Bloomsbury Publishing Plc v Nelson

WIPO Case No. D2025-0851

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bloomsbury Publishing Plc v. Nelson

Case No. D2025-0851

1. The Parties

The Complainant is Bloomsbury Publishing Plc, United Kingdom, represented by Kilburn & Strode LLP,

United Kingdom.

The Respondent is Nelson, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <bloomsbury-publishers.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2025. On March 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 4, 2025, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Domain Admin, Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 4, 2025, 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 March 8, 2025.

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 March 10, 2025. In accordance with the Rules, paragraph
5, the due date for Response was March 30, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 31, 2025.

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The Center appointed Nicholas Smith as the sole panelist in this matter on April 3, 2025. 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 is a global publishing house established in 1986 which has published numerous well- known and top selling books, including the Harry Potter series of books. The Complainant has offices in numerous jurisdictions and maintains an online retail business through its website at “

The Complainant holds trademark registrations for BLOOMSBURY (the “BLOOMSBURY Mark”) in various
jurisdictions, including in the United States of America (registration number 5,343,771, registered on

November 28, 2017, for services in class 41 including publishing services).

The Domain Name was registered on September 11, 2024, and does not resolve to an active website.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.

Notably, the Complainant contends that:

a) It is the owner of the BLOOMSBURY Mark, having registered the BLOOMSBURY Mark in various jurisdictions including the United Kingdom, European Union, and United States of America. The Domain Name is confusingly similar to the BLOOMSBURY Mark as it reproduces the BLOOMSBURY Mark in its entirety and adds the descriptive term “-publishers” and a generic Top-Level Domain (“gTLD”).

b) There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the BLOOMSBURY Mark. The Respondent is not commonly known by the BLOOMSBURY Mark, nor does it use the Domain Name for a bona fide offering or legitimate noncommercial or fair use. The Domain Name does not resolve to an active webpage.

c) The Domain Name was registered and is being used in bad faith. There is no plausible circumstance under which the Respondent could legitimately use the Domain Name, which consists of the BLOOMSBURY Mark and a descriptive term, other than in bad faith. Moreover, the Complainant has been a party in other cybersquatting disputes involving strikingly similar domain names, which the Respondent may be connected to. Given the reputation of the BLOOMSBURY Mark and the Respondent’s failure to provide an explanation for its use, the Respondent must have been aware of the Complainant’s mark at the time of registration. In such circumstances, the Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith.

B. Respondent

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

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6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “-publishers” may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise.

The Panel considers that the record of this case reflects that:

- before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and

WIPO Overview 3.0, section 2.2;
- the Respondent (as an individual, business, or other organization) has not been commonly known by the Domain Name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3.
- the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4.

- the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the Domain Name.

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Noting the composition of the Domain Name, adding the term “-publishers” directly descriptive of the
Complainant’s business to the Complainant’s mark, the Panel finds it more likely than not that the
Respondent selected the Domain Name with the intention to take unfair advantage of the likelihood of
confusion between the Domain Name and the Complainant as to the origin or affiliation of the website at the

Domain Name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Panel finds, on the balance of probabilities, that given the nature of the Domain Name consisting of the Complainant’s well-known BLOOMSBURY Mark and a descriptive term that precisely describes the services offered under the Complainant’s mark, and the absence of any explanation for registration of a domain name corresponding with the BLOOMSBURY Mark, it is most likely that the Respondent was aware of the

Complainant and its trademark when registering the Domain Name.

Further, the Panel considers that the record of this case reflects that there is no evidence of any use or demonstrable preparations to use the Domain Name.

UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While UDRP panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the disputed domain name may be put. WIPO Overview 3.0, section 3.3.

Having reviewed the record, the Panel notes the reputation of the Complainant’s mark, the composition of the Domain Name, and the Respondent’s failure to file a response in the current proceedings, and finds that in the circumstances of this case the passive holding of the Domain Name does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element 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 Domain Name <bloomsbury-publishers.com> be transferred to the Complainant.

/Nicholas Smith/
Nicholas Smith
Sole Panelist
Date: April 7, 2025