Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach
Claim Number: FA1308001516146
Complainant is Thomson Reuters Global Resources (“Complainant”), represented by Alexandre A. Montagu, New York, USA. Respondent is Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach (“Respondent”), British Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <issii-thomsonreuters.org>, <issii.org>, <scie-thomsonreuters.org>, <ahci-thomsonreuters.org>, <sci-thomsonreuters.org>, <ssci-thomsonreuters.org>, and <essci-village.org>, registered with Web Commerce Communications Limited d/b/a WebNic.cc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2013; the National Arbitration Forum received payment on August 22, 2013.
On August 23, 2013, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to the National Arbitration Forum that the <issii-thomsonreuters.org>, <issii.org>, <scie-thomsonreuters.org>, <ahci-thomsonreuters.org>, <sci-thomsonreuters.org>, <ssci-thomsonreuters.org>, and <essci-village.org> domain names are registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the names. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 August 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@issii-thomsonreuters.org, postmaster@issii.org, postmaster@scie-thomsonreuters.org, postmaster@ahci-thomsonreuters.org, postmaster@sci-thomsonreuters.org, postmaster@ssci-thomsonreuters.org, postmaster@essci-village.org. Also on August 30, 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 September 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
In these proceedings, Complainant claims the entities controlling the domain names at issue are effectively controlled by the same person and/or entity operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant argues the disputed domain names are effectively controlled by the same entity, because the WHOIS information for each of the disputed domain identifies “intach” as the registrant organization. Complainant claims portions of the physical address listed on the WHOIS database are identical for many of the disputed domain names. Specifically, the registrant of many of the domain names is listed as being located in “Road Town, Tortola 999187.” Complainant further claims the disputed domain names resolve to a series of interrelated webpages on which the common registrant attempts to pass itself off as Complainant. The websites resolving from the <issii.org> and <issii-thomsonreuters.org> domain names display links to the websites resolving from the <scie-thomsonreuters.org>, <ahci-thomsonreuters.org>, <sci-thomsonreuters.org>, <ssci-thomsonreuters.org>, and <essci-village.org> domain names. In CSA Int’l v. Shannon & Care Tech Indus., Inc., D2000-0071 (WIPO March 24, 2000), a previous panel held that multiple domain names were effectively controlled by the same person where the disputed domain names resolved to websites that displayed similar content and where the same individual was listed as the administrative contact on the WHOIS information for each of the disputed domain names. In Yahoo! Inc. v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000), a previous panel rendered a decision against multiple respondents where the physical addresses used and the contacts designated were “inter-linking and identical.”
In this case, the disputed domain names are used to display similar content, and the WHOIS information lists “intach” as the registrant organization for each of the disputed domain names. Furthermore, the “inter-linking” nature of the physical addresses and registrant organization listed in the WHOIS database is additional evidence the disputed domain names are effectively controlled by the same entity. There certainly is a common purpose evident in the resolving web sites for the disputed domain names.
Complainant has sufficiently established the disputed domain names are effectively controlled by the same entity. Respondents have submitted no evidence to the contrary.
For the remainder of this decision, Respondents will be referred to as a singular “Respondent.”
A. Complainant
The Thomson Reuters Trademark
Thomson Reuters is a leading provider of information for businesses and professionals in the financial, legal, tax and accounting, healthcare and science and media markets. The THOMSON REUTERS trademark is among the most famous and well-respected marks in the world. Thomson Reuters, through its subsidiaries Thomson Reuters Global Resources and Thomson Reuters Canada Limited, owns trademark registrations for the THOMSON REUTERS mark in various jurisdictions throughout the world, including the United States, Australia, Argentina, China, CTM (EU), Hong Kong, and Japan. The THOMSON REUTERS mark has become extremely famous in the business information industry worldwide and is among Complainant’s most valuable assets.
The THOMSON REUTERS mark has been used extensively on the Internet, in printed publications and in various other media. Thomson Reuters also has spent many millions of dollars annually on various types of advertising involving the THOMSON REUTERS mark. By reason of the extensive use and advertising of Thomson Reuters’ services, the THOMSON REUTERS mark has come to be recognized and relied upon by the trade and the public as identifying Thomson Reuters and its information services, and as distinguishing Thomson Reuters from others and the services of others. The THOMSON REUTERS brand has consistently been listed as one of the top 50 global brands in a leading annual survey of brand value.
Thomson Reuters has an active presence on the Internet. The principal domain name currently registered and used by Thomson Reuters is thomsonreuters.com. The thomsonreuters.com domain name has been registered since March 6, 2008. Thomson Reuters also owns numerous other domain names incorporating the THOMSON REUTERS mark, such as thomsonreuters.net, and thomsonreuters.org.
The ISI Trademark
Thomson Reuters is the owner of the trademark ISI as well as various trademarks incorporating the ISI mark, including ISI WEB OF KNOWLEDGE (the “ISI Trademarks”). Thomson Reuters, through its subsidiary Thomson Reuters (Scientific) Inc., is the owner of US Trademark Registration No. 2743528 for the mark ISI WEB OF KNOWLEDGE.
