WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Usborne Publishing Limited v. Dening Xie

Case No. D2021-4280

1. The Parties

The Complainant is Usborne Publishing Limited, United Kingdom, represented by Co-Counsel Limited, United Kingdom.

The Respondent is Dening Xie, China.

2. The Domain Name and Registrar

The disputed domain name <usbornebookbarn.com> is registered with DomainName Driveway, Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2021, 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.

On December 28, 2021, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on December 29, 2021. The Respondent did not comment on the language of the proceeding.

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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on January 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2022.

The Center appointed Joseph Simone as the sole panelist in this matter on January 28, 2022. 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.

4. Factual Background

The Complainant, Usborne Publishing Limited, is a British publisher of children’s books.

The Complainant has an extensive global portfolio of trade marks incorporating the term “Usborne”, including the following:

- United Kingdom Trade Mark Registration No. UK00900339242 for USBORNE in Classes 9, 16 and 28, registered on September 3, 1999;

- United States of America Trade Mark Registration No. 4173509 for USBORNE in Classes 9, 16 and 28, registered on July 17, 2012; and

- China Trade Mark Registration No. 18312727 for USBORNE in Class 16, registered on
December 21, 2016.

The disputed domain name was registered on September 1, 2021. According to screenshots provided by the Complainant, at the time of filing the Complaint, the disputed domain name resolved to a website offering obscene content and displaying advertisements. At the time of this Decision, the disputed domain name continue to resolve to a website offering obscene content and displaying advertisements.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has prior rights in the USBORNE trade mark and that it is a leading player in its field of business.

The Complainant further notes that the disputed domain name registered by the Respondent is identical or confusingly similar to the Complainant’s USBORNE trade mark, and the addition of “book” and “barn” will only induce further confusion, and that the generic Top-Level Domain (“gTLD”) “.com” does not affect the analysis as to whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.

The Complainant asserts that it has not authorized the Respondent to use the USBORNE mark and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant also asserts that there is no evidence suggesting that the Respondent has any connection to the USBORNE mark in any way, and that there is no plausible good faith reason for the Respondent to have registered the disputed domain name, especially after considering the relevant circumstances. The Complainant therefore concludes that the registration and any use of the disputed domain name whatsoever must be in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

In accordance with paragraph 11(a) of the Rules:

“[…] the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

In this case, the language of the Registration Agreement for the disputed domain name is Chinese. Hence, the default language of the proceeding should in principle be Chinese.

However, the Complainant filed the Complaint in English, and requested that English be the language of the proceeding, asserting inter alia that:

- the language of the disputed domain name is in English, the same as that of the Complainant’s mark, and incorporates the English words “book” and “barn”; and

- the translation of the Complaint would only unduly burden the Complainant and unnecessarily delay the proceeding.

The Respondent was notified in both Chinese and English of the language of the proceeding and the Complaint and did not comment on the language of the proceeding or submit any response.

Considering the circumstances in this case, the Panel has determined that the language of the proceeding shall be English, and the Panel has issued this decision in English. The Panel further finds that such determination would not cause any prejudice to either Party and would ensure that the proceeding takes place with due expedition.

B. Identical or Confusingly Similar

The Panel acknowledges that the Complainant has established rights in the USBORNE trade mark in many jurisdictions around the world.

Disregarding the “.com” gTLD, the disputed domain name incorporates the USBORNE trade mark in its entirety. Thus, the disputed domain name should be regarded as confusingly similar to the Complainant’s USBORNE trade mark.

The Panel further notes that the addition of the dictionary terms “book” and “barn” does not prevent a finding of confusing similarity.

The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the USBORNE trade mark and in showing that the disputed domain name is identical or confusingly similar to its mark.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of producing relevant evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

The Complainant asserts that it has not authorized the Respondent to use its trade mark and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the evidence shows that the disputed domain name resolves to a website offering obscene content and displaying advertisements.

Thus, the Complainant has established its prima facie case with satisfactory evidence.

The Respondent did not file a response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. As such, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy is applicable in this case.

As previously noted above, the disputed domain name incorporates the Complainant’s mark in its entirety with the additional terms “book” and “barn”, which are directly related to the goods and services associated with the Complainant’s mark. Such composition carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances in particular, but without limitation shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trade mark of another party. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.

When the Respondent registered the disputed domain name on September 1, 2021, the USBORNE trade mark was already widely known and directly associated with the Complainant’s activities. Given the extensive prior use and fame of this mark, in the Panel’s view, the Respondent should have been aware of the Complainant’s mark when it applied to register the disputed domain name.

The Respondent has provided no evidence to justify its registration of the disputed domain name. Given the foregoing, it would be unreasonable to conclude that the Respondent – at the time of its registration – was unaware of the Complainant’s trade mark, or that the Respondent’s adoption of the uncommon and distinctive trade mark USBORNE was a mere coincidence.

The Complainant’s registered trade mark rights in USBORNE for its signature products and services predate the registration date of the disputed domain name. A simple online search for the term “usborne” would have revealed that it is a world-renowned brand. The Panel is therefore of the view that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trade mark rights, a finding which is reinforced considering the addition of the terms “book” and “barn” in the disputed domain name that directly relate to the Complainant’s business.

The Panel therefore finds that the Respondent has registered the disputed domain name with the intention of taking advantage of the fame and reputation of the Complainant’s trade mark for the commercial benefit of the Respondent.

Lastly, the fact that the Respondent used the disputed domain name in connection with the provision of a website offering explicit obscene content and pornographic material, and displaying advertisements has also supported the findings that the disputed domain name is being used in bad faith (see FENDI S.r.l. v. Wubo, Wubo, WIPO Case No. D2021‑2019).

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

7. Decision

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, <usbornebookbarn.com>, be transferred to the Complainant.

Joseph Simone
Sole Panelist
Date: February 10, 2022