WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elsevier BV and Elsevier Limited v. Domains by Proxy, LLC / Balasubramanian S, Scope Database Private Ltd, Dr. R. Anbu Ranjithkumar, Scope Database
Case No. D2021-3788
1. The Parties
Complainants are Elsevier BV and Elsevier Limited, Netherlands and the United Kingdom, represented by Mulla & Mulla & Craigie Blunt & Caroe, India.
Respondent is Domains by Proxy, LLC, United States of America (“United States”) / Balasubramanian S, Scope Database Private Ltd, Dr. R. Anbu Ranjithkumar, Scope Database, India, represented internally.
2. The Domain Name and Registrar
The disputed domain name <scopedatabase.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2021. On November 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 17, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received email communications from Respondent on November 17 and November 18, 2021. Complainant filed an amended Complaint on November 22, 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 Respondent of the Complaint, and the proceedings commenced on November 23, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was December 13, 2021. The Response was filed with the Center on December 9, 2021.
Complainant filed a supplemental filing on December 15, 2021. Respondent filed a supplemental filing on December 16, 2021. The Panel has determined, pursuant to paragraphs 10 and 12 of the Rules granting the Panel discretion to determine the admissibility of Supplemental Filings, it will accept the parties’ Supplemental Filings only in so far as the present new relevant information.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 20, 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
Complainants Elsevier BV and Elsevier Limited are part of the Elsevier group of companies and together carry on business under the trademark SCOPUS. Having a common legal interest, they have jointly filed the Complaint. Complainants are leaders in information and analytics for customers across the global research and health ecosystems, engaged in publishing and printing of scientific, technical, and medical content worldwide.
Complainant Elsevier BV is the owner of the trademark SCOPUS registered in Classes 9, 35, 38, 41, and 42 in several jurisdictions around the world, including Canada, European Union, India, Japan, Russian Federation, Singapore, United Kingdom, and United States of America. The SCOPUS trademark was coined and adopted for its abstract and citation database of peer-reviewed scientific journals, books, and conference proceedings. Elsevier BV holds exclusive rights to the trademark SCOPUS in respect of these goods and services. Complainants and their group companies first used the SCOPUS trademark in the United States and on the Internet as early as July 2004 and in India around 2006. Complainants use the SCOPUS mark in the European Union, India, United Kingdom, United States, Canada, Singapore, Japan, Russian Federation, China, Ukraine, Brazil, Argentina, Colombia, Turkey, Mexico, Saudi Arabia, Egypt, South Africa, Chile, Ukraine, Iran (Islamic Republic of), Tunisia, Kazakhstan, Peru, United Arab Emirates, Ecuador, Australia, New Zealand, Korea, Thailand, Indonesia, Malaysia, and Taiwan Province of China, Hong Kong, China, and Macau, China.
Complainant Elsevier Limited is the registered owner of the domain name <scopus.com>, registered on May 15, 1992, under authority from Complainant Elsevier BV. The website “www.scopus.com” prominently bears on its landing page the intellectual property notice: “Copyright © Elsevier B.V. All rights reserved. Scopus® is a registered trademark of Elsevier B.V.” Complainants offer customers access and subscription to the SCOPUS database under the trademark SCOPUS. Complainants provide information promoting the SCOPUS database through certain websites owned by Complainants, namely, “www.elsevier.com/en-gb/solutions/scopus” and “www.scopus.com/home.uri”, hosted and registered since July 2, 1993, and May 15, 1992. For convenience, Complainants Elsevier BV and Elsevier Limited will be referred to collectively as “Complainants” in this decision.
In September 2020, Complainants became aware that a journal indexing and citation database was being operated by Respondent under the name “Scope Database,” with a website linked to the Domain Name. The Domain Name was registered on April 24, 2019. The Domain Name is used to host Respondent’s website, which goes under the name “Scope Database.”
5. Parties’ Contentions
The parties’ arguments are summarized below.
(i) Identical or confusingly similar
Complainants contend that the Domain Name is confusingly similar to their SCOPUS trademark. Complainants claim that they have built goodwill and reputation in their SCOPUS database products under the trademark SCOPUS and have achieved recognition worldwide. Complainants state that owing to the widespread business of their high-quality SCOPUS database, which is promoted openly and extensively under the SCOPUS mark, including through Complainants’ websites, Complainants’ business enjoys recognition under the mark amongst the relevant public and industry. A great level of awareness of the same exists, including on the Internet and where the SCOPUS database is offered, including in India. The popularity of the SCOPUS trademark and Complainants’ SCOPUS database is generated through publication of content offered through Complainants’ websites. This also results in a large number of visitors and followers on high traffic social media platforms like Facebook, Twitter, and YouTube, with information regarding the SCOPUS database, and building in the SCOPUS mark a high brand recall.