Thomson Reuters acquired the ISI Trademarks together with the goodwill of the underlying business when it purchased The Institute for Scientific Information in 1992. The Institute for Scientific Information was founded in 1955 by Dr. Eugene Garfield, who revolutionized scientific research with his concept of citation indexing and searching. Today, Thomson Reuters offers a powerful selection of integrated information solutions under the ISI Trademarks, which provide not only relevant data, but also unique ways to search, analyze, evaluate, and collaborate. These solutions are used by those who research, teach, publish papers, review manuscripts, make budgetary decisions, evaluate and analyze research impact, apply for grants, develop and manage collections, coordinate resources, manage acquisitions, and find commercial uses for research. By reason of the extensive use of the ISI Trademarks for over fifty years, the ISI Trademarks have come to be recognized and relied upon by the trade and the public as identifying Thomson Reuters and its scientific citation indexing and research services, and as distinguishing Thomson Reuters from others and the services of others.
Thomson Reuters actively uses the ISI Trademarks on the Internet and owns numerous domain names featuring the ISI mark, including: ISIthomson.com; ISI-esource.com; ISInet.com; ISIresearch.com; ISIknowledge.com; ISIhighlycited.com; ISIcite.com; ISIcorporate.org; ISInet.org; and ISIwebofknowledge.org.
The ARTS & HUMANITIES CITATION INDEX Trademark
Thomson Reuters is the owner of the trademark ARTS & HUMANITIES CITATION INDEX (the “AHCI Trademark”). Thomson Reuters, through its subsidiary Thomson Reuters (Scientific) Inc., is the owner of US Trademark Registration No. 1539298 for the mark ARTS & HUMANITIES CITATION INDEX. Thomson Reuters acquired the AHCI Trademark together with the goodwill of the underlying business when it purchased The Institute for Scientific Information in 1992. Thomson Reuters offers publications and research and information services under the AHCI Trademark. By reason of the extensive use of the AHCI Trademark for over thirty years, the AHCI Trademark has come to be recognized and relied upon by the trade and the public as identifying Thomson Reuters and its publications and research and information services, and as distinguishing Thomson Reuters from others and the goods and services of others.
The SCIENCE CITATION INDEX Trademark
Thomson Reuters is the owner of the trademark SCIENCE CITATION INDEX (the “SCI Trademark”). Thomson Reuters, through its subsidiary Thomson Reuters (Scientific) Inc., is the owner of US Trademark Registration Nos. 0821154 and 3653258 for the mark SCIENCE CITATION INDEX. Thomson Reuters offers publications, software and online research and information services under the SCI Trademark. By reason of the extensive use of the SCI Trademark for almost fifty years, the SCI Trademark has come to be recognized and relied upon by the trade and the public as identifying Thomson Reuters and its publications, software and online research and information services, and as distinguishing Thomson Reuters from others and the goods and services of others.
The SOCIAL SCIENCES CITATION INDEX Trademark
Thomson Reuters is the owner of the trademark SOCIAL SCIENCES CITATION INDEX (the “SSCI Trademark”). Thomson Reuters, through its subsidiary Thomson Reuters (Scientific) Inc., is the owner of US Trademark Registration No. 1130364 for the mark SOCIAL SCIENCES CITATION INDEX. Thomson Reuters acquired the SSCI Trademark together with the goodwill of the underlying business when it purchased The Institute for Scientific Information in 1992. Thomson Reuters offers publications and research and information services under the SSCI Trademark. By reason of the extensive use of the SSCI Trademark for over forty years, the SSCI Trademark has come to be recognized and relied upon by the trade and the public as identifying Thomson Reuters and its publications and research and information services, and as distinguishing Thomson Reuters from others and the goods and services of others.
The SCIENCE CITATION INDEX EXPANDED Trademark
Thomson Reuters is the owner of the trademark SCIENCE CITATION INDEX EXPANDED (the “SCIE Trademark”). Thomson Reuters offers publications and research and information services under the SCIE Trademark. Thomson Reuters has been using the SCIE trademark since at least as early as December 1996. By reason of the extensive use of the SCIE Trademark for over sixteen years, the SCIE Trademark has come to be recognized and relied upon by the trade and the public as identifying Thomson Reuters and its publications and research and information services, and as distinguishing Thomson Reuters from others and the goods and services of others.
FACTUAL AND LEGAL GROUNDS
(a.) Factual Background
The Respondent registered the Infringing Domain Names on the following dates: January 29, 2010 (in the case of ISSII.org); June 30, 2011 (in the case of SCI-ThomsonReuters.org, SCIE-ThomsonReuters.org, SSCI-ThomsonReuters.org and ESSCI-Village.org); August 29, 2011 (in the case of issii-thomsonreuters.org); and July 12, 2012 (in the case of AHCI-ThomsonReuters.org).
