILL trademark and that the similarity is not removed by addition of the words “connect” and “plus” as well as the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of any affiliation with the Complainant, or consent to use the Complainant’s trademark, and the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the Disputed Domain Name and has not used the Disputed Domain Name in connection with a bona fide offering of goods or services.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use and fame of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark MCGRAW-HILL pursuant to United States Reg. No. 1350345, registered on July 23, 1985 and the mark MCGRAW-HILL CONNECT pursuant to United States Reg. No. 3,988,680, registered on July 5, 2011. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the MCGRAW-HILL trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark MCGRAW-HILL without the hyphen; (b) followed by the word “connect”; (c) followed by the word “plus”; (d) followed by the gTLD “.com”.
It is well established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “mcgrawhillconnectplus”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of other words such as descriptive terms (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
This Panel finds the Complainant’s trademark is recognizable within the Disputed Domain Name, and that the additional words “connect” and “plus” do not prevent a finding of confusing similarity to the Complainant’s mark under the first element (see WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. In addition, the Complainant claims that the Respondent is not commonly known by the Disputed Domain Name or the marks MCGRAW-HILL or MCGRAW-HILL CONNECT, and is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
On any objective view of the evidence, there are no circumstances on the case file showing that the Respondent has rights or legitimate interests in a domain name incorporating the Complainant’s trademarks MCGRAW-HILL and MCGRAWHILL CONNECT.
Furthermore, the nature of the Disputed Domain Name, consisting of the Complainant’s well-known trademark MCGRAW-HILL and additional terms, cannot constitute fair use as it effectively suggests sponsorship or endorsement by the Complainant, which does not exist. See WIPO Overview 3.0, section 2.5.1.
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and, in the absence of a reply by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark MCGRAW-HILL is so well recognised around the world, including in its home country the United States that this Panel infers it is most unlikely the Respondent might have registered the Disputed Domain Name without knowing of it (e.g. The McGraw-Hill Companies, Inc. v. Amit Dhir, WIPO Case No. D2000-0862 (“the trademark MCGRAW-HILL is registered in many countries and the Complainant avers it has been widely used throughout the world”).
In view of the composition of the Disputed Domain Name, the Panel finds it highly probable that the Respondent knew of the Complainant’s trademark MCGRAW-HILL CONNECT, which registered in the United States only a few months earlier, and had it in mind at the time of registration. The Panel also observes that the additional chosen word “plus” may compound the confusion of Internet users searching for the Complainant, in view of the Complainant’s use of the MCGRAW-HILL CONNECT trade mark in relation to some of its digital offerings.
Further, a gap of several years between registration of a complainant’s trademark and a respondent’s registration of a disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In the present case, the Respondent registered the Disputed Domain Name decades after the Complainant first established trademark rights in the MCGRAW-HILL mark.
On the issue of use, the evidence is that the Disputed Domain Name resolves to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s MCGRAW-HILL branded products and services. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; WIPO Overview 3.0, section 3.5.
As the Respondent has used a privacy or proxy service and there is evidence the Respondent may have provided false or incomplete contact information, the Panel also finds this conduct is a further indication of bad faith (see WIPO Overview 3.0, section 3.6).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark MCGRAW-HILL and incorporated it into the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking web page for commercial gain, and has sought to cover its tracks by providing false or incomplete contact information and hiding behind a privacy or proxy service.
Accordingly, the Panel finds 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 <mcgrawhillconnectplus.com> be transferred to the Complainant.
Date: May 2, 2021