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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The McGraw-Hill Companies, Inc. v. Juan Carlos Zamora Guadalupe

Case No. D2000-0863

 

1. The Parties

Complainant is The McGraw-Hill Companies, Inc. with a principal place of business at 1221 Avenue of the Americas, New York, New York, 10022, U.S.A.

Respondent is Juan Carlos Zamora Guadalupe whose address is listed by Register.com as C/ Cуrdoba n° 23, 2° A, Las Palmas de G.C., LP 35016, Spain.

 

2. The Domain Name and Registrar

The domain name in dispute is "mcgrawhill.com".

Although the Complaint initially identified the domain name as www."mcgrawhill.com", the prefix "www" is an accepted form of introduction on the Internet and is not considered by the Panel to be part of the domain name which has been identified by the Registrar as "mcgrawhill.com".

The Registrar is Register.com, Inc.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") has provided documentation showing:

a) The Center received Complainant’s Complaint by e-mail and in hardcopy on July 26, 2000. The Complaint states that a copy thereof had been sent or transmitted to the Respondent on July 24, 2000, by first class mail on July 24, 2000, and that a copy had been sent or transmitted to the Registrar on July 24, 2000, by facsimile.

b) Following a request for verification made by the Center to the Registrar on August 5, 2000, the Registrar confirmed that it had received a copy of the Complaint from the Complainant, that "mcgrawhill.com" was registered through Register.com, Inc., and that the current registrant of the domain name was Juan Carlos Zamora Guadalupe, that the registrant’s Administrative Contact was Juan Carlos Zamora Guadalupe and the Technical Contact, Zone Contact was Register.Com, in each case providing e-mail, fax and post delivery addresses. The Registrar also confirmed that the Uniform Dispute Resolution Policy is applicable to the domain name and that the domain name is active.

c) On August 8, 2000, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to Complainant by e-mail, and to Respondent by post/courier (with enclosures), by facsimile(without attachments) and by e-mail (without attachments) at the respective addresses provided by the Registrar.

d) The Notification of Complaint and Commencement of Administrative Proceeding stated that Respondent had twenty days for submitting a Response, that the last day for its submission was August 28, 2000, and that if a Response were not sent by the above date, Respondent would be considered in default.

e) On September 13, 2000, the Center forwarded to Complainant and to Respondent, in the manner and at the addresses indicated in paragraph (c) above, Notification of Respondent Default.

f) On September 27, 2000, the Center forwarded to Complainant and to Respondent, in the manner and at the addresses indicated in paragraph (c) above, Notification of Appointment of Administrative Panel and Projected Decision Date.

In accordance with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules) the Center found that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy) , the Rules and the Supplemental Rules, and further that the payment in the required amount to the Center had been made by the Complainant.

The Panel accepts the above findings of the Center and further finds:

a) The Complaint was properly notified to Respondent in accordance with the Rules, paragraph 2(a) on August 8, 2000, and that August 28, 2000, was the last day for filing a Response by the Respondent.

b) No response was received by the Center.

c) The Administrative Panel was constituted of Joan Clark, Q.C. who had previously submitted a Statement of Acceptance and Declaration of Impartiality.

d) Due to a delay caused by a change in Case Administrators the Case was not transferred to the Administrative Panel until October 10, 2000.

e) On October 12, 2000, the Center advised that the Panel had an additional two weeks to write the decision.

 

4. Factual Background and Parties’ Contentions

A. The Complaint

The Complaint states that the domain name in dispute was registered on January 25, 2000. The dispute will be governed by the terms of the Uniform Domain Name Dispute Resolution Policy (the Policy), which was approved by ICANN on October 24, 1999.

The Complaint sets forth the history of Complainant which was incorporated in 1925 and has over 16,000 employees located in 400 offices worldwide, with a total company revenue during 1999 in excess of 4 billion dollars. The Complaint further asserts that Complainant is a publishing, financial, information and media services company which provides information through various media platforms, including books, magazines and newsletters, on-line over the Internet and electronic networks, by television, satellite and FM sideband broadcast and through software, videotape, facsimile and CD-ROM products.

The Complaint further asserts that, continuously since 1909, Complainant has used MCGRAW-HILL as its principal business name and trademark. Complainant is the owner of U.S. trademark registration no. 1,350,345 registered July 23, 1985 for, inter alia, educational motion pictures and film strips, books, pamphlets, brochures, newspapers, educational material, information services, information relating to investment, radio and television broadcasting services, and educational and publishing services, with a date of first use in 1909. The Complaint states that Complainant owns trademark registrations for the above-described trademark in 34 countries worldwide including the United States and further that Complainant has owned the Internet domain name "mcgraw-hill.com" since May 1994.