Respondent operates a series of inter-related websites from the Infringing Domains (the “Infringing Websites”) on which Respondent attempts to pass itself off as Complainant in an effort to mislead visitors and cause consumer confusion. The Infringing Websites are arranged in such a manner, and contain such content, that would lead visitors to conclude that Respondent is the Complainant. For example, on the “About Us” pages of the websites associated with the ISSII.org and ISSII-ThomsonReuters.org domains, under the heading “About ISSII”, Respondent states:
“The mission of International Social and Scientific Information Institute (ISSII) is to provide comprehensive coverage of the world's most important and influential journals and research results. Currently, ISSII collection covers nearly 25,000 international and regional journals, essays and book series in every area of the natural sciences, social sciences, and arts and humanities. We provide the largest collection of business information in the world. The most important part is the collection of nearly 8,000 international journals. The collection of these journals with English abstract, author, publisher address, and references and all journals indexed by ISSII are included.”
These statements in fact describe the Complainant’s services offered under the ISI Trademarks. This demonstrates that Respondent has registered and used the Infringing Domains in an attempt to pass itself off as Complainant and deceive visitors into believing that it is Complainant or is affiliated with Complainant.
Moreover, Respondent claims on the websites associated with the ISSII.org and ISSII-ThomsonReuters.org domains to be the owner of publications and products which are in fact owned by Complainant, including Science Watch and ISI Highly Cited.
In addition, Respondent has created links on the websites associated with the ISSII.org and ISSII-ThomsonReuters.org domains to the websites associated with the other five domains names that are the subject of this dispute, namely SCIE-ThomsonReuters.org, AHCI-ThomsonReuters.org, SCI-ThomsonReuters.org, SSCI-ThomsonReuters.org, and ESSCI-Village.org. The links are entitled “SCI Journal List”, “SCIE Journal List”, “SSCI Journal List”, “AHCI Journal List”, and “ESSCI Journal List”, respectively. The links are displayed in such a manner as to make it appear that the websites, and the content thereon, are affiliated with, or endorsed by Complainant.
Complainant previously filed successful UDRP proceedings against the registrants of the domains ISI-ThomsonReuters.org and ISI-ThomsonReuters.org, which dealt with nearly identical facts as those discussed herein. See Thomson Reuters Global Resources v. Russell Magee / intach, Natl. Arb. Forum Case No. FA1204001438247 (May 18, 2012), and Thomson Reuters Global Resources v. NELSON Kurland, Natl. Arb. Forum Case No. FA1304001494162 (May 16, 2013). For example, the infringing websites in those cases contained the same content quoted above, except that the phrase “Institute of Science Index (ISI)” has been replaced with the phrase “International Social and Scientific Information Institute (ISSII)”. Indeed, it appears that the infringing websites that were taken down when Complainant prevailed in the previous UDRP actions have simply been re-launched with very minor alterations on the ISSII.org and ISSII-ThomsonReuters.org domains.
Further evidence connecting this case to the previous cases can be found in the fact that the ISI-ThomsonReuters.com domain name was originally registered by the same organization that is the Respondent in this proceeding (“intach”), using the same email address that is listed in the Whois record for the ISSII.org domain (kesadue@yahoo.com.tw).
Respondent’s registration and misuse of the Infringing Domains is a flagrant attempt to subvert the purpose of domain name use and registration and to circumvent the authority of the domain name registration system.
(b.) Multiple Domain Names
According to the ICANN Rules, a complainant may file a single complaint relating to more than one domain name where the domain names at issue are registered by the same domain-name holder. See ICANN Rule 3(c). Based on the fact that all of the Infringing Domains were registered by the same organization (i.e. “intach”), Applicant submits that Rule 3(c) is satisfied here. In addition, Applicant submits that the inclusion of multiple domains in the Complaint is also appropriate under Rule 10(e) of the ICANN Rules. Numerous Panels have allowed for the inclusion of multiple domains in a single complaint even when the named registrant is not the same where the particular facts and circumstances indicate that the domains are subject to common ownership or control. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 (May 18, 2010); Allcaneat Foods, Ltd. v. Karma Ventures LLC and Dave's Domain's, Natl. Arb. Forum Case No. 1007001335801 (September 8, 2010). Circumstances that have been found to be sufficient to support a finding of common ownership or control include:
· Common administrative or technical contact. See Yahoo!, Inc v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461 (January 29, 2001).
· Common postal address or email address. See Adobe Systems Incorporated v. Domain Oz, WIPO Case No. D2000-0057 (March 22, 2000).
· Content of websites substantially identical. See Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659.
Here, there are numerous factors which indicate that the Infringing Domains are under common ownership or control. First, as noted above, the same Registrant Organization (“intach”) is listed in the Whois records for all of the Infringing Domains. In addition, portions of the physical address listed on the Whois database are the same for all of the Infringing Domains, including the State (“Tortola”) and Postal Code (“999187”). Moreover, as described above, the Registrant has used the Infringing Domains in a coordinated effort to pass itself off as Complainant, with the websites for the respective domains featuring references and links to the others. Taken as a whole, Complainant respectfully submits that the foregoing factors are more than sufficient to establish that the Infringing Domains are subject to common ownership or control, and therefore consolidation of the domains into a single proceeding is appropriate here.
