WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HM Publishers Holdings Limited v. PrivacyProtect.org / Cesar Michael Silva
Case No. D2014-0322
1. The Parties
The Complainant is HM Publishers Holdings Limited of Hampshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stobbs IP Limited, United Kingdom.
The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia / Cesar Michael Silva of Manaus, Brazil.
2. The Domain Name and Registrar
The Disputed Domain Name <palgrave.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2014. On March 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 5, 2014, 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 March 11, 2014 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 12, 2014.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 13, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 3, 2014.
The Center appointed Charné Le Roux as the sole panelist in this matter on April 11, 2014. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is the intellectual property holding company for the Macmillan Publishing group, which is one of the leading publishing and media companies in the world, operating in over 70 countries. Palgrave Macmillan is one of the divisions of the Macmillan Group and is active in 19 countries. It specializes in the publication of academic works with a focus on humanities and social sciences and operates from the website at "www.palgrave.com". The Complainant owns close to 50 trade mark applications and registrations for the mark PALGRAVE, and marks incorporating the word "palgrave", covering the territories of the United States of America, India, Pakistan, Norway, Japan, Australia, United Kingdom, European Union, Republic of Korea and China.
The Disputed Domain Name was registered by the Respondent on February 5, 2013. The website attached to the Disputed Domain Name is entitled "FUCK MACMILLAN" and has sponsored links to actual sites relating to the Complainant.
5. Parties' Contentions
The Complainant provided information regarding the trading activities that are being conducted under the trade mark PALGRAVE and the registered and pending trade marks that it owns for it, as indicated above. The Complainant asserts that it owns very extensive rights in this trade mark and that the Disputed Domain Name is identical to it.
The Complainant asserts that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
against the background of the extensive reputation in the Palgrave brand, there is no legitimate reason for registration of Disputed Domain Name other than to take advantage of the Complainant's rights;
the website to which the Disputed Domain Name points is identical to the website dealt with by an earlier panel in HM Publishers Holdings Ltd of Basingstoke v. Marcus Costa Camargo Peres, WIPO Case No. D2013-1597 and that since that decision confirmed that there was no legitimate interest or right in relation to the domain name concerned, it is impossible for there to be such interest or right in relation to this Complaint.
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith. It states that the fame associated with its Palgrave brand is so significant that it is difficult to envisage any legitimate purpose for registering the Disputed Domain Name other than to gain from the Complainant's reputation in some way, or to prevent the Complainant from registering the Disputed Domain Name itself. The Complainant also refers to the website associated with the Disputed Domain Name in this respect and the fact that it resolves to a revenue generating site, which, despite the fact that it links through to actual sites relating to the Complainant, is clearly, according to the Complainant, designed to generate an income for the Respondent.
The Complainant contends that the Disputed Domain Name is used in bad faith also because the title of the website associated with the Disputed Domain Name is "FUCK MACMILLAN". It states that legitimate information relating to the Complainant coupled with this derogatory term is detrimental to the Complainant or is with the view to move the Complainant to look to purchase the Disputed Domain Name from the Respondent.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark in which it has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has acquired rights in the PALGRAVE trade mark by virtue of its substantial portfolio of trade mark registrations for it and its considerable use of the mark in trade.
Ignoring for this purpose the generic domain suffix (as the Panel is entitled to do), the Panel finds that the Disputed Domain Name is identical to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant asserts that its PALGRAVE mark is known around the world and that the Respondent has no legitimate reason for registration or use of the Disputed Domain Name other than to take advantage of the Complainant's rights.
The Panel finds that the Complainant has made a prima facie case under paragraph 4(a)(2) of the Policy and that there is a case for the Respondent to answer. The Respondent has not disputed any of the claims made by the Complainant and has not provided any answer. Accordingly, the Panel finds that the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Complainant relies on the finding made by the earlier panel in HM Publishers Holdings Ltd of Basingstoke v. Marcus Costa Camargo Peres, WIPO Case No. D2013-1597, which, while it relates to an identical website, deals with a different domain name registered in the name of a different respondent in connection with rights owned by the Complainant in a different trade mark. As such, in this Panel's view, that decision can not be of much assistance to the Complainant. The Complainant has to prove its case with respect to each of the requirements set out in paragraph 4(a) of the Policy and independently of the facts associated with the earlier case referred to.
The Complainant relies primarily on paragraph iv(b) of the Policy and, in the absence of any effort by the Respondent to take up opportunities to demonstrate its rights or legitimate interest, or its good faith, or to challenge the Complainant's contentions, the Panel finds that the Respondent registered and is using the Disputed Domain Name primarily with an intention to capitalize on the reputation attached to the Complainant's mark by diverting Internet users seeking information about the Complainant to the Respondent's website in order to obtain financial reward. The fact that the click through site is designed to generate an income for the Respondent and refers to actual sites relating to the Complainant, indicates that the Respondent appreciated the commercial value associated with the PALGRAVE trade mark. The Respondent should then have appreciated that anyone who would be making unauthorized use of the PALGRAVE mark would be likely to be infringing the Complainant's rights. As an aside, it is somewhat baffling, considering the Respondent's attempt to generate an income from the Complainant's PALGRAVE trademark, that it also uses the derogatory term "FUCK MACMILLAN" as a title for the website associated with the Disputed Domain Name. Nevertheless, such behaviour can not be said to be in good faith.
Taking all the above circumstances into account, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith.
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 <palgrave.org> be transferred to the Complainant.
Charné Le Roux
Date: April 24, 2014