The Complaint contains further assertions of the importance of the trade name and trademark MCGRAW-HILL to Complainant, the fact its business is increasingly dependent on the Internet, and the fact that Complainant has spent an enormous amount of time, money and effort in promoting its MCGRAW-HILL trademark and in developing its website at "mcgraw-hill.com". The Complaint concludes that the MCGRAW-HILL mark has become famous around the world for Complainant’s goods and services and is of incalculable value to Complainant.

The Complaint asserts that the domain name in dispute "mcgrawhill.com" was registered on January 25, 2000, and is identical and confusingly similar to Complainant’s trademark MCGRAW-HILL.

The Complaint also states that Respondent’s home page when accessed through its domain name indicates that the website is under construction, but that an earlier visit to Respondent’s site on June 26, 2000, had indicated that persons accessing the site could purchase books through that site's "association" with "amazon.com", which is a leading seller of books on-line.

The Complaint recounts that, on April 18, 2000, Complainant’s outside trademark counsel forwarded a letter to Respondent placing him on notice that his registration and use of the domain name in dispute, "mcgrawhill.com", violated Complainant’s legal rights and constituted a violation of the Anticybersquatting Consumer Protection Act and demanded that Respondent immediately assign to Complainant all rights in the domain name in dispute and cease any use of MCGRAW-HILL or any mark confusingly similar thereto. The Complaint reports that no response was received to this letter.

The Complaint states that the McGraw-Hill name is well known in Spain, and that McGraw-Hill is represented there by McGraw-Hill Interamericana De España S.A.U., which sells McGraw-Hill products out of fourteen different locations across Spain.

The Complaint further states that, given the activity of the Spanish Company McGraw-Hill Interamericana De España S.A.U. in Spain, and Complainant’s numerous trademark registrations, including registrations in Spain, together with the wide reputation and fame of the MCGRAW-HILL mark, it is inconceivable that Respondent was unaware of McGraw-Hill’s rights in the MCGRAW-HILL mark at the time of his registration of the domain name in dispute.

The Complaint also avers that, given the use and reputation of the MCGRAW-HILL mark worldwide and in Spain, the public in Spain and around the world would undoubtedly believe that the domain name in dispute is owned by or affiliated with Complainant.

The Complaint further notes that Respondent has not provided any evidence by which it could be contended that the name McGraw-Hill is a legitimate name by which he or any other member of his family is known or that the name McGraw-Hill may in any other way be identified with or related to a legitimate interest of Respondent. The Complaint asserts that no other meaning can be attributed to the name McGraw-Hill than that which has been developed by Complainant over decades of use of the MCGRAW-HILL mark.

The Complaint declares that it is not possible to contemplate any plausible actual or contemplated use of the domain name by Respondent that would not result in consumer confusion or an infringement of Complainant’s trademarks.

The Complaint asserts that Respondent registered and used the domain name in dispute in bad faith and has no rights or legitimate interests in it.

The Complaint requests that the Administrative Panel issue a decision that the contested domain name be transferred to Complainant.

 

5. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following in order that Respondent be required to submit to a mandatory administrative proceeding:

(i) The domain name in issue is identical or confusingly similar to Complainant’s trademark or service mark, and

(ii) Respondent has no rights or legitimate interests in respect of the domain name, and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, without limitation, each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

a) Identity or confusing similarity of the domain name to a trademark or service mark in which the Complainant has rights.

The suffix ".com" indicating generic top level domain (gTLD) serves to indicate the domain in which a particular Internet name has been registered.

In the Panel’s view, a gTLD suffix, which is a requirement for a domain name registration, should not be taken into consideration when considering the identity or similarity of a domain name to a trademark or service mark of a complainant.

There is a slight difference between the domain name in dispute and Complainant’s registered trademark in that there is a hyphen between the two words "MCGRAW" and "HILL" in Complainant’s trademark, but not in the domain name which is composed of the same two words run together. While Complainant’s trademark and the disputed domain name are therefore not identical, the difference between them is not sufficient to avoid confusion.

The Panel therefore concludes that the domain name in dispute, "mcgrawhill.com", is confusingly similar to Complainant’s trademark MCGRAW-HILL. The criterion of paragraph 4(a)(i) of the Policy has been met.

b) Rights or legitimate interests of Respondent in the domain name

Respondent has chosen not to file a Response and there is nothing in the evidence in the case file to indicate any rights or interests of Respondent in the name MCGRAW-HILL.

There has been no evidence of any use or demonstrable preparations for the use of the domain name by Respondent in connection with a bona fide offering of goods or services.

