Elsevier Science Inc. v. M. Moya

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Elsevier Science Inc. v. M. Moya, Ayom

Case No. D2001-0855

1. The Parties

The Complainant is Elsevier Science Inc., 655 Avenue of the Americas, New York,

NY 10010-5107, USA. The Complainant is represented by Nick Phillips of Row &

Maw, 20 Black Friars Lane, London EC4V 6HD, U.K.

The Respondent is M. Moya,

of an organization named Ayom, the address of which is Clerkenwell, London EC1,

U.K.

2. The Domain Names

and Registrar

The domain names in dispute

are <elsevierscience.com> and <elsevier-science.com>. The Registrar

is CSL GmBH (known as Joker.com), Rathausufer 16, 40213 Duesseldorf, Germany.

3. Procedural History

The Complaint submitted

by Elsevier Science Inc., was received on July 5, 2001, (electronic version)

and July 6, 2001, (hard copy) by the World Intellectual Property Organization

Arbitration and Mediation Center ("WIPO Center").

On July 12, 2001, a request

for Registrar verification was transmitted by the WIPO Center to the Registrar,

CORE.

On July 16, 2001 a further

request for Registrar verification was transmitted by the WIPO Center to the

Registrar CSL GmbH (known as Joker.com).

By email dated July 17,

2001, the Registrar Joker.com advised the WIPO Center as follows:

- It had received a

copy of the Complaint from the Complainant.

- It is the Registrar

of the domain name registrations <elsevierscience.com> and <elsevier-science.com>.

- The Respondent is

shown as the "current registrant" of the domain names.

Having verified that the

Complaint satisfied the formal requirements of the Uniform Domain Name Dispute

Resolution Policy ("UDRP") and the Rules for Uniform Domain Name Dispute

Resolution Policy ("Rules"), the WIPO Center on July 20, 2001, transmitted by

post-courier and by email a Notification of Complaint and Commencement of Administrative

Proceeding to the Respondent. A copy of the Complaint was also emailed to the

Registrar and ICANN.

The Complainant elected

to have its Complaint resolved by a single Panelist; it has duly paid the amount

required of it to the WIPO Center.

The Respondent was advised

that a Response to the Complaint was required within 20 calendar days.

The Respondent was also advised that any Response should be communicated, in

accordance with the Rules, by four sets of hard copy and by email.

No response was received

by the WIPO Center from the Respondent within the prescribed time. A Notice

of Respondent Default was issued on August 10, 2001. The WIPO Center invited

Mr. Ross Carson to be the Panelist in the case. It transmitted to Mr. Carson

a statement of acceptance and requested a declaration of impartiality and independence.

Mr. Carson forwarded to the WIPO Center an executed declaration of impartiality

and independence. The Panel finds that the Administrative Panel was properly

constituted in accordance with the Rules and the Supplemental Rules.

4. Factual Background

The Complainant and its

associated companies own a number of registrations which include the word "Elsevier".

Some of the trademarks date back to the 1950’s. A Compu-Mark report showing

a full list of the trademarks together with the countries in respect of which

they are registered and the classes for which they are registered is set out

in Annex 7 to the Complaint. The UK has not been included in this Compu-Mark

report and details of the Complainant's UK registration for "ELSEVIER" are included

as the last page of Annex 7. The UK would also be covered by the Community Trademark

held by the Complainant for the mark "REED ELSEVIER", details of which appear

on the Compu-Mark report.

The trade-mark ELSEVIER

was registered on November 5, 1987 in Germany, Algeria, Egypt, Spain, France,

Hungary, Italy, Liechtenstein, Monaco, Morocco, Portugal, Rumania, San Marino,

Vietnam, Yugoslavia, Croatia, Slovenia, Czech Republic, Slovak Republic and

Macedonia in International Class 16, Paper goods and printed matter. The trademark

ELSEVIER was also registered in the United States of America on May 14, 1963

in International Class 16, paper goods and printed matter.

The Complainant and its

associated companies have made extensive use of the names "Elsevier" and "Elsevier

Science" in relation to the publication of scientific, technical and medical

information under and by reference to the name "Elsevier Science"

since at least 1946.

5. Parties’ Contentions

A. Complainant

(i) The domain names

are identical or confusingly similar to a trademark or service mark in which

the Complainant has rights.

Complainant submits that

the Complainant and its associated companies are the holders of a number of

registered trademarks throughout the world which include the word "Elsevier".

(Annex 7 to the Complaint).

The Complainant and its

associated companies are also the holders of unregistered trade marks in respect

of the names "Elsevier" and "Elsevier Science" by virtue of the extensive use

made of these words by the Complainant and its associated companies in relation

to the publication of scientific, technical and medical information under and

by reference to the name Elsevier Science since at least 1946.

Complainant submits that

the domain names in dispute <elsevierscience.com> and <elsevier-science.com>

are confusingly similar to the registered and unregistered marks of the Complainant

and its associated companies.

(ii) The Respondent

has no rights or legitimate interests in respect of the domain names.

Complainant submits that

the names "Elsevier" and "Elsevier Science" are unique to

the Complainant and its associated companies. The Complainant or its associated

companies are aware of no other use of these names anywhere in the world other

than by companies connected with it. "Elsevier" is a word which bears

no meaning other than to indicate the business run by the Complainant and its

associated companies.

(iii) The domain names

have been registered and are being used in bad faith.