Complainants also annually organize the NASI-Scopus Young Scientist Awards with the objective to support, recognize, and honor science and technology researchers. Nominees under the NASI-Scopus Young Scientist Awards are nominated based on their research work, publication, citations, and research quality. In India, Complainants have invested large sums of money to this end, which has developed the SCOPUS reputation and goodwill in India. The awards have over the years had high profile chief guests, including the Honorable Vice President of India.
Complainants state that the website linked to the Domain Name comprises the words “scope database.” These two words are displayed on the site and used by Respondent to offer identical or similar products and services to those offered by Complainants. Complainants contend that Respondent’s adoption and use of the word “scope” is similar conceptually, visually, and phonetically to Complainants’ registered SCOPUS mark. Further, the word “scope” is combined with the word “database,” which is descriptive of the products on Respondent’s site, which are in competition with Complainants’ offerings. Complainants’ trademark is clearly recognizable within Respondent’s Domain Name. The juxtaposition of the word “scope” with “database” results in a confusingly similar approximation to Complainants’ mark, and when used in relation to identical goods and services as those offered by Complainants, brings about a likelihood of association between the Domain Name and Complainants’ products, amounting to infringement of Complainants’ registered rights in the SCOPUS trademark.
Complainants submit that the dominant and distinctive feature of the Domain Name is the word “scope,” which is a confusingly similar approximation to the entirety of Complainants’ trademark SCOPUS. Respondent has merely added a descriptive word, “database,” which cannot serve as a source indicator. Complainants claim that the use of the word “database” in the Domain Name does not negate similarity between the Domain Name and Complainants’ SCOPUS mark. Complainants state that the Domain Name creates a risk that Internet users, who visit the website linked to the Domain Name, may think there is some sort of affiliation with or authorization from Complainants to use their trademark.
Complainants contend further that the structure, information, and text on Respondent’s website are a substantial copy of content on Complainants’ websites. Respondent initially used a tree logo on their site similar to Complainants’ tree logo. Complainants have submitted evidence allegedly demonstrating many instances of Complainants’ content being copied on Respondent’s site. Complainants contend that even where the mark is not present in its entirety, content at the corresponding website serves to affirm confusing similarity and this is the case where content on Respondent’s site violates copyright vested in Complainants.
Complainants claim that because the Domain Name is confusingly similar to Complainants’ trademark and used for identical products, it is likely that Internet users, owing to common imperfect recollection, may type the incorrect address when seeking to access Complainants’ websites, and are directed instead to Respondent’s site. Respondent has sought to take undue advantage of Internet users typing in an incorrect address and this amounts to “typosquatting.” Additionally, Complainants have submitted evidence that those in the trade have made comments comparing the products of Respondent and Complainants, comparing features and pricing of the two products, establishing not only that the two products are competing, but that there is likelihood of confusion which includes a likelihood of association between the two. There is also a comparison between Complainants’ websites and Respondent’s site on a third-party website, “www.predatorypublishing.com”, which came to the notice of Complainants on June 26, 2021.
(ii) Rights or legitimate interests
Complainants contend that Respondent is using the Domain Name in a manner amounting to infringement and passing off, and that Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name. Complainants state that the Domain Name is an infringement of Complainants’ trademark SCOPUS. The Domain Name, being identical with or similar to Complainants’ SCOPUS trademark and used for same or similar goods or services, is unauthorized, unlawful and an infringement of Complainants’ exclusive trademark rights.
Complainants maintain that Respondent has no legitimate interests in the Domain Name, nor any trademark rights in or license to use it. Respondent uses the trading name “scope database,” which has as the dominant element the word “scope.” This is prejudicial to Complainants’ business and reputation. Complainants contend that this deliberate illegal adoption of the trading name “scope database” is directed at the same consumers that Complainants serve and cannot amount to a legitimate bona fide adoption of a trading name. Respondent, despite likely having knowledge of Complainants’ successful SCOPUS business, nevertheless adopted the name and registered the Domain Name to divert Internet traffic away from Complainant’s websites and to attract potential customers to Respondent’s site.
Complainants contend that where adoption of the trading name and Domain Name itself cannot be considered a legitimate bona fide adoption, it must follow that even though Respondent may have used the Domain Name in connection with the offering of goods or services, it cannot be considered a legitimate or bona fide offering since the adoption itself is in bad faith. Complainants allege this is coupled with the overall approach of Respondent violating the copyright in Complainants’ content though unauthorized use on Respondent’s site, and by Respondent’s own admission whereby Respondent claims the defenses of fair use and nominative trademark use.
