Complainant is Clarivate Analytics Plc, Camelot UK Bidco Limited, MarkMonitor Inc., United States of America, represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
Respondent is Ronald Linco, United States of America.
The disputed domain name <clavirate.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2019. On September 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 16, 2019.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on October 24, 2019. 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 the Rules, paragraph 7.
The Complaint is filed in the name of three complainants. The first Complainant Clarivate Analytics Plc is a publicly traded corporation employing 4300 people in 40 countries operating in the field of data, information, workflow solutions and domain expertise. The second Complainant is Camelot UK Bidco Limited (“Camelot”) and the third Complainant is MarkMonitor Inc. (“MarkMonitor”). For convenience, and except where indicated below, references to “Complainant” in this decision refer to all three Complainants.
The first Complainant is the parent company of the second and third complainants. Camelot is the proprietor of at least 163 trademark registrations for marks containing CLAVIRATE (the “Mark”) and/or the Clavirate Logo (the “Logo”) in numerous countries including the United States and Russian Federation. Among those are the following:
- United States registration No. 5581365 for CLAVIRATE (word mark), registered on October 9, 2018 and claiming a date of first use on October 3, 2016 for, inter alia, “computer programs for intellectual property record maintenance and management;”
- United States registration No. 5566401 for CLARIVATE ANALYTICS (device mark), registered on September 18, 2018 with a date of first use of January 10, 2017, for, inter alia, “computer programs for intellectual property record maintenance and management;”
- International registration No. 1367310 for CLARIVATE (word mark), registered on March 22, 2017 for, inter alia, “educational information;”
- International registration No. 1367317 for the Clarivate Logo, a device mark with no verbal element, registered on March 31, 2017 for, inter alia, “educational information.”
MarkMonitor, a brand protection company, is the registrant of the domain name <clarivate.com> (registered on October 1, 2008). This domain resolves to the primary website used by Complainant.
The Domain Name <clavirate.com>, was registered by Respondent on November 1, 2018. It resolves to a website in the Russian language featuring an entity calling itself “Clarivat Analytics.”
In February, April, June, July, and August 2019, prior to commencing this proceeding, Complainant sent Respondent notice letters by email. Respondent replied in September 2019 but did not agree to disable the website or transfer the Domain Name.
Complainant’s submissions may be summarized as follows:
Under the first element, Complainant alleges that it has rights in the Mark based on use and registrations in numerous countries, including the United States (where Respondent is located) and Russian Federation (Respondent’s website is in Russian). The Domain Name contains the Mark in its entirety, simply transposing the letters “v” and “r” in the middle. Such a practice is equivalent to typosquatting and does not decrease the similarity between the marks. Moreover, the Domain Name conveys an overall impression of being connected to Complainant.
Under the second element, Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the Mark in any manner. Respondent has never used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services. Rather, the website to which the Domain Name resolves falsely implies an association with Complainant through use of a logo that is nearly identical to Complainant’s Logo and through offering services similar to Complainant’s. Respondent has never been known by the Domain Name, nor is Respondent making a legitimate noncommercial or fair use of the Domain Name. The fact that the Domain Name is an obvious misspelling of a trademark is evidence of a lack of rights or legitimate interests.
Under the third element, Complainant alleges that the Domain Name has been registered and used by Respondent in bad faith. The Mark is famous and/or widely known, since it is protected by at least 163 trademark registrations in at least 43 jurisdictions worldwide, and Complainant’s commercial presence in many countries. It is therefore implausible that Respondent was unaware of Complainant when registering the Domain Name. Through the content of the website, Respondent has created a likelihood of confusion with Complainant. Respondent is using a logo that is nearly identical to Complainant’s Logo, by deleting the letter “e” to form the word “Clarivat” and by reproducing an inverted, mirror image of the design portion of Complainant’s logo. Complainant’s registrations for the Mark pre-date Respondent’s registration of the Domain Name. Since the Domain Name is obviously connected with Complainant, Respondent’s actions suggest opportunistic bad faith, which is further evidence by the obvious misspelling of Complainant’s trademark in the Domain Name.