(c.) Confusing Similarity
The domain names used by Respondent are confusingly similar to one or more of the famous THOMSON REUTERS, ISI, SCIENCE CITATION INDEX, ARTS & HUMANITIES CITATION INDEX, SOCIAL SCIENCES CITATION INDEX or SCIENCE CITATION INDEX EXPANDED Trademarks owned by Complainant. The THOMSON REUTERS, ISI, SCIENCE CITATION INDEX, ARTS & HUMANITIES CITATION INDEX, SOCIAL SCIENCES CITATION INDEX and SCIENCE CITATION INDEX EXPANDED Trademarks were famous and distinctive at the time the Respondent registered the Infringing Domains.
In the case of SCI-ThomsonReuters.org, the domain fully incorporates the THOMSON REUTERS Trademark along with an abbreviation for the SCIENCE CITATION INDEX trademark. It is well established that the mere abbreviation of a trademark, or of a portion of a trademark, is insufficient to prevent confusion. See Chevron Intellectual Property LLC v. Linda Hearn, Natl. Arb. Forum Case No. 1109001409285 (November 15, 2011)(Panel found the domain ChevOil.com confusingly similar to the mark CHEVRON, and noted that “there have been numerous decisions in which a panel has found the abbreviation of a well-known trademark to be a "confusingly similar" domain name.”). Therefore, the SCI-ThomsonReuters.org domain is confusingly similar to Complainant’s trademarks. For the same reason, the domains SSCI-ThomsonReuters.org (where “SSCI” is an abbreviation for the SOCIAL SCIENCES CITATION INDEX mark), AHCI-ThomsonReuters.org (where “AHCI” is an abbreviation for the ARTS & HUMANITIES CITATION INDEX mark), and SCIE-ThomsonReuters.org (where “SCIE” is an abbreviation of the SCIENCE CITATION INDEX EXPANDED mark) are also confusingly similar to Complainant’s trademarks. Similarly, the ESSCI-Village.org domain features an abbreviation for the SOCIAL SCIENCES CITATION INDEX mark, along with an abbreviation for the generic term “Electronic”. The content displayed on the website associated with this domain, along with the presence of the links and related content on the other infringing websites discussed herein, remove any doubt that the domain is confusingly similar to Complainant’s SSCI Trademark.
With respect to ISSII-ThomsonReuters.org, the domain fully incorporates the THOMSON REUTERS Trademark along with a term that is confusingly similar to the ISI Trademark. The term “ISSII” is virtually identical to the ISI mark, with the only difference being the duplication of the “S” and the “I” letters, and is clearly intended to confuse consumers into believing it is the Complainant’s mark based on the content displayed on the accompanying website. This conclusion is only reinforced by the fact that the ISSII term is combined in the domain name with the Complainant’s famous THOMSON REUTERS mark. As such, the domain is confusingly similar to the Complainant’s marks.
The final domain at issue--ISSII.org--is confusingly similar to Complainant’s ISI Marks. As noted above, the “ISSII” term is virtually identical to the ISI mark, with the only difference being the duplication of the “S” and the “I” letters. Moreover, the fact that Respondent has attempted to pass itself off as Complainant on the accompanying website, including by referring to Complainant’s ISI mark, removes any doubt that the Respondent is intending to cause confusion between the ISSII.org domain and Complainant’s ISI Marks. The close similarity between the terms, along with the substance of the content on the website also indicate that the Respondent is attempting to take advantage of visitors who arrive at the site by mistake as a result of misspelling Complainant’s ISI mark—a practice commonly known as typosquatting. Therefore, the domain is confusingly similar to Complainant’s trademarks. See Sephora v. WhoisGuard WIPO Case No. D2006-0845 (Sept. 4, 2006) (the panel found that given the widespread practice of typosquatting, the close similarity between the Complainant’s trademark, SEPHORA, and the disputed domain name, sefora.com, was intentional and designed to confuse the public); Thomson Reuters Global Resources v. Jason Gilbert, Natl. Arb. Forum Case No. FA1208001460782 (October 17, 2012).
(d.) No Rights or Legitimate Interests
Respondent has no rights or legitimate interests with respect to the Infringing Domains. The Infringing Domains bear no relationship to any legitimate business of Respondent. The Respondent is not commonly known by the Infringing Domains and has no relationship with or permission from Complainant for the use of its famous trademarks. Respondent has not been given a license by Complainant to use the trademarks and does not otherwise come within any of the provisions of paragraph 4(c) of the ICANN Policy. See Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112 (March 31, 2003). Furthermore, Respondent is not making a legitimate noncommercial or fair use of the Infringing Domains.
There is no “bona fide” offering that Respondent could make through the use of Complainant’s famous trademarks, and there is no innocent explanation for Respondent’s choice to use the trademarks in the Infringing Domains. Moreover, Respondent has used the Infringing Websites to pass itself off as Complainant in a blatant attempt to cause consumer confusion. Respondent has no right or legitimate interest in exploiting the Infringing Domains to pass itself off as Complainant. See; Google Inc. v. power sky a/k/a wanglun, Natl. Arb. Forum Case No. FA1109001407268 (October 27, 2011). Indeed, in two previous UDRP proceedings involving some of the same trademarks at issue here, the Panels found that the registrants’ use of websites which appear to be nearly identical to the Infringing Websites at issue here were not bona fide offering of goods and services or a legitimate noncommercial or fair use. See Thomson Reuters Global Resources v. Russell Magee / intach, Natl. Arb. Forum Case No. FA1204001438247 (May 18, 2012)(“As the Panel finds that Respondent is attempting to pass itself off and phish for Internet user’s personal information, the Panel finds that Respondent is therefore not making a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); and Thomson Reuters Global Resources v. NELSON Kurland, Natl. Arb. Forum Case No. FA1304001494162 (May 16, 2013).