Complainants further explain that Respondent carries on business in India, a multi-lingual country. The English language is only one of the 22 major languages of India. Thus, Complainants claim there is a likelihood that Internet users in India will be misled into believing that the spelling of the Domain Name is a variation of Complainants’ mark, or in some manner associated with, or customized for, the Indian market. This would be to Complainants’ detriment and results in Respondent making unlawful gains by attracting potential customers of Complainants to Respondent’s site.
Complainants state that the “Contact Us” link on Respondent’s site refers to “Scope Database.” Nothing on the site indicates the nature of this organization. Complainants state that in Respondent’s response to Complainants’ cease-and-desist letter, Respondent stated it is a non-profit organization. Complainants do not agree and argue that the unsolicited marketing emails addressed by Respondent to people in the industry suggest otherwise. Respondent claims to be a company incorporated under the Department of Industries and Commerce, Government of India (“DIC”) in 2014 and submitted a copy of an Acknowledgement issued by the DIC. However, Complainants’ search on the databases of the Ministry of Corporate Affairs (“MCA”)/Registrar of Companies (“ROC”) revealed no entity with the name “Scope Database” or “Scope Database Private Limited” registered with the ROC. The document furnished by Respondent is an acknowledgement to an application to be registered under the Micro, Small and Medium Enterprises Development Act 2006 to avail of benefits as a small or medium enterprise. The Acknowledgment does not by itself establish the nature of the entity. To be a company, the entity would need to be incorporated by the certificate of incorporation issued by the ROC.
Complainants refer to the disclaimer at the end of Respondent’s webpage, namely, “Disclaimer: Scope Database is an Indian organization, formed by a group of researchers. Scope Database is no way connected with any other journal metrics analysis companies.” Complainants emphasize, however, that this disclaimer appeared on Respondent’s site only after Complainants acted by filing a trademark and copyright claim with “The Liquid Web,” the content host provider for Respondent’s website. Further, in relation to the claim made to The Liquid Web, Complainants assert that no “clarification” has been given as alleged by Respondent. Superficial changes were made to Respondent’s webpages; however, both trademark and copyright infringement continue, which has necessitated Complainants initiating these UDRP proceedings.
Complainants state that Respondent, in defense of its illegal adoption of the “Scope Database” name, has attempted to justify adoption of the word “scope” by listing the names of entities incorporating the word “scope.” While reserving rights against these third parties, Complainants submit that these entities conduct wholly different business from Complainants. From their corporate names, these entities appear in the businesses of eye care, garments, agro farms, education, builders, car rentals, granite and marble, to name a few, thus negating the possibility of a likelihood of confusion or association with Complainants. The fact that other entities use the word “scope” in respect of their businesses, which are different from that of Complainants, does not preclude Complainants from asserting rights against Respondent since Respondent is in the same field of activity, thus causing a likelihood of confusion with and association of Respondent’s business with that of Complainants. Being in the same industry, Respondent would be aware or ought to be aware of Complainants and their well-known database business conducted over years, including in India under the trademark and brand SCOPUS. Complainants’ intent is to prevent Respondent from taking undue advantage of the goodwill and reputation built by Complainants in their SCOPUS brand. The adoption and use of the trading style, Scope Database, which is confusingly similar to Complainants’ registered SCOPUS mark and used in relation to products and services that are of the same nature as those for which Complainants use their SCOPUS mark, is a violation of Complainants registered and common law rights.
Complainants further contend that just because consumers visiting Respondent’s website may realize that Complainant has nothing to do with it, this has no bearing on the fact that Respondent has already misleadingly diverted consumers to Respondent’s site. Therefore, Complainants conclude that Respondent is not making a legitimate, noncommercial, or fair use of the Domain Name. The use by Respondent is with the intention to misleadingly divert consumers, whether for direct or indirect commercial gain, including unfairly gaining a reputation based on providing free content that infringes the copyright in Complainants’ content to the detriment of Complainants and involving infringement of Complainants’ trademark.
(iii) Registered and used in bad faith
Complainants contend that the Domain Name should be considered as having been registered and being used in bad faith. Complainants’ continuous use of the SCOPUS trademark in respect of goods and services has resulted in the mark being associated solely with Complainants. Respondent is in same business as Complainants and appears to have commenced its business of journal indexing and citation database under the “scope database” name only in 2019. The Domain Name was registered in April 2019, many years after Complainants have operated their business under the SCOPUS mark, including in India, which is the primary market where Respondent carries on business in the same industry. Complainants state that owing to publicity by Complainants, including in relation to the NASI-Scopus Young Scientist awards in India, Respondents would have or ought to have knowledge of Complainants’ SCOPUS business. This establishes bad faith on the part of Respondent.
