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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HM Publishers Holdings Ltd v. Domainproxyagent.com / Compsys Domain Solutions Private Limited

Case No. D2008-1620

1. The Parties

Complainant is HM Publishers Holdings Ltd, of Hampshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Graham Watt & Co LLP, of Kent, United Kingdom.

Respondent is Domainproxyagent.com, of Wellington, New Zealand / Compsys Domain Solutions Private Limited, of Maharashtra, India.

2. The Domain Names and Registrar

The disputed domain names <macmillanenglich.com> and <macmillanenlish.com> (the “Disputed Domain Names”) are registered with Lead Networks Domains Pvt. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2008. On October 24, 2008, the Center transmitted by e-mail to Lead Networks Domains Pvt. Ltd (“Registrar”) a request for registrar verification in connection with the Disputed Domain Names, followed by a reminder on October 30, 2008. On November 3, 2008, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on November 4, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 10, 2008. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the amended Complaint, and the proceedings commenced on November 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 5, 2008.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on December 12, 2008. 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.

On January 20, 2009, the Panel issued a Panel Order requesting additional information from Complainant, which Complainant submitted to the Center on January 22, 2009.

4. Factual Background

Complainant states that it “is part of the Macmillan Group of publishing companies, the origins of which were founded in 1943. The Macmillan group is known for its high quality academic and scholarly, educational, fiction and non-fiction and reference publishing. The Macmillan group is one of the largest and best known international publishers in the world, operating in 70 countries. The Complainant is the proprietor of world-wide trade mark and domain name registrations for the mark MACMILLAN. The Complainant possesses a great deal of goodwill and reputation in the mark MACMILLAN.” Complainant provided printouts of registrations for these trademarks from relevant trademark offices in the United Kingdom, the European Union and the United States of America. These trademarks are hereafter referred to as the “Macmillan Trademark.” Complainant also states that it “claims unregistered rights in the term MACMILLAN ENGLISH.”

The domain name <macmillanenlish.com> was created on May 10, 2008; and the domain name <macmillanenglich.com> was created on June 1, 2008.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

- “The domain name is identical or confusingly similar to the trademark in which the Complainant has rights” because, in addition to the Macmillan Trademark, Complainant states that it “claims unregistered rights in the term MACMILLAN ENGLISH due to the nature, extent and duration of their [sic] use of the term Macmillan English.” As an example of this usage, Complainant states that “[f]or over 25 years the Complainant has worked with all members of the English Language teaching community to create teaching materials and teacher training support that meet changing curriculum and classroom needs.” Complainant states that it has a website using the domain name <macmillanenglish.com>, which states that it “provides all the information you need to get the most out of teaching English with Macmillan’s wide range of books and teaching materials.”¹

- “Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint, because there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; [f]urther, the Respondent […] has not been commonly known by the domain name, and the Respondent has acquired no trademark or service mark rights; [f]inally, the Respondent is making no legitimate non-commercial or fair use of the domain name but instead is aiming for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.”

- “[T]he domain names should be considered as having been registered and used in bad faith by the Respondent because: [t]he domain names were registered primarily for the purpose of disrupting the business of a competitor; and [b]y using the domain names, the Respondent intentionally attempted to attract for commercial gain, Internet uses to the Respondent’s web sites or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web sites or locations or of a product or service on the Respondent’s web sites or locations.”

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:

(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith. (Policy, paragraph 4(a)).

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to prove that the disputed domain names are “identical or confusingly similar to a trademark or service mark in which [it] has rights.”

Based on the information provided by Complainant, including printouts of relevant trademark registrations, the Panel is convinced that Complainant has rights in the Macmillan Trademark.

However, because it is self-evident that neither of the Disputed Domain Names is identical to the Macmillan Trademark (given the addition of the words “enlish” and “englich” to the Disputed Domain Names), Complainant must demonstrate to the Panel’s satisfaction that the Disputed Domain Names are confusingly similar to the Macmillan Trademark.

If the Panel accepts Complainant’s statement that it has acquired “unregistered rights” in the mark MACMILLAN ENGLISH, then the relevant comparison to be made is between MACMILLAN ENGLISH and the second-level portion of each of the Disputed Domain Names (that is, “macmillanenlish” and “macmillanenglich”). In such a case, the Panel would be easily persuaded that the Domain Names are confusingly similar to the trademark because the slight differences are obvious misspellings or typographical errors, that is, the absence of the letter “g” and the substitution of the letter “c” for the letter “s”. As numerous previous panels have held, such differences do not diminish the confusing similarity. See, e.g., Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc. v. Erik Little, WIPO Case No. D2005-0460 (“the difference of a single letter in a 13-character domain name – particularly where, as here, the difference is only a single key apart on a U.S. keyboard and the difference creates a domain name that appears to be nonsensical – is insignificant for purposes of confusing similarity” [. ]The registration of domain names with such minimal differences is widely known as “typosquatting”“).

If the Panel does not accept Complainant’s statement that it has acquired “unregistered rights” in the mark MACMILLAN ENGLISH, then the relevant comparison to be made is between the Macmillan Trademark and the second-level portion of each of the Disputed Domain Names. As numerous previous decisions under the Policy have held, whether a domain name containing a complainant’s trademark plus another word is confusingly similar to the complainant’s trademark often depends upon “the nature of the other word.” Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748). In this case, the “other word” in each of the Disputed Domain Names is a misspelling of the word “English,” a word that appears to be related to Complainant’s activities, in light of Complainant’s assertion that “[f]or over 25 years the Complainant has worked with all members of the English Language teaching community to create teaching materials and teacher training support that meet changing curriculum and classroom needs.”

Accordingly, in light of the above, the Panel finds that each of the Disputed Domain Names is confusingly similar to a trademark in which Complainant has rights, and the Panel is satisfied that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that “Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint, because there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; [f]urther, the Respondent… has not been commonly known by the domain name, and the Respondent has acquired no trademark or service mark rights; [f]inally, the Respondent is making no legitimate non-commercial or fair use of the domain name but instead is aiming for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.”

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1.

Accordingly, as a result of Complainants’ allegations and without any evidence of Respondent’s rights or legitimate interests in the Disputed Domain Names, the Panel is satisfied that the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location. (Policy, paragraph 4(b)).

In this case, Complainant alleges that bad faith exists pursuant to paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. In connection therewith, Complainant has provided printouts of websites associated with the Disputed Domain Names, showing what appear to be common “link farms” or “monetized parking pages,” with links labeled, among other things, “Teach English Abroad,” “English Course Online,” “Teaching Lesson Plans” and “Online English Lessons.” These links appear to be related to services offered by Complainant and, therefore, the Panel finds that they are likely to disrupt Complainant’s business and/or create a likelihood of confusion, as has been held in numerous previous decisions under the Policy. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (“where […] the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).

Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.

7. Decision

For all 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 <macmillanenglich.com> and <macmillanenlish.com> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist

Dated: January 23, 2009

¹ The Panel observes that the domain name <macmillanenglish.com> is registered by “Macmillan Publishers Ltd,” not by Complainant. While the Panel would have preferred for Complainant to explain its relationship to this entity, the Panel accepts Complainant’s implication that it is responsible for the content on the website associated with this domain, regardless of the domain name’s registrant.