(e.) Bad Faith
The Infringing Domains have been registered and used in bad faith by Respondent. Respondent registered and used a series of domain names containing Complainant’s famous trademarks, or terms confusingly similar thereto, which is evidence of a pattern of bad faith registration and use. This alone is sufficient to demonstrate Respondent’s bad faith. See ICANN Policy ¶4(b)(ii; Thomson Canada Limited, Thomson Finance S.A. and Reuters Limited v. Ian Alter, NAF Case No. FA0712001124307 (Feb. 22, 2008) (Panel found that registration of multiple domain names incorporating the THOMSON and REUTERS marks was evidence of a pattern of bad faith registration and use).
Respondent’s efforts to pass itself off as Complainant on the Infringing Websites provide further evidence of Respondent’s bad faith. See Monsanto Co. v. Decepticons, NAF Case No. FA 101536 (Dec. 18, 2001) (respondent's use of domain to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); JS IP LLC v. Yee Sin Lau, NAF Case No. FA1111001413772 (Dec. 5, 2011). It is clear from even a cursory glance at the Infringing Websites that Respondent is attempting to pass itself off as Complainant. Indeed, one need look no further than the home pages of the websites associated with the ISSII-ThomsonReuters.org and ISSII.org domains, where the Respondent informs visitors that it provides citation indexing and research services—the same services provided by Complainant—and it displays links to pages bearing the names of the SCI, SCIE, SSCI and AHCI Trademarks owned by Complainant (which, if clicked on, take visitors to the websites associated with the other four domain names at issue here). If there was any doubt that Respondent is using the Infringing Domains in a bad faith attempt to pass itself off as Complainant, that doubt is removed by Respondent’s claim on the Infringing Websites that it is the publisher of the Science Watch and Journal Citation Reports publications, which are in fact publications offered by the Complainant.
Moreover, the websites associated with the ISSII-ThomsonReuters.org and ISSII.org domains each contain a “Registration/Login” page, where visitors are asked to submit personal information. This indicates that Respondent is using the Infringing Domains for a “phishing” scam, in which personal information is taken from users and later used for unauthorized purposes. It is well established that using a domain name to operate a phishing scam is evidence of bad faith under ¶4(a)(iii) of the ICANN Rules. See Google Inc. v. Privacy Protections Inc, NAF Case No. FA1111001414441 (Dec 21, 2011)(“The Respondent’s modus operandi is a ‘phishing’ operation which collects internet users’ addresses and other personal information. Previous decisions have found such an operation to be evidence of bad faith.”).
Finally, because of the fame associated with the THOMSON REUTERS, ISI, SCI, SCIE, SSCI and AHCI Trademarks, the Panel may find that any use of the Infringing Domains by the Respondent constitutes bad faith. See Harrods Ltd. V. Harrod’s Closet, WIPO Case No. D2001 – 1027 (Sept. 28, 2001) (Panel found that where a mark is so obviously connected with well-known products, its very use by someone with no connection to these products can evidence opportunistic bad faith). Given the inherent distinctiveness and fame of the THOMSON REUTERS mark, there is no conceivable explanation, let alone a good faith one, for the registration and use of the Infringing Domains by a person with no connection to Thomson Reuters. Therefore, Respondent’s registration and use of the domain can only have been done in bad faith. Indeed, numerous NAF panels have found that domain names featuring the THOMSON REUTERS mark that were registered by parties without authorization from Complainant must have been registered in bad faith. See Thomson Canada Limited, et. al. v. Joe Hyon-chol, NAF Case No. FA0711001107033 (Jan. 17, 2008) (the panel noted that “opportunistic registration of the name…of a new entity to be formed from the merger of two multinationals is a glaring example of bad faith registration and use”); Thomson Canada Limited, et. al. v. Ian Alter, NAF Case No. FA0712001124307 (Feb. 28, 2008) (Respondent’s registration ofThomsonReuters.net and other domain names featuring the THOMSON REUTERS mark following the announcement of merger discussions between Thomson and Reuters was evidence of opportunistic bad faith). While this alone would be sufficient for a finding of bad faith, Respondent’s scheme to use multiple domains that are confusingly similar to Complainant’s marks in an attempt to pass itself off as Complainant and operate a phishing scam on the Infringing Websites leaves no doubt that Respondent has acted in bad faith.
Nearly identical facts and circumstances to those at issue here led two previous ICANN Panels to find that the disputed domain was registered and used in a bad faith attempt by the registrant to pass itself off as Complainant. See Thomson Reuters Global Resources v. Russell Magee / intach, Natl. Arb. Forum Case No. FA1204001438247 (May 18, 2012); and Thomson Reuters Global Resources v. NELSON Kurland, Natl. Arb. Forum Case No. FA1304001494162 (May 16, 2013).