Complainants claim that Respondent has attempted to piggy-back on Complainant’s goodwill and reputation and taken undue advantage of the brand recall in the trademark SCOPUS. Being in the same industry, it is inconceivable that Respondent selected the Domain Name independently and without knowledge of Complainants’ products and brand. The adoption is in bad faith and done to attract Internet users to Respondent’s site in the belief that it is one of Complainants’ websites or there is a connection or affiliation with Complainants in the course of trade.
Complainants assert that Respondent’s bad faith is further demonstrated by Respondent’s response to Complainants’ cease and desist letter dated September 30, 2020. In Respondent’s response dated October 5, 2020, Respondent stated that its website had been deactivated. Despite this, in March 2021 Complainants noticed that the site was operating again. The tree logo on Respondent’s site was replaced. However, Complainants claim that Respondent continues to operate under the trading name, “scope database”, and continues to violate Complainants’ copyright since the site has published text that is a substantial copy of Complainants’ content. Complainants submitted evidence to compare Complainants’ content with content from Respondent’s website. Complainants state that Respondent has seemingly attempted to reduce incidents of copyright infringement but failed to do so adequately. Complainants assert that the fact Respondent made amendments to the content on Respondent’s site on notice from Complainants demonstrates an admission to the copyright violations, which Respondent has unsuccessfully tried to navigate.
Complainant states that Respondent acted similarly with respect to content on Respondent’s website following Complainants’ filing of a trademark and copyright claim with The Liquid Web, the company hosting Respondent’s website. On June 8, 2021, Complainants filed the trademark and copyright claims with The Liquid Web, and The Liquid Web, on June 15, 2021, communicated these claims to Respondent. Following this, Respondent displayed a disclaimer on Respondent’s site, which came to the attention of Complainants on June 22, 2021. Additionally, Respondent’s site included a document titled “Content Coverage Guides,” incorporating content which was a substantial copy of Complainants’ content and titled with the same name as Complainant’s guides, namely “Content Coverage Guides.” Following Complainants’ filing of the claims with The Liquid Web, Respondent amended this document on the site as it is now titled, “Subject Coverage Manual 2021”. While Respondent has attempted to circumvent infringement, several infringing instances remain on Respondent’s site. Complainants state that the inclusion of the disclaimer and the amendment to the document title demonstrate admitted infringement by Respondent and such infringement continues.
On September 18, 2021, Complainants issued a further cease-and-desist notice to Respondent through their legal representatives in India. On September 27, 2021, Respondent responded. Amongst other things, Respondent provided information on its dates of incorporation and commencement, all of which are after Complainant’s use of trademark SCOPUS. Respondent stated that it provides “open access to all academic researchers, institutions & Universities” and that its site “may contain copyrighted material, the use of which has not been specifically authorized by the copyright holders” and that “the copyright act allows limited use of copyrighted material without requiring permission for purposes such as education, criticism, comment, news reporting, teaching, scholarship, research and non-profit educational uses.” Complainants deny that Respondent’s use falls within meaning of fair dealing under applicable law, including section 52 which stipulates the exceptions to copyright infringement including the defense of fair dealing under the Copyright Act 1957 of India.
Complainants are unaware of whether Respondent does not collect a subscription fee, as alleged. Regardless of the business model, Complainants assert that Respondent stands to gain commercially, whether monetarily, direct or indirect, and whether for profit. Respondent gains and lures customers by providing infringing products without cost. It is likely that Respondent can afford to do this owing to low (or no) cost of investment to build its database given it methods involving the use of the content of others as it does with Complainants’ content.
Complainant states that Respondent asserts the defense of nominative fair use of a trademark under applicable trademark law in India. Complainants contend that Respondent’s use of the Domain Name does not amount to nominative use of Complainants’ registered SCOPUS trademark within the meaning of the trademark law in India, and instead is an infringement of Complainants’ mark. It is submitted that under section 30(2)(d) of the Trade Marks Act, 1999 of India, the use is required to be bona fide such that the use of another’s trademark should not resemble the actual trademark of the other resulting in confusion as to source of origin. However, use by Respondent for the reasons above, does not fall within the meaning of this provision. Instead, Respondent’s claim to nominative trademark use is an admission that their use is in any event likely to draw an association with Complainants’ trademark SCOPUS.
