The McGraw-Hill Co., Inc. v. Umbeke Membe c/o Deleting Domain
Claim Number: FA0809001223759
Complainant is The McGraw-Hill Co., Inc. (“Complainant”), represented by Britton
Payne, of Foley & Lardner LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <glencoemcgrawhill.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 8, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@glencoemcgrawhill.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <glencoemcgrawhill.com> domain name is confusingly similar to Complainant’s GLENCOE and MCGRAW-HILL marks.
2. Respondent does not have any rights or legitimate interests in the <glencoemcgrawhill.com> domain name.
3. Respondent registered and used the <glencoemcgrawhill.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The McGraw-Hill Co., Inc., is an international
information services provider in the financial services, education and business
information markets. Complainant first
registered its GLENCOE mark with the United States Patent and Trademark Office
(“USPTO”) on
Respondent registered the disputed domain name on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has provided evidence it registered its GLENCOE
and MCGRAW-HILL marks with the USPTO.
The Panel finds Complainant’s registrations sufficiently establish its
rights in the marks pursuant to Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under
Respondent’s <glencoemcgrawhill.com>
name combines two of Complainant’s marks, GLENCOE and
MCGRAW-HILL. Respondent’s disputed
domain name deletes the hyphen in the MCGRAW-HILL mark and adds the generic top-level
domain “.com,” to the marks. The Panel
finds the combination of marks and these minor alterations do not distinguish
Respondent’s <glencoemcgrawhill.com>
domain name from Complainant’s marks.
Thus, the Panel finds Respondent’s disputed domain name is confusingly
similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i). See
Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000)
(finding confusing similarity where respondent combined the complainant’s
POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove otherwise pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a
prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel may assume Respondent does not have rights or legitimate
interests in the disputed domain name. The
Panel, however, will examine the record to determine whether it reflects that
Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
Respondent’s disputed domain name resolves to a website displaying links to third-party websites that sell Complainant’s products as well as competing products. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant alleges Respondent is not commonly known by the
disputed domain name. Complainant states
it has not authorized Respondent to use its marks. Furthermore, the record and WHOIS information
do not reflect Respondent has ever been commonly known by the disputed domain
name. Therefore, the Panel finds
Respondent is not commonly known by the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name); see also Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds Respondent’s use of the disputed domain name to lead Internet users to third-party websites in direct competition with Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Nortel Networks Ltd. v. Garner, FA 1105459 (Nat. Arb. Forum Jan. 2, 2008) (finding that the respondent’s use of the disputed domain name to market the complainant’s products as well as products in direct competition with the complainant constitutes a disruption of the complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii)); see also H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Furthermore, Respondent presumably receives compensation in
the form of click-through fees from its use of the confusingly similar disputed
domain name. The Panel finds Respondent
is attempting to profit from the goodwill Complainant has established in its
marks, which is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Anne of Green Gable
Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution
Furthermore, Complainant has provided evidence Respondent
has a pattern of registering disputed domain names that infringe on others
marks. See Zappos.com, Inc. v. Umbeke Membe, FA 1181276 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <glencoemcgrawhill.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 29, 2008
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