The unlawful acts of Respondent have caused and are continuing to cause irreparable injury to the goodwill and reputation of Complainant and, unless restrained, will cause further irreparable injury.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring the domain name:
(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.”).
Complainant claims it owns rights in the following trademarks through registrations with the United States Patent & Trademark Office (“USPTO”): The THOMSON REUTERS mark (e.g., Reg. No. 4,105,789 filed December 7, 2007; registered February 28, 2012); the ISI WEB OF KNOWLEDGE mark (e.g., Reg. No. 2,743,528 registered July 29, 2003); the ARTS & HUMANITIES CITATION INDEX mark (e.g., Reg. No. 1,539,298 registered May 16, 1989); the SCIENCE CITATION INDEX mark (e.g., Reg. No. 821,154 registered December 27, 1966); and the SOCIAL SCIENCES CITATION INDEX mark (e.g., Reg. No. 1,130,364 registered February 5, 1980). Complainant’s THOMSON REUTERS mark was registered on February 28, 2012, after Respondent registered the <ssci-thomsonreuters.org>, <scie-thomsonreuters.org>, <ssci-thomsonreuters.org>, <essci-village.org> and <issii-thomsonreuters.org> domain names. However, Complainant has used the THOMSON REUTERS mark since early April 2008, and it registered its <thomsonreuters.com> domain name on March 6, 2008. Complainant’s registration of its THOMSON REUTERS mark with the USPTO states Complainant’s first use of the mark in commerce occurred on April 17, 2008. Previous panels have held that a complainant’s registration of a mark with the USPTO sufficiently establishes its rights in the mark pursuant to the Policy. See, e.g., 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). For the foregoing reasons, Complainant has sufficiently established rights in the THOMSON REUTERS, ISI WEB OF KNOWLEDGE, ARTS & HUMANITIES CITATION INDEX, SCIENCE CITATION INDEX, and the SOCIAL SCIENCES CITATION INDEX marks pursuant to Policy ¶4(a)(i).
Complainant’s USPTO registration for the THOMSON REUTERS mark lists a December 7, 2007 application date. Previous panels have held that the rights of a complainant’s mark date back to the filing date of the trademark application, which sufficiently predate a respondent’s registration of a disputed domain name where the date of the complainant’s trademark application predates the date of the respondent’s domain registration. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Complainant applied for its THOMSON REUTERS mark prior to June 30, 2011, and Complainant’s THOMSON REUTERS mark sufficiently predates Respondent’s registration of the <ssci-thomsonreuters.org>, <scie-thomsonreuters.org>, <ssci-thomsonreuters.org>, <essci-village.org> and <issii-thomsonreuters.org> domain names. Complainant has sufficiently established its rights in this mark pursuant to the Policy.
It should be noted this Panel is not convinced a complainant is required to prove under this element of the UDRP that it has better rights than a respondent. A complainant must merely prove it has some rights under Policy ¶4(a)(i). The question of who acquired rights first is only relevant under Policy ¶4(a)(iii) when bad faith must be determined.
Complainant claims it owns common law rights in the SCIENCE CITATION INDEX EXPANDED mark. Policy ¶4(a)(i) does not require a complainant to register a mark with a government agency in order to sufficiently establish its right in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Rather, a complainant may demonstrate that it has developed consumer recognition and established common law rights in its mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Respondent has not controverted Complainant’s claims to common law rights. Therefore, the Panel finds Complainant has common law rights in its SCIENCE CITATION INDEX EXPANDED mark pursuant to Policy ¶4(a)(i).
Complainant uses SCIENCE CITATION INDEX EXPANDED mark to provide publications and research and information services. Complainant continuously used the mark for over sixteen years and the mark has developed a secondary meaning, identifying Complainant as the source of research and information services. A complainant’s mark has acquired a secondary meaning when the mark indicates the complainant as the source of a product in the public’s mind. AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Secondary meaning can be established through evidence of length of sales under the mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Here, Complainant has continuously provided research and information services under the SCIENCE CITATION INDEX EXPANDED mark for over sixteen years. This continuity of use sufficiently establishes the mark has developed a secondary meaning in the eyes of the public, identifying Complainant as the source of products and services marketed under the SCIENCE CITATION INDEX EXPANDED mark. Complainant has sufficiently established its rights in the SCIENCE CITATION INDEX EXPANDED mark pursuant to Policy ¶4(a)(i).
Complainant claims the disputed domain names are all confusingly similar to one or more of Complainant’s marks. The <issii.org> domain name is confusingly similar to Complainant’s ISI WEB OF KNOWLEDGE mark because the domain name is identical to the ISI portion of the mark, with the only difference being the duplication of the “S” and “I” letters. The disputed <issii.org> domain name also adds the generic top-level domain (“gTLD”) “.org.” A domain name’s addition of a gTLD does not sufficiently distinguish the domain name from a complainant’s mark because all domain name syntax requires it. See, e.g., Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). A domain name’s addition of the letter “s” or other single letters does not sufficiently distinguish the domain name from a complainant’s mark. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶4(a)(i)). The disputed <issii.org> domain name is confusingly similar to the ISI portion of Complainant’s mark because it merely adds the characters “S” and “I.” The ISI portion of Complainant’s ISI WEB OF KNOWLEDGE mark is effectively an abbreviation of that mark. The <issii.org> domain name is confusingly similar to the ISI portion of Complainant’s mark. Therefore, the disputed domain name is confusingly similar to the entire mark pursuant to Policy ¶4(a)(i).