Respondent contends its activities are a service to humanity. Without admitting this, Complainants submit that Respondent cannot do so while infringing Complainants’ intellectual property. Respondent’s alleged aim to provide barrier-free access to research, accelerate discovery, and create knowledge is baseless. Respondent cannot take undue advantage of the goodwill and reputation that Complainants have built in their SCOPUS brand over the past two decades, by slavishly adopting and using the mark and trading style, Scope Database. Further, the overall visual composition and structure of the data available on Respondent’s webpages closely mirrors the look, feel and content available on Complainants’ websites.
Respondent continues to grow its presence on the Internet including on social media websites, aggressively marketing under the “Scope Database” name, making attempts to lure Complainants’ customers. Complainants have received third-party industry information that they have received unsolicited marketing emails from Respondent to that effect, with these emails sent after the cease-and-desist notice by Complainants.
Respondent has taken unfair advantage and piggy-backed on the highly successful business of Complainants and on their goodwill and reputation of the trademark SCOPUS. The confusingly similar Domain Name used in relation to a competing business in the same industry is primarily with the purpose of disrupting Complainants’ business, who are leaders in the industry and competitors of Respondent. Respondent has knowingly acted to divert Internet traffic away from Complainants’ website to that of Respondent, or at the least draw in the minds of the relevant public an association between Respondent’s site and Complainants’ business. By using the Domain Name, Respondent intentionally attempted to attract for unjust commercial gain, directly or indirectly, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s site.
Complainants state that while they have no knowledge of the nature of Respondent’s business model and whether in fact Respondent’s services are provided for free as alleged, Complainants have no objection to Respondent providing a free service to the global educational research community, so long as Respondent does so under a trademark and brand that is not confusingly similar to Complainant’s SCOPUS trademark, and without infringing Complainants’ copyright.
(i) Identical or confusingly similar
Respondent states that during his studies, he conducted research in the field of digital archiving and citation database analysis. Respondent claims that in the year 2008 he started a company for research about digital archiving with a citation analysis database in the name of “Scope Database (Scholarly Collection and Paper performance Evaluation (Scope) Database)” for open access journals and calculated the metrics manually. In the year 2010, Respondent states he published a research article, “Scholarly Collection and Paper performance Evaluation (SCOPE) Database,” in the “International Journal of Advanced Research in Engineering and Technology (IJARET)”. Respondent states that this paper proposed a digital archiving of scholarly articles and a citation analytics concept. Respondent claims the name “Scope Database” was adopted from this research paper published by Dr. S. Balasubramanian in 2010.
Respondent contends that there is no likelihood of confusion between the trademark SCOPUS and the Domain Name because they are not confusingly similar. Respondent states that there are differences between SCOPUS and “scope database” by word and phonetic. Respondent argues that Complainants are unethically mentioning the words “Scopus database” when these words are not mentioned on their website at “www.scopus.com”. Respondent maintains the words “scope database” are common English dictionary words, and the word “scope” is used by several companies around the world.
Respondent emphasizes that the Domain Name was registered in April 2019, and that Complainant Elsevier BV registered the trademark SCOPUS in India only on February 4, 2021, and not for the word “scope” or “scope database”.
Respondent states that the users of Respondent’s website are well educated scientists, professors, and research students, who know the difference between the words “scope database” and the trademark SCOPUS. Respondent claims Complainants’ domain name <scopus.com> and the Domain Name are not identical or confusingly similar. Respondent states there is no word “scopus” in the Domain Name and “we do not use it anywhere.” Respondent states that on the website linked to the Domain Name, a disclaimer is included in every page footer: “Disclaimer: Scope Database is an Indian organization, formed by a group of researchers. Scope Database is no way connected with any other journal metrics analysis companies.”
(ii) Rights or legitimate interests
Respondent contends that Respondent has full rights to use the name “scopedatabase” as the Domain Name because the name is derived from the research paper “Scholarly Collection and Paper performance Evaluation (Scope) Database,” published by Dr. S. Balasubramanian in 2010. That paper proposed the journal impact factor score, overall journal impact factor score and journal impact factor score trends calculation for the archived articles. Several graphs and analytical methods are derived per Respondent’s research work. Respondent provided the following link for this article:
Respondent states that in June 2021, Complainant Elsevier BV raised a Digital Millennium Copyright Act (“DMCA”) notice through The Liquid Web, and Respondent states “we have given all the clarifications and the issue was resolved by respective authorities on June 2021.”
