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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

McGraw Hill LLC v. Super Privacy Service LTD c/o Dynadot / lin yanxiao

Case No. D2021-1436

1. The Parties

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

The Respondent is Super Privacy Service LTD c/o Dynadot, United States / lin yanxiao, China.

2. The Domain Name and Registrar

The disputed domain name <mheducationconnect.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2021. On May 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 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 May 11, 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 amendment to the Complaint on May 11, 2021.

The Center verified that the Complaint together with the amendment to 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 May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2021.

The Center appointed Andrew F. Christie as the sole panelist in this matter on July 1, 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 an American company involved in a wide variety of services since 1909, beginning with book publishing. Since that time, the Complainant’s name has been used in connection with its ever‑expanding business, which includes educational software, online and digital media education services, and textbook and other book publishing. The Complainant employs more than 6,000 people in 44 countries and publishes in more than 60 languages.

The Complainant is the owner of Swiss Trademark Registration No. 680648 for the word trademark MHEDUCATION (registered on November 20, 2015), United States Trademark Registration No. 3988680 for the word trademark MCGRAW HILL CONNECT (registered on July 5, 2011), and United States Trademark Registration No. 5263471 for the stylized trademark CONNECT (registered on August 15, 2017). The Complainant uses the stylized trademark CONNECT as the brand for its flagship online education platform.

The Complainant’s MHEDUCATION trademark has been used as part of its domain name at <mheducation.com> for over 20 years. The “mh” portion of the Complainant’s domain name refers to the initials of the Complainant’s name, “McGraw Hill”.

The disputed domain name was registered on April 18, 2021. The Complainant has provided screenshots of the website resolving from the disputed domain name at an unspecified date, showing that it resolved to a website containing pay-per-click links which reference the Complainant and direct Internet users to third party websites that are not associated with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) it completely incorporates the Complainant’s MHEDUCATION trademark, with the only difference being the addition of the word “connect”, which is another of the Complainant’s trademarks, and the non-substantive addition of the generic Top-Level Domain (“gTLD”) “.com”; and (ii) these slight differences cannot prevent a finding of confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (ii) it combines and completely incorporates two of the Complainant’s trademarks, namely, MHEDUCATION and CONNECT; (ii) the Respondent is not and has never been a representative or licensee of the Complainant, and is not authorized by the Complainant to use its trademarks in the disputed domain name; and (iii) the Respondent is not and has not been commonly known by the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent registered the disputed domain name on April 18, 2021, long after the Complainant’s trademarks were first used and had become famous; (ii) given the Complainant’s fame and long-time Internet presence through its <mheducation.com> domain name, the Respondent cannot reasonably deny that the disputed domain name was registered with the Complainant’s MHEDUCATION and CONNECT trademarks in mind; (iii) the Respondent uses the landing page of the website resolving from the disputed domain name to lead to a page of links to third party websites, and such diversion of traffic has been found to be evidence of bad faith; (iv) as the disputed domain name is confusingly similar to the Complainant’s MHEDUCATION trademark and <mheducation.com> domain name, as well as to its CONNECT trademark, the disputed domain name is likely the result of a deliberate attempt to attract Internet users who would make a common error in looking for the Complainant’s website; (v) the fact that the Respondent has used a privacy service to hide its identifying information is further evidence of bad faith; (vi) it is evident that the Respondent registered and is using the disputed domain name intentionally to attract, for commercial gain, Internet users to the Respondent’s website or other online locations, by creating a likelihood of confusion with the Complainant’s trademarks 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; and (vi) as the Complainant is extremely well known and famous, the Respondent can make no good faith use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists solely of the Complainant’s registered word trademark MHEDUCATION and the textual component of the Complainant’s registered stylized trademark CONNECT. Accordingly, the Panel finds that the disputed domain name is identical to a combination of trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its MHEDUCATION word trademark or its CONNECT stylized trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website with pay-per-click links to third party websites for various goods and services. Given the confusing similarity -of the disputed domain name to the Complainant’s trademarks and the absence of any relationship between the Respondent and the Complainant, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered its MHEDUCATION word trademark and CONNECT stylized trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademarks, given that the Complainant’s trademarks have been heavily used and that the disputed domain name consists solely of a combination of them. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 <mheducationconnect.com> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: July 15, 2021

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