Complainant next claims the <issii-thomsonreuters.org> domain name is confusingly similar to Complainant’s THOMSON REUTERS mark. The <issii-thomsonreuters.org> domain name fully incorporates the THOMSON REUTERS mark in its entirety while merely adding the term “issii,” which is confusingly similar to Complainant’s ISI WEB OF KNOWLEDGE. The <issii-thomsonreuters.org> domain name adds a hyphen and the gTLD “.org.” The addition of a hyphen and a gTLD does not adequately distinguish the domain name from a complainant’s mark under Policy ¶4(a)(i). See 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). A domain name that combines two of a complainant’s marks is confusingly similar to each of the combined marks. See, e.g., Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark). The omission of spaces between words in a mark also does not adequately distinguish a domain name under the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). The <issii-thomsonreuters.org> domain name is effectively a combination of Complainant’s ISI WEB OF KNOWLEDGE and THOMSON REUTERS marks. The <issii-thomsonreuters.org> domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶4(a)(i).
Complainant also claims the <scie-thomsonreuters.org>, <ahci-thomsonreuters.org>, <sci-thomsonreuters.org>, and <ssci-thomsonreuters.org> domain names are confusingly similar to its THOMSON REUTERS mark. These domain names fully incorporate Complainant’s THOMSON REUTERS mark while merely adding the term “scie,” “ahci,” “sci,” or “ssci.” Each of these added terms is an abbreviation of Complainant’s SCIENCE CITATION INDEX EXPANDED, ARTS & HUMANITIES CITATION INDEX, SCIENCE CITATION INDEX, or SOCIAL SCIENCES CITATION INDEX marks. Each of the <scie-thomsonreuters.org>, <ahci-thomsonreuters.org>, <sci-thomsonreuters.org>, and <ssci-thomsonreuters.org> domain names adds a hyphen and the gTLD “.org.” Once again, the addition of a hyphen and a gTLD does not adequately distinguish the domain name from a complainant’s mark under Policy ¶4(a)(i). See 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). Previous panels have also held that a domain name that fully incorporates a mark and merely adds a word associated with the complainant’s business is confusingly similar to the mark pursuant to the Policy. See, e.g., Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business). The <scie-thomsonreuters.org>, <ahci-thomsonreuters.org>, <sci-thomsonreuters.org>, and <ssci-thomsonreuters.org> domain names are confusingly similar to Complainant’s THOMSON REUTERS mark pursuant to the Policy.
Finally, Complainant claims the <essci-village.org> domain name is confusingly similar to Complainant’s SOCIAL SCIENCES CITATION INDEX mark. The domain name incorporates “SSCI,” an abbreviation of the SOCIAL SCIENCES CITATION INDEX mark and merely adds the word “e” and the generic term “village.” The <essci-village.org> domain name also adds a hyphen and the gTLD “.org.” Once again, adding a hyphen and a gTLD does not adequately distinguish the domain name from a complainant’s mark under Policy ¶4(a)(i). See 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). The addition of the single letter “e” does not adequately distinguish the domain name from the mark pursuant to Policy ¶4(a)(i). See, e.g., Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and a hyphen does not affect the power of the mark in determining confusing similarity). A domain name that incorporates an abbreviation of a complainant’s mark is generally confusingly similar to the mark pursuant to the Policy (particularly in light of the number of domain names registered in this case). See, e.g., Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ connotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”). The term “ssci” is an abbreviation of Complainant’s SOCIAL SCIENCES CITATION INDEX mark. Respondent’s addition of the generic term “village” in forming the disputed domain name does not distinguish the domain from Complainant’s mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). The <essci-village.org> domain name is confusingly similar to Complainant’s SOCIAL SCIENCES CITATION INDEX mark pursuant to Policy ¶4(a)(i).