Respondent states that Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain misleadingly to divert. Respondent states Respondent’s company was incorporated under the Department of Industries and Commerce, Government of India in 2014, and registered in Atal Innovation Mission, Niti Aayog, Government of India in 2021, and the Startup India project is in progress. In April 2019, the Domain Name was registered and used to launch a website for open access digital archiving of scholarly articles and citation analytics. The concepts discussed in Respondent’s research article were implemented on this website. Respondent claims that so far, more than 69,000 manuscripts are indexed from over 300 journals, and 20,000 institutions’ profiles are created. There are 148,000 author’s profiles created from the archived manuscripts, and a certificate of article indexed is provided freely. There are also more than 200 journals under evaluation. Respondent states its website is open access to all research scholars and institutions. The concept on the website was purely in the interest of non-profit education and does not serve any commercial use. Respondent asserts the main aim of the project is to provide free access to research and accelerate discovery and create knowledge to all. Respondent states the content and material is made available on Respondent’s website as a way to advance research and teaching related to research and development. The material contained in this website is distributed for nonprofit research and educational purposes and for the public good. Respondent states that in the Covid 19 pandemic, a lot of research students are struggling to pay their fees and access the subscription-based citation databases for their research work, while Respondent’s database is fully free to access the archived research articles and citation database.
Respondent states there is a volunteer International Advisory Board with members from all over the world from various disciplines. Respondent provides a Certificate of International Advisory Board to all members. The journals are freely indexed in the database after getting permission from the journal publishers. The journals are evaluated by the International Advisory Board and Content selection committee and recommended for source inclusion. The International Advisory Board members are subject experts from different universities from all over the world.
Respondent states that in every page footer on the website a disclaimer is included: “Disclaimer: Scope Database is an Indian organization, formed by a group of researchers. Scope Database is no way connected with any other journal metrics analysis companies.”
(iii) Registered and used in bad faith
Respondent contends there is no bad faith in using the Domain Name. Respondent is not using the mark SCOPUS in the Domain Name and Complainants are not using the words “scope database” anywhere on their websites. Respondent claims the Domain Name is not confusingly similar and was registered in April 2019, at a time when Complainants did not have any trademarks in India. The word “scope” is a common English word.
Respondent submits that the Domain Name was registered without intent for commercial gain to misleadingly divert consumers or to tarnish Complainants’ trademark. Respondent asserts that “Scope Database” is a non-profit educational organization and not gaining directly or indirectly from the users. Respondent does not collect any fee for source inclusion, indexing the articles, or analysis reports of authors and institutions. There is no login required to access the database, which can be accessed from anywhere. Respondent claims the website is recognized by many universities, institutions, scientists, professors, research scholars and journal publishers around the world.
Respondent contends that the Domain Name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring it to Complainants, or to a competitor of Complainants, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. The Domain Name was not registered to prevent Complainants from reflecting their mark in a corresponding domain name and, in connection therewith, Respondent has not engaged in a pattern of such conduct. Respondent asserts that Complainants and Respondent are not competitors, and the Domain Name was not registered by Respondent primarily to disrupt Complainants’ business.
Respondent states the project “Scope Database” was registered in Atal Innovation Mission, Niti Aayog, Government of India in 2021, and the Startup India project is in progress. Respondent claims that Respondent’s business model is different from Complainants’ model, given Respondent focuses on (i) digital archiving and citation analysis and (ii) provides free access to all.
Respondent asserts that Complainants falsely and in bad faith mention the words “Scopus database” in their submissions, but these words are not used in Complainants’ domain name or in Complainants’ website content. Complainant’s SCOPUS trademark is not in the Domain Name and Respondent claims the Complaint was brought in bad faith and to stop Respondent’s free service to the scientific community.
Respondent states that there is no “typosquatting” to confuse and users of both websites are well educated and know the difference between the words SCOPUS and “scopedatabase.” There is no unlawfulness in using the word “scopedatabase” in the Domain Name; there are no identical or confusingly similar words. Complainant is trying to stop Respondent’s services to the scientific community in bad faith and trying to dominate the publishing industry. Respondent condemns Complainants’ statement that Indians do not have knowledge about using the Internet.
Respondent states that for more than 15 years, Respondent has spent money and effort to develop the concept “(Scholarly Collection and Paper performance Evaluation (Scope) Database)” and to create an open access digital archive and citation database for the development of the scientific community. Therefore, Respondent contends Respondent is making a legitimate and fair use of the Domain Name, and there is no possibility of a likelihood of confusion or association with Complainants’ trademark.
Respondent contends that the Complaint was brought in bad faith, in an attempt at reverse domain name hijacking (“RDNH”) and as brought primarily to harass Respondent and to stop Respondent’s free service. Respondent requests the Panel to make a finding of RDNH against Complainant.
6. Discussion and Findings
In order to succeed on its Complaint, Complainants must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainants have established rights in the SCOPUS trademark, based on their long and widespread use of the mark in commerce and through numerous trademark registrations in many countries, including in India where Respondent is located. Complainants’ earliest registrations for the SCOPUS mark were filed in multiple countries in 2003, with registrations dating from 2004.
