Cengage Learning, Inc. and The Gale Group, Inc. v. Marmaduke Robida / Gale Cengage
Claim Number: FA1301001482536
Complainant is Cengage Learning, Inc. and The Gale Group, Inc. (“Complainant”), represented by Alexandre A. Montagu of MontaguLaw, P.C., New York, USA. Respondent is Marmaduke Robida / Gale Cengage (“Respondent”), Sweden.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <galecengage-publicdomain.com>, registered with VAUTRON RECHENZENTRUM AG.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2013; the National Arbitration Forum received payment on January 29, 2013.
On February 1, 2013, VAUTRON RECHENZENTRUM AG confirmed by e-mail to the National Arbitration Forum that the <galecengage-publicdomain.com> domain name is registered with VAUTRON RECHENZENTRUM AG and that Respondent is the current registrant of the name. VAUTRON RECHENZENTRUM AG has verified that Respondent is bound by the VAUTRON RECHENZENTRUM AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@galecengage-publicdomain.com. Also on February 6, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Multiple Complainants:
a. Gale Group Inc., owner of the GALE mark, is a wholly owned subsidiary of Cengage Learning, owner of the CENGAGE mark.
b. Both Cengage Learning and Gale Group Inc. have a valid claim of rights in the <galecengage-publicdomain.com> domain name because both parties hold rights in trademarks contained in the domain name.
2. Complainant is a leading provider of innovative teaching, learning, and research solutions for the academic, professional, and library markets worldwide.
3. Complainant holds numerous registrations with trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”), for the CENGAGE (Reg. No. 3,603,349 registered July 3, 2008) and GALE (Reg. No. 1,333,193 registered April 30, 1985) marks.
4. Respondent registered the <galecengage-publicdomain.com> domain name on November 20, 2012.
5. Respondent’s <galecengage-publicdomain.com> domain name is confusingly similar to Complainant’s CENGAGE and GALE marks.
6. Respondent is not commonly known by the <galecengage-publicdomain.com> domain name.
7. Respondent has no relationship with Complainant and has not been given any license or permission to use Complainant’s marks.
8. Respondent uses the disputed domain name to operate a website through which Respondent attempts to pass itself off as Complainants in an effort to mislead visitors and cause consumer confusion.
a. Respondent’s website is an almost exact replica of Complainant’s website located at <gdc.gale.com.>
b. Respondent’s website prominently displays the title “Gale Digital Collections” on the top of the page, along with the same coloring and design found on Complainant’s website.
c. Respondent’s website features a page entitled “About Gale” on which Respondent affirmatively represents that it is Complainant by displaying text that was copied from Complainant’s website verbatim.
d. Respondent’s website includes link to Complainant’s site under the headings “About Us” and “Terms of Use.”
e. On January 9, 2013, Respondent distributed a press release, falsely stating that Complainant was releasing all of its “public domain” content for free on the Internet.
i. Referring to itself as Complainant’s “Director for Public Domain Content,” Respondent encouraged users to visit the <galecengage-publicdomain.com> domain name in order to download allegedly free materials.
ii. Respondent responded to questions posted on a discussion board by individuals who had read the press release and visited Respondent’s website in an attempt to convince those individuals that Respondent’s website was legitimate and that Respondent was an authorized representative of Complainant.
9. Respondent’s website offers a downloadable tool that allows users to bypass Complainant’s security systems and gain unauthorized access to Complainant’s website and download content therefrom without payment of the requisite fees.
10. After Complainant sent Demand Letters to registrar and the host of the <galecengage-publicdomain.com> domain name, Respondent altered its website to include the word “Fake” in the upper left hand corner and to revise the introductory paragraph on the home page to state that the site is a “spoof.”
a. Respondent’s revised site is otherwise unaltered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Gale Group Inc., owner of the GALE mark, is a wholly owned subsidiary of Cengage Learning, owner of the CENGAGE mark. Both Cengage Learning and Gale Group Inc. have rights in the <galecengage-publicdomain.com> domain name because both parties hold rights in trademarks contained in the domain name. Complainants will be collectively referred to as “Complainant.”
Complainant is a provider of innovative teaching, learning, and research solutions for the academic, professional, and library markets worldwide. Complainant holds numerous registrations with trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”), for the CENGAGE (Reg. No. 3,603,349 registered July 3, 2008) and GALE (Reg. No. 1,333,193 registered April 30, 1985) marks.
Respondent, Marmaduke Robida / Gale Cengage, registered the <galecengage-publicdomain.com> domain name on November 20, 2012. Respondent uses the disputed domain name to operate a website through which Respondent attempts to pass itself off as Complainants in an effort to mislead visitors and cause consumer confusion. Respondent’s website offers a downloadable tool that allows users to bypass Complainant’s security systems and gain unauthorized access to Complainant’s website and download content without payment of the requisite fees.
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."
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.
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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants, Cengage Learning and Gale Group Inc. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
A sufficient nexus exists between Cengage Learning and Gale Group Inc. as Gale Group Inc. is a wholly owned subsidiary of Cengage Learning. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003)( two complainants treated as a single entity where both parties held rights in trademarks contained within the disputed domain names).
Complainant’s registrations with trademark authorities around the world, including the USPTO, for the CENGAGE and GALE marks establishes Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i), even though Respondent operates in Sweden. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that Respondent’s <galecengage-publicdomain.com> domain name is confusingly similar to Complainant’s CENGAGE and GALE marks within the meaning of Policy ¶ 4(a)(i). Complainant notes that the disputed domain name fully includes both its CENGAGE and GALE marks and the generic term “public domain.” The disputed domain name also includes a hyphen and the generic top-level domain (“gTLD”) “.com.” The addition of generic terms and a hyphen and gTLD, do not adequately distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Additionally, Respondent’s combination of two of Complainant’s marks increases confusion. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). Accordingly, the Panel finds that Respondent’s <galecengage-publicdomain.com> domain name is confusingly similar to Complainant’s CENGAGE and GALE marks within the meaning of Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent is not commonly known by the <galecengage-publicdomain.com> domain name. Complainant asserts that Respondent has no relationship with Complainant and has not been given any license or permission to use Complainant’s marks. Although the WHOIS information, which identifies Respondent as “Marmaduke Robida / Gale Cengage,” appears to indicate that Respondent could be commonly known by the disputed domain name, Respondent has submitted no evidence it is in fact commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the <galecengage-publicdomain.com> domain name within the meaning of Policy ¶ 4(c)(ii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Complainant contends that Respondent is using the <galecengage-publicdomain.com> domain name in an attempt to pass itself off as Complainant, demonstrating Respondent’s lack of rights or legitimate interests in the domain. Complainant asserts that Respondent’s website, which is an almost exact replica of Complainant’s website located at <gdc.gale.com>, offers a downloadable tool that allows users to bypass Complainant’s security systems and gain unauthorized access to Complainant’s website and download content therefrom without payment of the requisite fees. Complainant claims that Respondent’s website prominently displays the title “Gale Digital Collections” on the top of the page, along with the same coloring and design found on Complainant’s website. Complainant also alleges that Respondent’s website features a page entitled “About Gale” on which Respondent affirmatively represents that it is Complainant by displaying text that was copied from Complainant’s website verbatim. Complainant further alleges that Respondent’s website includes links to Complainant’s site under the headings “About Us” and “Terms of Use.” The Panel finds that Respondent’s use of the <galecengage-publicdomain.com> domain name to pass itself off as Complainant constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Through its registration and use of the <galecengage-publicdomain.com> domain name, Respondent has attempted to pass itself off as Complainant in bad faith pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <galecengage-publicdomain.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 19, 2013
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