DECISION

Harcourt, Inc. v. Henry Chan

Claim Number:  FA0311000214531

PARTIES

Complainant is Harcourt, Inc. (“Complainant”), represented by Tara M. Vold of Fulbright & Jaworski, LLP, 801 Pennsylvania Avenue, N.W., Washington, DC 20004-2623.  Respondent is Henry Chan (“Respondent”), P.O. Box SS-6348/A124, Nassau, Bahamas.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <harcourtscience.com>, registered with iHoldings.com, Inc. d/b/a DotRegistrar.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically November 25, 2003; the Forum received a hard copy of the Complaint November 26, 2003.

On November 28, 2003, iHoldings.com, Inc. d/b/a DotRegistrar.com confirmed by e-mail to the Forum that the domain name <harcourtscience.com> is registered with iHoldings.com, Inc. d/b/a DotRegistrar.com and that Respondent is the current registrant of the name. iHoldings.com, Inc. d/b/a DotRegistrar.com verified that Respondent is bound by the iHoldings.com, Inc. d/b/a DotRegistrar.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 22, 2003, 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@harcourtscience.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 31, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <harcourtscience.com>, is identical to Complainant’s HARCOURT SCIENCE mark.

2. Respondent has no rights to or legitimate interests in the <harcourtscience.com> domain name.

3. Respondent registered and used the <harcourtscience.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a global education company, using the HARCOURT and HARCOURT SCIENCE marks since 1999.  Complainant registered the HARCOURT and HARCOURT SCIENCE marks with the US Patent and Trademark Office (“USPTO”) October 31, 2000 and November 14, 2000, respectively (Reg. Nos. 2,399,024 and 2,403,228). 

Respondent registered the disputed domain name, <harcourtscience.com>, April 23, 2002.  The domain name resolves to a web page that claims to provide links to “science related” web sites such as “Yu-Gi-Oh Cards,” “Games,” and “Boobs.”  The latter link refers the Internet user to pornographic websites.  The website uses pop-up advertising and a design template generated by DomainSponsor.com—a website advertising sales agency that pays revenues for Internet referrals.

Respondent lists his e-mail address as henrychan852@yahoo.com.  The Complainant alleges Respondent is a “known cybersquatter,” listing nine cases against a Respondent named Henry Chan with the same e-mail address.  See e.g. LTD Commodities LLC v. Chan, FA 152617 (Nat. Arb. Forum May 8, 2003); Pioneer Hi-Bred Int’l, Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003); Bedford Fair Apparel, Inc. v. Chan, FA 157322 (Nat. Arb. Forum June 20, 2003); Reed Elsevier, Inc. v. Chan, FA 161468 (Nat. Arb. Forum July 23, 2003); Am. Stores Co. v. Chan, FA 161567 (Nat. Arb. Forum July 24, 2003); Rock Fin. v. Chan, FA 167197 (Nat. Arb. Forum Aug. 15, 2003); Sports Auth. Michigan, Inc. v. Chan, FA 176552 (Nat. Arb. Forum Sep. 15, 2003); Popular, Inc. v. Chan, FA 183739 (Nat. Arb. Forum Oct. 6, 2003); Yahoo! Inc. v. Chan (Nat. Arb. Forum July 16, 2003).

DISCUSSION

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical to and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that it has rights in the HARCOURT SCIENCE mark by use in commerce and by registration with the USPTO.  The disputed domain name, <harcourtscience.com>, is identical to Complainant’s mark.  The addition of the of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark.  See Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Interstellar Starship Servs. Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is the same mark" as EPIX). 

Accordingly, the Panel finds that the <harcourtscience.com> domain name is identical to Complainant’s HARCOURT SCIENCE mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Respondent failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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”).

Respondent is also using Complainant’s mark to divert Internet traffic to competing websites, advertising, and pornography.  Internet users who arrive at the site also receive pop-up advertising, and one of the links takes the Internet user to a list pornographic website links.  Diversion to competing websites, advertising, or pornography is not a bona fide offering of goods or services and is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); see also McClatchy Mgmt. Serv., Inc. v. Carrington a/k/a Party Night Inc., FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).

Respondent is not commonly known as <harcourtscience.com>, given its WHOIS registration information.  Because it is not known by the disputed domain name, the Panel is permitted to infer that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a domain name when Respondent is not known by the mark.

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleged that Respondent acted in bad faith in using Complainant’s mark in a domain name. Respondent is using a domain name identical to Complainant’s HARCOURT SCIENCE mark to divert Internet users to “science related” links.  Complainant alleges that Respondent is affiliated with DomainSponsor.com and contends that Respondent generates revenue by referring Internet traffic to DomainSponsor.com via links and pop-up advertising.  Creating a likelihood of confusion with Complainant’s mark as to the source of the website, for commercial gain, is evidence of bad faith registration and use pursuant to Policy 4(b)(iv).  See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent can accomplish his stated purpose of providing news and information about State Farm without the use of State Farm’s trademark in a name); see also MathForum.com, LLC v. Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website).

Respondent has engaged in a pattern of registering other domain names that infringe upon the famous marks of others, including <ltdcommodities.net>, <pioneerseed.com>, <willowridgecatalog.com>, <lexixnexus.com>, <jewelsosco.com>, <rockfinancial.com>, <sportsaurthority.com>, <bancopopulardepuertorico.com>, as well as 85 domain names that somehow incorporate the YAHOO, GEOCITIES, or HOTJOBS marks.  Respondent is an habitual typosquatter and the Policy seeks to provide a remedy against such infringement by habitual typosquatters.  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <harcourtscience.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: January 14, 2004.

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