Further, the Panel determines that the Domain Name is confusingly similar to Complainants’ SCOPUS trademark. The Domain Name incorporates the word “scope” as its dominant element, which is a confusingly similar approximation to Complainant’s SCOPUS mark, in combination with the word “database” (which is descriptive of Complainant’s database products and services – Complainants founded their SCOPUS abstract and citation database in 2004). The aural or phonetic similarity between the words “scope” and SCOPUS, particularly with the same initial consonants “sc” followed by the dominant pronunciation of the long vowel “o” and the consonant “p,” weighs strongly in favor of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 (in some cases the assessment entails a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity); see also Bayerische Motoren Werke AG v. Registration Private, Domains by Proxy, LLC Armands Piebalgs, WIPO Case No. D2017-0156 (panel determined that despite adding word “decoder” and omitting the third letter of the BMW trademark in one of two disputed domain names, <bmdecoder.com> and <bmwdecoder.com>, they were confusingly similar to complainant’s mark, particularly as “UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, ‘when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name’”).
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “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.”
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to adequately rebut Complainant’s contentions. First, the Panel finds that Complainant has not authorized Respondent to use its SCOPUS trademark in any form or manner. Second, the Panel determines that the Domain Name, comprised of the words “scope database,” creates a misleading impression of association with Complainants and their SCOPUS trademark, as described above. The word “scope” is confusingly similar to the trademark SCOPUS, and the word “database” is descriptive of Complainants’ services.
Further, the crux of Complainants’ case is that Respondent, despite likely having knowledge of Complainants’ business operating under the SCOPUS trademark, nevertheless registered the confusingly similar Domain Name to divert Internet traffic away from Complainant’s websites and to attract potential users to Respondent’s site, thereby taking unfair advantage of the reputation and goodwill associated with Complainants’ mark. Complainants contend that where the adoption of a trading name and Domain Name is not legitimate, it must follow that Respondent’s use of the Domain Name in connection with the offering of goods or services cannot be considered legitimate. Complainants allege that Respondent’s bad faith registration of the Domain Name is coupled with Respondent’s violation of Complainants’ copyright in the content on Complainants’ websites through unauthorized copying and use on Respondent’s website. Complainants indicate that a disclaimer on Respondent’s site appeared only after Complainants acted by filing a trademark and copyright claim against Respondent with The Liquid Web, the content host for Respondent’s website. Complainants further contend that just because consumers visiting Respondent’s website may realize that Complainant has nothing to do with it, this has no bearing on the fact that Respondent has already misleadingly diverted consumers to Respondent’s site, and by all appearances intended to do just that. The Panel agrees with Complainants’ assessment of these circumstances.
Respondent has made several arguments in response – each will be addressed in turn. First, as to Complainants’ claims of copyright infringement, Respondent states that these infringement claims have been addressed already following the notice to The Liquid Web. Further, in its response to Complainants’ cease-and-desist letter, Respondent stated that the Indian copyright act allows limited use of copyrighted material without requiring permission for purposes such as education, criticism, comment, news reporting, teaching, scholarship, research and non-profit educational uses. The Panel observes that the UDRP is directed only at disputes involving domain names and trademarks, and therefore the Panel will not decide any alleged claims of copyright infringement. However, the record evidence provides examples of Complainants’ content copied on Respondent’s site and indicates that in response to Complainants’ claims, Respondent did make a number of changes to the content on its website. This record supports that Respondent was aware of and did copy content from Complainants’ websites. This point is relevant, when considering Respondent’s registration of the Domain Name, because it supports an inference (discussed further below) that Respondent targeted Complainants and their SCOPUS trademark when registering the Domain Name. The Panel need not decide the question of copyright infringement in drawing this inference.
Respondent’s position with respect to the Domain Name is that it was selected and registered in April 2019 based on a paper published by Respondent in 2010:
“We have full rights to use the name www.scopedatabase.com as our domain name, because we derived the name Scope Database from the research paper “Scholarly Collection and Paper performance Evaluation (Scope) Database” published by Dr. S. Balasubramanian in 2010.”
“In the year 2010 I have published a research article ‘Scholarly Collection and Paper performance
Evaluation (SCOPE) Database’ in the ‘International Journal of Advanced Research in Engineering and Technology (IJARET).’”
Respondent further states that “scope” is a common English word and Respondent is making a legitimate noncommercial or fair use of the Domain Name.