Complainant’s trademark claims are further bolstered by the fact Complainant previously prevailed regarding the THOMSON REUTERS mark and ISI WEB OF KNOWLEDGE mark when the ISI-ThomsonReuters.org domain name was originally registered by Respondent (“intach”), which was the subject of a prior UDRP proceeding. See Thomson Reuters Global Resources v. Russell Magee / intach, Claim Number: FA1204001438247 (May 18, 2012). This creates a res judicata effect because the parties are the same.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the disputed domain names because it is not commonly known by any of them. Complainant has not licensed or given Respondent permission to use Complainant’s trademarks in corresponding domain names. The WHOIS information for the disputed domain names lists various individual’s names as the registrant (although registrars do not uniformly allow registrants to use only an organization name without an individual’s actual name, which suggests to this Panel all of the registrations are the same), which are wholly unrelated to any of the disputed domain names. By way of example, the WHOIS information for the <issii-thomsonreuters.org> domain name lists “Richard Marsh” as registrant; WHOIS information the <issii.org> domain name lists “Steven Szybillo” as registrant; the WHOIS information for the <scie-thomsonreuters.org> domain name states that the registrant is “Michael Wilczynski”; the WHOIS information for the <ahci-thomsonreuters.org> lists “Gary Clarke” as the registrant; the WHOIS information for the <sci-thomsonreuters.org> domain name lists “James Saunders” is the registrant; the WHOIS information for the <ssci-thomsonreuters.org> domain name list “Paul Randolph” is the registrant; and “John Geisler” is listed in the WHOIS information as the registrant for the <essci-village.org> domain name. “Intach” (the organization) is not similar to the disputed domains name either. A respondent is not commonly known by a disputed domain name if there is no indication in the WHOIS information or anywhere else on the record to indicate that Respondent is commonly known by any of the disputed domain names. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Respondent has no rights or legitimate interests in the disputed domain names because it is not commonly known by any of them under Policy ¶4(c)(ii).
Complainant claims Respondent has no rights or legitimate interests in the disputed domain names because Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶4(c)(i) and (iii). Respondent uses the disputed domain names in a series of attempts to pass itself off as Complainant. The <issii-thomsonreuters.org> and <issii.org> domain names resolve to a website entitled “International Society and Science Information Institute.” The resolving website appears to feature a lengthy description and history of the “ISSII” business. The website resolving from the <ahci-thomsonreuters.org> domain name is entitled, “Arts and Humanities Citation Information (AHCI) 2013 Journal List.” Similarly, the <scie-thomsonreuters.org> domain name resolves to a website featuring the title, “Science Citation Information Expanded (SCIE) 2013 Journal List” and featuring a list of journals, their publisher names, and the ISSN numbers. The <sci-thomsonreuters.org> domain name resolves to a website titled “Science Citation Information (SCI) 2013 Journal List.” The website resolving from the <ssci-thomsonreuters.org> domain name features the heading “Social and Science Citation Information (SSCI) 2013 SSCI- Journal List.” The <issii-thomsonreuters.org>and <issii.org> domain names resolve to prior websites requesting a first and last name, a personal email, password, telephone number, fax number, and address, which suggests Respondent is phishing for Complainant’s customer’s personal information. Complainant provides screen shots of Complainant’s own website, featuring the title “Arts & Humanities Citation Index,” “Science Citation Index,” “Social Sciences Citation Index,” “Science Citation Index Expanded.” Respondent’s attempts to pass itself off as Complainant by imitating a complainant’s websites or business does not indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”) Respondent’s disputed domain names are used to resolve to websites that attempt to pass themselves off as Complainant’s legitimate websites, leading to the conclusion Respondent has no rights or legitimate interests in the disputed domain names because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has registered and is using the disputed domain names in bad faith because Respondent registered and is using multiple confusingly similar domain names featuring Complainant’s famous trademarks. Respondent has registered and is using seven confusingly similar domain names featuring portions of Complainant’s marks, although these registrations do not prevent Complainant from reflecting its marks in a domain name (which means Complainant has failed to make a case for bad faith under Policy ¶4(b)(ii)).
Complainant claims Respondent is acting in bad faith by attempting to pass itself off as Complainant’s business. Looking at the home pages connected with the disputed domain names make clear Respondent claims to be offering the same citation indexing and research services offered by Complainant. Respondent features links to pages featuring the titles, “SCI, SCIE, SSCI and AHCI” which are trademarks owned by Complainant. If an Internet user clicks on these links, the website redirects to websites associated with the other domain names at issue. Respondent claims it is the publisher of the Science Watch and Journal Citation Reports publications, which isn’t true. Complainant publishes those publications. Bad faith use and registration exists under Policy ¶4(b)(iv) when a respondent uses a confusingly similar domain name to attract Internet users to its website and purports to be complainant, thus confusing Internet users and presumably reaping a commercial gain from the resulting confusion. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Complainant claims R\respondent is running a “phishing” scam in bad faith. Complainant asserts that the websites resolving from the <issii-thomsonreuters.org> and <issii.org> domain names feature a “registration/login” page, requesting information from Internet users including first and last name, a personal email, password, telephone number, fax number, and address. Phishing schemes indicate bad faith use and registration under the penumbra of Policy ¶4(b). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
Complainant claims it is inconceivable Respondent could have registered the <issii-thomsonreuters.org>, <issii.org>, <scie-thomsonreuters.org>, <ahci-thomsonreuters.org>, <sci-thomsonreuters.org>, <ssci-thomsonreuters.org>, and <essci-village.org> domain names without actual knowledge of Complainant's rights in the marks in light of the fame and notoriety of Complainant's THOMSON REUTERS, ISI, SCI, SCIE, SSCI, and AHCI marks. In light of the use of the marks, this is true because Respondent appears to have specifically targeted Complainant’s marks. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <issii-thomsonreuters.org>, <issii.org>, <scie-thomsonreuters.org>, <ahci-thomsonreuters.org>, <sci-thomsonreuters.org>, <ssci-thomsonreuters.org>, and <essci-village.org> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, October 2, 2013
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