The printout of Respondent’s home page produced with the Complaint as having been made on June 26, 2000, does not contain a bona fide offering by Respondent of goods or services, rather it contains an invitation by Respondent to click on "amazon.com" to "get the books you want".

In addition, this printout from Respondent’s website on June 26, 2000, is subsequent to the notification to Respondent of the dispute by Complainant’s outside trademark counsel’s letter of April 18, 2000, demanding that the domain name be assigned immediately to Complainant.

A second printout of Respondent’s web page produced with the Complaint simply states "Welcome! This site is under construction". This is further confirmation that there was no use by Respondent of the domain name in connection with a bona fide offering of goods or services. The mere statement that the site is "under construction" does not constitute demonstrable preparation to use a domain name in connection with such a bona fide offering of goods or services.

There is no evidence that Respondent has been commonly known by the domain name, and there is no evidence that Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain.

The Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.

The criterion of paragraph 4(a)(ii) of the Policy has been met.

c) Registration and use of the domain name in bad faith

Registration in bad faith

While there is no direct evidence of the intent or the state of mind of Respondent at the time of registration of the domain name or subsequent thereto, the Panel relies on the following:

i) The evidence establishes that the trademark MCGRAW-HILL is registered in many countries including Spain. The Complainant avers that the trademark has been widely used throughout the world, that the name McGraw-Hill is well-known in Spain and that McGraw-Hill products are sold across Spain from fourteen different locations.

ii) There is no evidence to indicate that Respondent was previously known by the domain name or was associated with it in any way, and no explanation has been given for the choice by Respondent of the very distinctive and uncommon combination mcgrawhill in his domain name.

iii) The invitation on Respondent’s website as it appeared on June 26, 2000, to "Shop Now!" at "amazon.com" for "Amazon.com 100 Hot Books", stated to be "in association with amazon.com", associates the disputed domain name with a category of products (books) marketed by Complainant. This web page is consistent with a knowledge by Respondent of Complainant’s trademark and the goods for which it has been used, and is consistent with a willingness by Respondent to profit from the association.

There is no evidence before this Panel which would militate against the conclusion from the foregoing that the domain name in dispute was registered in bad faith.

Use in bad faith

Paragraph 4(b) of the Policy lists, without limitation, four circumstances which, if present, "shall be evidence of the registration and use of the domain name in bad faith". These examples recognize that a passive holding of a domain name registration can, in certain circumstances, constitute using the domain name in bad faith. The concept of a domain name being used in bad faith is not limited to positive action.

- WIPO Case D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows;

- WIPO Case D2000-0042, Compaq Computer Corporation v. Boris Beric;

- WIPO Case D2000-0055, Guerlain v. Peikang;

- WIPO Case D2000-0242, CBS Broadcasting Inc. v. Edward Enterprises;

The same reasons which lead to the conclusion that the domain name in dispute was registered in bad faith also contribute to the conclusion that it was, and is, used in bad faith:

i) The trademark MCGRAW-HILL is registered in many countries and the Complainant avers it has been widely used throughout the world, the name McGraw-Hill is well-known in Spain and McGraw-Hill products are sold across Spain from fourteen different locations.

ii) The evidence provides no explanation for the choice by Respondent of the domain name "mcgrawhill.com", which is composed of a distinctive and uncommon combination of the two words which form Complainant’s trademark.

iii) Respondent’s web page which appeared on June 26, 2000, associated the domain name with books, a category of products marketed by Complainant, and is consistent with a prior knowledge by Respondent of Complainant’s trademark and a willingness by Respondent to profit from association therewith.

iv) The Complainant states Respondent failed to respond to a letter from Complainant’s outside trademark counsel calling upon Respondent to assign the domain name to Complainant. Respondent has not filed any Response in this case. No justification has been offered for the choice by Respondent of a domain name which is confusingly similar to Complainant’s widely used trademark.

v) Respondent may be presumed to have known that his passive holding of a registered domain name is likely to cause confusion with an identical or confusingly similar trademark or trade name.

The Panel concludes that the domain name "mcgrawhill.com" was registered and is being used by Respondent in bad faith. The criteria of paragraph 4(a)(iii) of the Policy has been met.

 

6. Decision

(1) The Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, paragraph 4:

- that the domain name "mcgrawhill.com" is confusingly similar to the trademark MCGRAW-HILL of Complainant;

- that Respondent has no rights or legitimate interests in respect of the domain name; and

- that it has been registered and is being used in bad faith.

(2) The Panel accordingly requires that the domain name "mcgrawhill.com" be transferred forthwith to Complainant.

 

 


 

 

Joan Clark
Presiding Panelist

Date: October 31, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0863.html

 

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