Respondent provided the URL link for his research article and the Panel investigated that link. The Panel found that Respondent’s work is a 3-page paper, with a number of grammatical errors and apparently published by a journal titled the International Journal of Advanced Research in Engineering and Technology (“IJARET”). The IJARET journal is an “open access journal” published by and hosted on a website of an organization called the International Association for Engineering and Management Education (“IAEME”). The Panel found that on the “Contact Us” page of the IAEME website, the Chief Editor for IAEME Publications is Respondent, Dr. S. Balasubramanian. Further, on every page of the IAEME website, the following tag link appears: “Scopus Indexed Journals.” Moreover, the WhoIs record for the domain name <iaeme.com> confirms that it was registered by Respondent, Dr. S. Balasubramanian.
The Panel determines that the title and nature of Respondent’s research paper, and the fact that it was apparently published by a journal of Respondent’s own creation, where Respondent serves as Chief Editor for IAEME publications and on a website owned by Respondent – none of which was disclosed by Respondent to the Panel – raises questions about the paper and its provenance, and whether Respondent derived the name “scope database” independently based on this paper, without any reference to Complainants and their SCOPUS trademark. Further, the reference to the “Scopus Indexed Journals” tag on every page of Respondent’s IAEME website confirms that Respondent was well aware of Complainants and their SCOPUS trademark and related database services.
The Panel considers that these circumstances, coupled with the numerous instances of content copied from Complainants’ websites (whether considered copyright infringement or not), weigh in favor of a finding that Respondent registered the Domain Name with a view to taking advantage of Complainants’ reputation in its SCOPUS trademark, which had been used internationally in relation to abstract and citation database services for 15 years prior to the date of registration of the Domain Name. Further, even if Respondent first chose the name “scope database” in 2010, Complainants had already established use of their SCOPUS trademark in the same field, directly competitive with Respondent’s project, some six years earlier.
The Panel further finds that Respondent’s use of the Domain Name does not amount to nominative use. Nominative use usually refers to use of the trademark of another as a reference to describe another product, or to compare it to their own. Respondent is not using the Domain Name in this manner. Further, the putative purpose behind Respondent’s website – to provide an open access digital archive and citation database for the scientific community – does not justify targeting Complainants’ trademark and brand, while also copying content from Complainants’ websites. The Panel is of the view that Respondent registered the Domain Name because of its connection to Complainants, their trademark and products. Respondent’s use of the Domain Name linked to Complainants’ SCOPUS mark will generate a larger audience than would likely have been the case if Respondent chose a domain name that was not confusingly similar to Complainants’ well-established mark. Respondent’s disclaimer, added after Complainants served their claim on the host for Respondent’s website, does not adequately remediate these circumstances.
Accordingly, the Panel finds that Complainants have made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been adequately rebutted by Respondent. The Panel therefore concludes that Complainants have established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. Section 3.1 of the WIPO Overview 3.0 states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. As discussed above, the Panel finds that the Domain Name creates a misleading impression of association with Complainants and their SCOPUS mark. Further, the record demonstrates, by the preponderance of the evidence, that Respondent was very likely aware of Complainants and their trademark and related services when registering the Domain Name. Complainants’ SCOPUS trademarks predate the registration of the Domain Name by 15 years, with Complainants SCOPUS abstract and citation database launched in 2004. Further, the record provides evidence that Respondent is in the same field and copied content from Complainants’ websites, whether or not this amounts to copyright infringement. These circumstances, plus the express reference to “Scopus Indexed Journals” on every page of Respondent’s IAEME website, support the finding that Respondent targeted Complainants and their mark when registering the Domain Name.
The Panel finds that in this case, by using the Domain Name, Respondent has intentionally attempted to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ well-established SCOPUS mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This amounts to bad faith use within the broad ambit of the Policy. Although there is no specific finding that Respondent has, as of yet, acted for commercial gain, the Panel nonetheless finds that, given all of the facts and circumstances of this case, whether or not Respondent’s motives were for commercially exploiting Complainant’s mark, the registration and use of the Domain Name was in bad faith. If Respondent wishes to develop a website to provide an open access digital archive and citation database, Respondent can do so in any number of ways without taking advantage of Complainant’s name or SCOPUS trademarks. See David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472 (the manipulation of the complainant’s name as a domain name is an abuse within the broad ambit of the Policy, where the intentions of respondent are to cause confusion with a view to expanding coverage of the respondent’s views); Red Bull GmbH v. Paul Battista, WIPO Case No. D2010-0353 (although there is no finding that the respondent acted for commercial gain, the panel found that given all of the facts and circumstances, whether or not respondent’s motives were for commercially exploiting the complainant's RED BULL mark, the registration and use of the domain name was in bad faith).
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainants have satisfied the third element 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 Domain Name, <scopedatabase.com>, be transferred to Complainants.
Christopher S. Gibson
Date: February 25, 2022