Complainant submits that

the registration and continued holding of the domain names in dispute by the

Respondent amounts to the Respondent acting in bad faith for the following basic

reasons:

- the Complainant's

name "Elsevier Science" has a strong reputation and is widely known, as evidenced

by its substantial use world-wide;

- the Respondent can

have no bona fide reason for its registration of these domain names;

- the Respondent has

taken active steps to conceal its true identity, by operating under a name which

appears to be borrowed from a fictional language;

- the Respondent has

actively provided, and failed to correct, false contact details, in breach of

its registration agreement; and

Taking into account these

factors above, it is not possible to conceive of any plausible, actual or contemplated

active use of either of these domain names that would not be illegitimate, such

by being passing off, or an infringement of the Complainant's rights under trade

mark law.

B. Respondent

No Response was submitted

by the Respondent.

6. Discussion and Findings

In accordance with Paragraph

4(a) of the Policy, the Complainant has the burden of demonstrating three elements:

(i) That the Complainant

has rights in a trademark or service mark with which the Respondent’s Domain

Names are identical or confusingly similar; and

(ii) That the Respondent

has no rights or legitimate interests in the Domain Names; and

(iii) That the Domain

Names have been registered and are being used in bad faith.

(a) Identical or confusingly

similar

It is clear that the Complainant

has substantial trademark rights in the mark ELSEVIER and trade name ELSEVIER

SCIENCE, INC., and that the domain names in dispute are confusingly similar

to the Complainant’s marks. The domain names in dispute, <elsevierscience.com>

and <elsevier-science.com>, are comprised of the Complainant’s trademark

ELSEVIER and trade name ELSEVIER SCIENCE followed by the word <.com> which

identifies a generic top level domain name. The domain names in dispute <elsevierscience.com>

and <elsevier-science.com> are confusingly similar to the Complainant’s

well-known trademarks ELSEVIER and trade name ELSEVIER SCIENCE, INC.

(b) No legitimate

rights or interests

The Respondent does not

have the consent of the Complainant to register or to use the domain names <elsevierscience.com>

and <elsevier-science.com>.

The evidence of the Complainant

is that the Respondent has never used "ELSEVIER" alone or as part

of a trademark, trade name or other trade symbol, or in a descriptive or informative

manner to describe the Respondent’s goods or services. The Respondent never

made any preparations to use the domain names, <elsevierscience.com> and

<elsevier-science.com>, in connection with a bona fide offering of goods

or services before notice of the dispute. The Respondent is not known by the

designation "Elsevier". The Respondent did not file any evidence to

demonstrate any rights or legitimate interest in the domain name in dispute

as the Respondent is entitled to do pursuant to Paragraph 4.c of the UDRP. Complainant

advised that it made a number of attempts to contact the Respondent at the yahoo

address provided to the Registrar, but Complainant was advised that the address

had been disabled or discontinued. Attempts to contact the Respondent at hostmaster@elsevierscience.com,

owner@elsevierscience.com, hostmaster@elsevier-science.com and owner@elsevier-science.com

were returned marked "Service unavailable". UK2.net, the seller of

the domain names to the Respondent provided a telephone number which the Complainant

called. Complainant was advised that the number had changed. The new number

was answered by "Wicket Web" who described themselves as website designers

and advised that they had no knowledge of Ayom, lemaclights, or either of the

domain names in dispute. (Annex 3). Complainant submits that if Respondent felt

it had any legitimate rights or interests in the domain names it would have

put forward an explanation of its rights to use these names.

The Panelist determines

that the Respondent has no legitimate rights or interests in the domain names

in dispute.

(c) Registered and used

in bad faith

The Complainant’s trademarks

are inherently distinctive being created trademarks not used by anyone other

than the Complainant. The Complainant’s trademarks and trade name are well known

and the balance of probabilities is that the Respondent knew of the Complainant’s

trademarks and trade name at the date of registration.

The Respondent is a passive holder of the domain names in dispute. The Administrative

Panel in Telstra Corporation Limited v Nuclear Marshmallows, WIPO

Case No. D2000-0003 stated at Paragraph 7.9 "... the relevant issue

is not whether the Respondent is undertaking a positive action in bad faith

in relation to the domain name, but instead whether, in all the circumstances

of the case it can be said that the Respondent is acting in bad faith."

The facts in this proceeding

lead to the conclusion that the positive registration of the domain names in

dispute demonstrates that the Respondent is acting in bad faith. The Respondent

has registered domain names in which the distinctive portion of the domain names

incorporates the well known created trademarks of the Complainant. If websites

featuring the domain names were to be activated the public would be immediately

confused and associate the websites with the Complainant. Additional relevant

facts are that the Complainant attempted to contact the Respondent as discussed

in (b) above but received no response at any of the e-mail addresses or telephone

numbers. The Respondent has given as the name of its organization an invented

word in a fictional language meaning "anywhere, wherever (except here)",

which is evidence of the Respondent’s bad faith. The Respondent provided the

Registrar with a false name and address in breach of the Registration Agreement.

The Respondent held the domain names in dispute since March 22 and 23, 2000

without making any kind of legitimate commercial, noncommercial or fair use

of the subject domain name.

The Panel determines the

domain names<elsevierscience.com> and <elsevier-science.com> were

registered and are being used in bad faith.

7. Decision

Pursuant to Paragraph 4(i)

of the Policy and Paragraph 15 of the Rules, the Panel grants the Complainant’s

request for transfer to it of the domain names <elsevierscience.com> and

<elsevier-science.com> .

Ross Carson

Sole Panelist

Dated: August 30, 2001