WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RELX Group PLC v. Privacy service provided by Withheld for Privacy ehf / william brentjens, Blockchain

Case No. D2021-1137

1. The Parties

The Complainant is RELX Group PLC, United Kingdom, represented by Nelson Mullins Riley & Scarborough, LLP., United States of America (“United States”).

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / william brentjens, Blockchain, United States.

2. The Domain Name and Registrar

The disputed domain name <reedelsevier.digital> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2021. On April 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2021, 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 April 16, 2021 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 April 17, 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 April 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2021.

The Center appointed Marilena Comanescu as the sole panelist in this matter on June 2, 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, formed in 1992 as Reed Elsevier and rebranded as RELX in 2015, is a multinational information and analytics company, headquartered in London, employing 33,000 employees across nearly 40 countries and serving customers in more than 180 countries worldwide. The Complainant operates in four market segments: scientific, technical and medical; risk and business analytics; legal; and exhibitions. As of 2020, the Complainant’s market capitalization was USD 48.3 billion.

The Complainant and its affiliates hold numerous trademark registrations for REED ELSEVIER such as the following:

- the European Union Trademark Registration No. 0652834 for REED ELSEVIER (word) filed on October 3, 1997, and registered on October 20, 1999, and covering goods and services in classes 9, 16, 35, 39, 41, 42; and

- the International Trademark Registration No. 1210581 for REED ELSEVIER (word) of February 17, 2014, covering services in classes 35, 41, 42 and 45.

The Complainant, or its predecessors and/or successors in interest, are the registered owners of the websites “www.elsevier.com”, “www.reedelsevier.com” and “www.relx.com”.

The disputed domain name <reedelsevier.digital> was registered on February 9, 2021, and, according to the evidence provided as Annex 16 to Complaint, it was initially used in connection with a website that promoted the sale or investment in a cryptocurrency or token created by the Respondent; on such webpage the Respondent presented itself as “RELX” and the trademark REED ELSEVIER was prominently displayed.

Prior to the present proceedings, on March 26, 2021, the Complainant sent a cease and desist letter to the Respondent. No substantive reponse was received to the letter.

On March 26, 2021, the Complainant submitted a trademark abuse complaint with Facebook regarding the Respondent’s facebook “@reedelsevier1” page. The page was subsequently taken down by Facebook and the Complainant received two email messages from the Respondent, the first one asking why the Complainant closed the Respondent’s Facebook page and the later to propose a partnership. The Complainant declined the proposal and reiterated its position regarding the transfer of the disputed domain name from the Respondent to the Complainant.

Following such correspondence, according to Annex 20 to Complaint, the content of the website corresponding to the disputed domain name was changed, resolving to a retail electronics e-commerce website featuring, among other products, drones, smart phones and tablets. Under the “About Us” title, the Respondent presented the website holder as “Reed Elsevier Launched in 2021” and displayed the trademarks REED ELSEVIER and the name “RELX” together with a copyright claim.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical and confusingly similar to its trademarks REED ELSEVIER and ELSEVIER, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it.

B. Respondent

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

6. Discussion and Findings

In view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) he Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Panel finds that the Complainant holds rights in the REED ELSEVIER trademark.

The disputed domain name incorporates the Complainant’s trademark REED ELSEVIER in its entirety.

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.info”, “.digital”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Given the above, the Panel finds that the disputed domain name is identical to the Complainant’s trademark REED ELSEVIER, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark REED ELSEVIER, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.

Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.

The Respondent has used the disputed domain name in connection with commercial websites either to promote cryptocurrency or various electronic and other products, featuring the Complainant’s distinctive trademarks without the Complainant’s consent.

Furthermore, and without prejudice to the above, the nature of the disputed domain name, comprising the Complainant’s trademark in its entirety carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant holds trademark rights for REED ELSEVIER since 1999. Due to its extensive use and marketing, the REED ELSEVIER trademark has become distinctive and enjoys significant reputation in its industry. See also Elsevier Science Inc. v. M. Moya, Ayom, WIPO Case No. D2001-0855.

The disputed domain name was registered in 2021 and reproduces the Complainant’s trademark identically. Furthermore, the disputed domain name is registered in the gTLD “.digital” which is closely related to the Complainant’s business.

From the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.

According to the evidence provided in the Complaint, the website operated under the disputed domain name was used for commercial purposes, for promoting investments in a cryptocurrency or token created by the Respondent, or for an e-commerce website featuring, among others, products such as drones, smart phones and tablets. Both versions of the websites under the disputed domain name prominently displayed the Complainant’s trademarks and falsely presented the Respondent as “Reed Elsevier”.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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 [the respondent’s] website or location” is evidence of registration and use in bad faith.

Given that the disputed domain name incorporates the Complainant’s distinctive trademark and the website operated under the disputed domain name displays the Complainant’s trademarks and claims copyright protection on its content, indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that the website is held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.

The Respondent provided inaccurate contact information in the WhoIs and refused to participate in the present proceedings in order to put forward any arguments in its favor. Having viewed the other circumstances of this case, such facts constitute further evidence of bad faith behavior.

Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 name <reedelsevier.digital> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: June 16, 2021