Camelot UK Bidco Limited, Clarivate Plc, MarkMonitor Inc. v Hulmiho

WIPO Case No. D2022-3449

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Camelot UK Bidco Limited, Clarivate Plc, MarkMonitor Inc. v. Hulmiho
Ukolen, Poste restante

Case No. D2022-3449

1. The Parties

The Complainant is Camelot UK Bidco Limited, United Kingdom; Clarivate Plc, United Kingdom;

MarkMonitor Inc., United Kingdom, represented by Clarivate Plc., United Kingdom.

The Respondent is Hulmiho Ukolen, Poste restante, Finland.

2. The Domain Name and Registrar

The disputed domain name <markmontior.zone> is registered with Gransy, s.r.o. d/b/a subreg.cz (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2022. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (NEROSO Inst., s.r.o.) and contact information in the Complaint.

The Center sent an email communication to the Complainant on September 23, 2022 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 amendment to the Complaint on September 27, 2022.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 28, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2022.

The Center appointed Knud Wallberg as the sole panelist in this matter on October 26, 2022. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainants in this administrative proceeding are Camelot UK Bidco Limited, Clarivate PLC, and and domain expertise and they will collectively be referred to herein as “the Complainant”.

The Complainant owns numerous registrations for its MARKMONITOR mark worldwide including International registration No. 1496539 registered on October 8, 2019 for services in international classes 42 and 45. The Complainant also owns domain names that incorporate its MARK MONITOR trademark including <markmonitor.com>.

The disputed domain name was registered on August 8, 2022. At the time of filing of this Complaint the disputed domain name pointed to a parking page that contained sponsored pay-per-click (“PPC”) links to third-party websites who appear to provide identical services to those offered by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions may be summarized as follows:

The Complainant contends that the disputed domain name <markmontior.zone> is confusingly similar to the Complainant’s MARKMONITOR trademarks, since it contains the mark in its entirety, simply transposing the letters “i” and “t” in the middle and adding the generic Top-Level Domain (“gTLD”) “.zone” neither of which

prevent said confusing similarity.

The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant, nor has the Complainant extended any license or authorization to the Respondent for the use of the MARKMONITOR trademark in a

domain name. The Complainant also contends that since the disputed domain name is so similar to the
Complainant’s well-known mark MARKMONITOR, the Respondent cannot reasonably contend that it was
intending to develop a legitimate activity through the disputed domain name, and that the Respondent has
not demonstrated use of or made demonstrable preparations to use the disputed domain name in connection
with a bona fide offering of goods or services. Rather on the contrary since the disputed domain name
points to a parking page that contains sponsored links related to the provision of identical services to those
offered by the Complainant.

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The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. Considering the worldwide reputation of the Complainant and its well-known MARKMONITOR trademark, it is implausible that the Respondent was unaware of the existence of the Complainant and its trademark at the time of registration of the disputed domain name. Furthermore, the Registrant uses the disputed domain name to intentionally attract, for commercial gain, Internet users to a PPC website. The Respondent is thus using the disputed domain name in a manner that can confuse and mislead Internet users by trying to gain profit of typographical errors made by Internet users, when inputting the expression “markmontior” instead of “markmonitor” into a web browser. In the amended Complaint, the Complainant furthermore states that the identified Respondent is a cybersquatter that has already been in the position of the respondent in 59 previous UDRP cases.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the

Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii)       that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii)      that the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <markmontior.zone> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark MARKMONITOR because it is almost identical to this mark the only difference being that the letters “i” and “t” are switched around. The generic Top-Level

Domain (“gTLD”) “.zone is a standard registration requirement and as such is disregarded under the first
element confusing similarity test. See Section 1.11.1 of the WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.

B. Rights or Legitimate Interests

It follows from the information that is included in the Complaint, that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark in any way.

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Further, given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this, and the way the Respondent has been and is using the disputed domain name (see below in Section 6.C) does not support a finding of rights or legitimate interests.

Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for

the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant
who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable
consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name;
or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service

mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a
pattern of such conduct; or

(iii)      the holder has registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv)      by using the domain name, the holder has intentionally attempted to attract, for commercial gain,

Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.

In view of the Complainant´s widely used and distinctive trademark MARKMONITOR it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant´s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name it chose could attract Internet users in a manner that is likely to create confusion for such users.

The Panel thus finds that the disputed domain name was registered in bad faith.

The Respondent is using the disputed domain name actively for a PPC page that contains links to websites of third parties some of which appear to offer goods and services of competitors of the Complainant. It is thus obvious to the Panel that the Respondent uses the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. See section 3.5 of the WIPO Overview 3.0.

Noting that no response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, that the named Respondent has been the Respondent in a number of previous UDRP cases and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <markmontior.zone> be transferred to the Complainant.

/Knud Wallberg/
Knud Wallberg
Sole Panelist
Date: November 9, 2022