Finally, Respondent is a repeat cybersquatter who has lost at least two previous decisions under the Policy. Said pattern of conduct further establishes bad faith.
Respondent did not reply to Complainant’s contentions.
The Complaint was filed by the first, second and third Complainants. While the Complaint does not explicitly state so, the Panel has assumed that the Complaint has been filed in this way because the first Complainant is the parent company, the second Complainant holds the Clarivate trademark registrations and the third complainant is the registrant of the <clarivate.com> domain. The Panel is asked to decide whether the consolidation of the Complaint should be permitted, on the basis that all three Complainants share a common grievance against Respondent and because it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1. The majority of UDRP panels have accepted complaints filed by multiple complainants, particularly when they are related entities.
The Panel finds that the entities are clearly related and share a common grievance against Respondent, who would not be disadvantaged by allowing the consolidation of the Complaint. The Respondent has not in any case exercised his right to file a Response. Accordingly, the Panel finds that it would be fair and equitable to permit consolidation and allows the Complaint to proceed in the name of all three Complainants.
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent has registered and is using the domain name in bad faith.
Complainant has provided evidence establishing that it has trademark rights in the Mark through numerous registrations in many jurisdictions, including the United States, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.
In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name is confusingly similar with the Mark, since the Domain Name is an obvious and intentional misspelling of the Mark. The inversion of the letters “v” and “r” falls well within the types of activities acknowledged by previous panels as as “typosquatting.” See WIPO Overview 3.0, section 1.9 and cases cited thereunder, particularly Schneider Electric S.A. v. Domain Whois Protect Service/Cyber Domain Services Pvt. Ltd, WIPO Case No. D2015-2333 <schnieder-electric.com>.
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that there is no evidence that Respondent is commonly known by the Domain Name or is using the Mark with permission of Complainant. Rather, the case materials contain Complainant’s express assertion that such permission does not exist. Complainant’s rights in Mark predate the registration of the Domain Name.
The circumstances and evidence indicate that Respondent has no rights or legitimate interests in the Domain Name. The nature of the Domain Name (inverting two letters in Complainant’s Mark) cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner (see WIPO Overview 3.0, section 2.5.1). Further, the Domain Name is used by Respondent on a website incorporating elements that are strikingly similar to Complainant’s Mark and Logo, making reference to similar commercial activities, which does not appear to satisfy any indicia of legitimate fair use. Respondent’s email of September 2019 to Complainant alleging that the website exists to help scientists publish papers and claiming that its website drives users to Complainant’s own site is not supported by any additional evidence in the record. Even if this assertion had been substantiated, however, such circumstances would not support a finding of Respondent’s rights or legitimate interests in the Domain Name (see WIPO Overview 3.0, section 2.5.3 and cases cited).
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see, for example, L’Oréal v. Zhao Jiafei, WIPO Case No. D2015-1458). Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the Domain Name.
The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the Mark predate the registration of the Domain Name. The Mark is distinctive, at least, in respect of the goods and services for which it is registered and used. The Domain Name contains a deliberate misspelling of Complainant’s Mark. Respondent’s website contains a different misspelling of Complainant’s Mark and a mirror image of its Logo. There can be no doubt that Respondent chose the Domain Name in full awareness of Complainant’s Mark and for the purpose of attempting to attract, for commercial or other gain, Internet users to its website. See WIPO Overview 3.0, section 3.1.4.
The evidence also demonstrates that Respondent used the Domain Name in bad faith. Respondent’s website attempts to create an association between it and Complainant through the close copies of Complainant’s Mark and Logo in connection with services at least partly related to those of Complainant. Respondent is named as a Respondent in other UDRP cases, indicating a pattern of such activity.
In the view of the Panel, such circumstances, taken together, clearly indicate that Respondent registered and used the Domain Name in bad faith. The Panel finds that Complainant has established the third element under paragraph 4(a) of the Policy.
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 <clavirate.com> be transferred to Complainant.
Ingrīda Kariņa-Berziņa
Sole Panelist
Date: November 7, 2019