Decisión del Panel Administrativo nº D2018-0853 of Tribunal Arbitral de la OMPI, June 07, 2018 (case Elsevier Limited v. Domain Admin, Whois Privacy Corp.)
|Defense:||Domain Admin, Whois Privacy Corp.|
|Resolution Date:||June 07, 2018|
|Issuing Organization:||Tribunal Arbitral de la OMPI|
The Complainant is Elsevier Limited of Alpharetta, Georgia, United States of America ("United States"), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.
The disputed domain name [thelancetoncology.com] (the "Disputed Domain Name") is registered with TLD Registrar Solutions Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 17, 2018. On April 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 18, 2018, 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.
The Center verified that 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 April 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 15, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 24, 2018. 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.
The relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant is a long established publisher, particularly of scientific publications. One such publication is a journal called "The Lancet". The Lancet began as an independent, international weekly general medical journal founded in 1823 by Thomas Wakley. The evidence establishes it has over time grown to be a well-known and prestigious medical journal. It is published in a number of different areas including The Lancet Oncology Journal. This journal is now the world-leading clinical oncology periodical. The Complainant has many registered trademarks in numerous countries throughout the world for THE LANCET (for example, United States Reg. No. 1471389 registered January 5, 1988). These are referred to below as "The Lancet trademark".
The Respondent registered the Disputed Domain Name on January 1, 2015 a few months after the Complainant inadvertently allowed its own registration to lapse.
The Respondent is using the Disputed Domain Name in connection with a website "www.thelancetoncology.com". That website has hosted a blog entitled "Thelance Oncology," since at least as early as March 28, 2015. The blog contains various articles broadly of a popular rather than scientific nature dealing with medical and health related issues. The content of the blog contains no references to "the lance", or to "the lance(s)" or "the lancet(s)". It is not clear whether or not the website involves any commercial activity.
On February 27, 2018, the Complainant's counsel sent a cease-and-desist letter to the Respondent. No reply was received. A further letter was sent on March 9, 2018 again with no reply being received.
The Complainant's contentions are straightforward and can be summarized as follows:
The Disputed Domain Name is confusingly similar to The Lancet trademark. Addition of the descriptive term "oncology" does not distinguish the Disputed Domain Name. The Disputed Domain Name is also confusingly similar to the Complainant's trademark THE LANCET ONCOLOGY JOURNAL ("The Lancet Oncology Journal trademark"). The Complainant asserts common law rights in this trademark by reason of the extensive circulation and fame of its journal of that name.
The Respondent has no rights or legitimate interests in the term "The Lancet".
The Disputed Domain Name was registered and is being used in bad faith. In this respect the Complainant says that although the Respondent's motives are obscure it is likely the blog is simply a pretext to try to confer legitimacy whilst masking some illegitimate purpose. In any event the nature of the website linked to the Disputed Domain Name is clearly confusing and suggests some sort of connection with the Complainant's publication especially given the title of the blog, which is a misspelling of the Complainant's publication name.
The Respondent did not reply to the Complainant's contentions.
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent's failure to file any Response. While the Respondent's failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see e.g., Verner Panton Design v. Fontana di Luce Corp,[WIPO Case No. D2012-1909]).
The Panel also notes this is a case where the named Respondent appears to be a privacy or proxy registration service. The Panel in this case adopts the approach of most UDRP panels, as outlined in [WIPO Overview of WIPO Panel Views on Selected UDRP Questions], Third Edition ("WIPO Overview 3.0") at [section 4.4.5], as follows: "Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent".
In the present case as no other respondent has been notified the Panel considers it appropriate to proceed against Domain Admin, Whois Privacy Corp. References to the Respondent should be understood as also including the person or persons who caused the registration to be effected.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel finds that the Complainant has rights in The Lancet trademark. The Complainant also has satisfied the Panel that it has unregistered trademark rights in the words "The Lancet Oncology Journal". That is a prestigious and widely circulated scientific medical journal.
The Disputed Domain Name is confusingly similar to both these trademarks. Previous 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" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,[WIPO Case No. D2000-0662]). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,[WIPO Case No. D2008-1694]).
It is also established that the addition of a descriptive term (such as here the words "oncology" in relation to The Lancet trademark) has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,[WIPO Case No. D2000-0253]); furthermore, mere addition of a generic or descriptive term does not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix,[WIPO Case No. D2006-0189]). Similarly, removal of the descriptive word "journal" does not negate the similarity between the Disputed Domain Name and The Lancet Oncology Journal trademark.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademarks. Therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled.
Although "lancet" is a word which means a type of surgical knife, the Respondent is not using it in that context. The word is clearly being used because of its association with the Complainant's publications. The combination of "Lancet" with "Oncology" cannot have been coincidental.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, 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; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use The Lancet trademark or The Lancet Oncology Journal trademark. The Complainant has prior rights in The Lancet trademark and The Lancet Oncology Journal trademark which precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web,[WIPO Case No. D2000-0624]; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,[WIPO Case No. D2003-0455]).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
In the present circumstances, the distinctive nature of The Lancet and The Lancet Oncology Journal trademarks, the extent of the reputation the Complainant enjoys in these trademarks, the confusingly similar nature of the Disputed Domain Name to these trademarks, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes the Respondent was aware of the Complainant's The Lancet trademark and its The Lancet Oncology Journal trademark when it registered the Disputed Domain Name. The Panel concludes that it is highly likely that the Respondent selected the Disputed Domain Name because of its similarity with either or both of the Complainant's trademarks. The Panel finds it difficult to conceive of any use which the Respondent could make of the Disputed Domain Name which would be legitimate. Further the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
The Panel concludes that the Respondent chose to register a domain name similar to the Complainant's well-known trademarks and has then linked that name to a website containing a blog which appears to comprise a series of medical or health related articles directed at a popular rather than scientific audience. It is not clear that this involves any commercial activity such as advertising. The Panel does not know whether or not this blog is just a pretext to try to confer legitimacy as the Complainant alleges. The evidence before the Panel does not provide sufficient material for the Panel to reach a conclusion on exactly what the Respondent's intention was in so doing. Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In the present circumstances factor (ii) is not applicable but the Panel cannot clearly determine which, if any, of the other factors may apply. However the Panel notes that in any event this list is non exhaustive and considers that in circumstances where the Disputed Domain Name can only refer to the Complainant then the registration of the Disputed Domain Name with knowledge of the Complainant's well-known trademark is itself evidence of bad faith – see The Channel Tunnel Group Ltd. v. John Powell,[WIPO Case No. D2000-0038]. This is particularly so given that the Respondent has been provided with an opportunity to explain how and why it chose the Disputed Domain Name and has not done so.
Further the Panel agrees that the Respondent's opportunistic registration of the Disputed Domain Name which must refer to the Complainant and its use to resolve to a blog with medical or health related articles directed at a popular rather than scientific audience is additional evidence of bad faith registration and use of the Disputed Domain Name. See Theodoor Gilissen Bankiers N.V. v. AbdulBasit Malaani, [WIPO Case No. D2013-1229] ("Prior UDRP panels have previously found that a respondent's registration of a domain name after a complainant's registration lapsed is in itself evidence of bad faith"), and [WIPO Overview 3.0] [section 3.2.1].
As a result, and applying the principles in the above noted decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, [thelancetoncology.com], be transferred to the Complainant.
Nick J. Gardner
Date: June 7, 2018
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