WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elsevier BV v. Noureddine Ayoub and Domains by Proxy, LLC / Name Redacted
Case No. D2021-3757
1. The Parties
The Complainant is Elsevier BV, Netherlands, represented by Nelson Mullins Riley & Scarborough, L.L.P., United States of America (“United States”).
The Respondent1 is Noureddine Ayoub, Morocco; and Domains by Proxy, LLC, United States / Name Redacted.2
2. The Domain Names and Registrar
The disputed domain names <scopusjournals.com>, <scopusjournals.info>, and <scopusjournals.org> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2021. On November 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 16, 2021. On the same date, the Center received an email from the named registrant of the disputed domain name <scopusjournals.org>.
The Center verified that the Complaint together with the amended 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 of the Complaint, and the proceedings commenced on December 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2021. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed with panel appointment on January 10, 2022.
The Center appointed Adam Taylor as the sole panelist in this matter on January 20, 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.
The Center received an email from the named registrant of the disputed domain names <scopusjournals.com> and <scopusjournals.info> on February 16, 2022 and February 18, 2022.
4. Factual Background
The Complainant is a publishing company, specialising in scientific, technical, and medical content.
Since 2004, the Complainant and its predecessors have operated an “abstract and citation” database called “Scopus” that comprises some 75 million records in the fields of life, social, physical and health sciences.
The Complainant owns a number of registered trade marks for SCOPUS including United States trade mark No. 2,952,563, filed on March 3, 2003, registered on May 17, 2005, in class 42.
The Complainant promotes its Scopus database via a website at “www.scopus.com”.
The disputed domain names <scopusjournals.com> and <scopusjournals.info> were registered on December 27, 2018, and the disputed domain name <scopusjournals.org> was registered on February 23, 2021.
As of November 8, 2021, the disputed domain names <scopusjournals.com> and <scopusjournals.info> resolved to similar websites that were branded “Scopus Journals” and contained a purported index of science and other journals as well as third party advertising and “PayPal Donate Now” links.
So far as the Panel is aware, the disputed domain name <scopusjournals.org> has never resolved to an active website.
The Complainant sent cease and desist emails to the Respondent on September 7 and 30, 2021. The Respondent did not reply.
5. Parties’ Contentions
A. Complainant
The following is a summary of the Complainant’s contentions.
The Complainant’s trade mark has become well known as a result of the Complainant’s long, continuous and extensive worldwide use thereof.
The disputed domain names are confusingly similar to the Complainant’s trade mark as they consist of that mark together with the descriptive word “journals”, which is a term directly associated with the Complainant’s business.
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant has not authorised the Respondent to use its mark.
The Respondent is not commonly known by the disputed domain names.
Nor has the Respondent used the disputed domain name for a bona fide offering of goods or services but, rather, in a manner that created the impression that its websites were authorised by the Complainant in order to derive financial gain from the goodwill associated with the Complainant’s mark.
The Respondent is not making a legitimate noncommercial use of the disputed domain names. Its purpose is clearly commercial.
The disputed domain names were registered and are being used in bad faith.
The Respondent was clearly aware of the Complainant’s rights in its mark but nonetheless registered and used the disputed domain names, which included the Complainant’s distinctive mark plus the term “journals”, for websites offering services closely related to those of the Complainant in order to create a likelihood of confusion with the Complainant’s mark as well as to disrupt a competitor.
The Respondent’s failure to respond to the Complainant’s cease and desist emails is further evidence of bad faith.
B. Respondent
On November 16, 2021, the Center received an email communication from the named registrant of the disputed domain name <scopusjournals.org> indicating that he did not own any of the disputed domain names and implying that someone may have falsely used his information to register the disputed domain name(s).
On February 16, 2022, the Center received an email from the named registrant of the disputed domain names <scopusjournals.com> and <scopusjournals.info> claiming that he had “just read your message”, that he saw that the Registrar had blocked his domain names which he “had to use”, that he had done so “without any bad faith” and that, when he saw that the domain names posed problems, he detached his websites.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names have been registered and are being used in bad faith.
A. Preliminary Issue - Consolidation
The principles governing the question of whether a complaint may be brought against multiple respondents are set out in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is clear that the disputed domain names <scopusjournals.com> and <scopusjournals.info> are subject to common control as they share registrant details, were registered on the same day, and resolve to similar websites.
The position regarding the disputed domain name <scopusjournals.org> is less straightforward as this disputed domain name was registered some three years later to a different registrant in a different country and, so far as the Panel is aware, it has not been used for an active website.
On the other hand, this disputed domain name follows exactly the format of the other disputed domain names, i.e., combining the distinctive term “scopus” with the descriptive word “journals”. Furthermore, not only has the owner of this disputed domain name not denied an association with the other disputed domain names but, as explained above, the person named as registrant of <scopusjournals.org> has in fact emailed the Center to say that he does not in fact own any of the disputed domain names. It appears to the Panel that this assertion is credible and that, more likely than not, his personal information has been fraudulently used with a view to concealing the real identity of the owner of the disputed domain name <scopusjournals.org>.
In these circumstances, the Panel considers it reasonable to infer that the disputed domain name <scopusjournals.org> is under common control with the other two disputed domain names and that consolidation is fair and equitable to all Parties, and also procedurally efficient.
B. Identical or Confusingly Similar
The Complainant has established rights in the mark SCOPUS by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its extensive and longstanding use of that mark for the purposes of the Policy.
Section 1.8 of the WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element. Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain names and, accordingly, the addition of the descriptive term “journals” does not prevent a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trade mark and that the Complainant has therefore established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As explained in section 2.1 of the WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name <scopusjournals.org> for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
As regards disputed domain names <scopusjournals.com> and <scopusjournals.info>, the Panel has concluded below that the Respondent has used these disputed domain names to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s goods and/or services. Such use of the disputed domain names could not be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
In the Panel’s view, paragraph 4(b)(iv) of the Policy applies to the disputed domain names <scopusjournals.com> and <scopusjournals.info>. By using these disputed domain names, comprising the Complainant’s distinctive trade mark plus a term describing the Complainant’s products, in connection with websites purporting to offer similar goods and/or services and which include third party advertising and “PayPal Donate Now” links, the Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
As regards the disputed domain name <scopusjournals.org>, the Panel considers that the following cumulative circumstances are indicative of passive holding in bad faith as explained in section 3.3 of the WIPO Overview 3.0: (i) the distinctiveness and fame of the Complainant’s mark, (ii) the failure of the Respondent to submit a formal response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s concealing its identity and/or use of false contact details (see section 6A above), (iv) the implausibility of any good faith use to which the disputed domain name may be put, and (v) the illicit manner in which the other two disputed domain names have been used.
The Complainant has therefore established the third element of paragraph 4(a) 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 names, <scopusjournals.com>, <scopusjournals.info>, and <scopusjournals.org> be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: February 23, 2022
1 For reasons explained in section 6A below, the Panel will refer to the Respondents collectively as “the Respondent” unless it is necessary to refer to them separately.
2 The underlying controller of the disputed domain name <scopusjournals.org> appears to have used the name and contact details of a third party as the registrant name when registering the disputed domain name <scopusjournals.org>. In light of the potential identity theft, the Panel has redacted the name of this registrant from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name <scopusjournals.org>, which includes the name provided as the registrant of the disputed domain name <scopusjournals.org>. The Panel has authorised the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated that Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.