Macmillan Publishers International Limited v Asshar Rawoof Smart Startup; Solutions LLC and Salman Saad

WIPO Case No. D2023-4563

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Macmillan Publishers International Limited v. Asshar Rawoof Smart Startup
Solutions LLC and Salman Saad

Case No. D2023-4563

1. The Parties

The Complainant is Macmillan Publishers International Limited, United Kingdom, represented by Stobbs IP

Limited, United Kingdom.

The Respondents are Asshar Rawoof Smart Startup Solutions LLC and Salman Saad, Pakistan.

2. The Domain Name and Registrars

The disputed domain name <macmillanebookpublishers.com> is registered with NameCheap, Inc.

(“NameCheap”) and the disputed domain name <macmillanbookpublishers.org> is registered with GoDaddy,

Inc. (“GoDaddy” and together with NameCheap, the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2,

2023. On November 3, 2023, the Center transmitted by email to NameCheap a request for registrar
verification in connection with the disputed domain name <macmillanebookpublishers.com>. On November
3, 2023, NameCheap transmitted by email to the Center its verification response disclosing registrant and
contact information for this disputed domain name which differed from the named Respondent and contact
information in the Complaint. The Center sent an email communication to the Complainant on November 6,
2023, providing the registrant and contact information disclosed by NameCheap, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

November 7, 2023.

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 November 13, 2023. On November 22, 2023, the
Complainant sent an email to the Center requesting the addition of the disputed domain name
<macmillanbookpublishers.org> to the current proceeding.

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In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2023. The

Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on

December 11, 2023.

The Center appointed Evan D. Brown as the sole panelist in this matter on December 13, 2023. 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.

On December 18, 2023, upon request of the Panel, the Center transmitted by email to GoDaddy a request and contact information for this disputed domain name.

for registrar verification in connection with the disputed domain name <macmillanbookpublishers.org>.

On December 21, 2023, the Panel issued a Procedural Order wherein, among other things, the Complainant was invited to amend its Complaint to provide arguments by December 26, 2023, as to why the two disputed domain names should be consolidated. The Procedural Order also afforded the registrant of the disputed

domain name <macmillanbookpublishers.org> until December 31, 2023, to comment on the Complainant’s

submissions and/or file a Response as it may deem appropriate.

The Complainant amended the Complaint on December 22, 2023, as invited in the Procedural Order to
provide consolidation arguments and evidence. Neither Respondent submitted any communications to the

Center.

4. Factual Background

The Complainant is in the publishing business, providing various products and services under the word mark
MACMILLAN. The Complainant enjoys the benefits of registration of various forms of that mark in
jurisdictions around the world (e.g., United Kingdom Registration No. UK00001102865, registered on
October 12, 1978). According to the WhoIs information, the disputed domain name
<macmillanebookpublishers.com> was registered on September 19, 2023, and the disputed domain name

<macmillanbookpublishers.org> was registered on October 13, 2023. The Complainant submitted evidence

that the disputed domain names have been used to publish websites bearing the Complainant’s

MACMILLAN mark and purporting to offer book publishing related goods and services, including ghostwriting, consultation, and self-publishing services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the

Complainant’s trademark; that the Respondents have no rights or legitimate interests in respect of the

disputed domain names; and that the disputed domain names were registered and are being used in bad

faith.

B. Respondent

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

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6. Discussion and Findings

A. Consolidation

There are two named Respondents (two underlying registrants disclosed by the Registrars) – one for each of

the disputed domain names. The Complainant requests that both disputed domain names be consolidated

into this matter. Consolidation is proper, so the Complainant’s request for consolidation is granted.

Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Paragraph 10(c) of the Rules

provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with

due expedition”. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions,

Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation

of multiple respondents and provides that where a complaint is filed against multiple respondents, panels
consider whether the domain names or corresponding websites are subject to common control, and whether
the consolidation would be fair and equitable to all parties.

The record indicates the disputed domain names are under common control. The following facts support this conclusion: (1) both of the disputed domain names contain the MACMILLAN mark together with the word

“publishers”, (2) the websites set up at the two disputed domain names are very similar, (3) the two disputed

domain names were registered relatively close in time (September and October 2023), and (4) the contact

information for the Respondents contains the same city and country.

The Respondents have not presented any arguments as to why consolidation would be unfair or inequitable. here.

B. Identical or Confusingly Similar

This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain names are identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview 3.0, section 1.7.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde
Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the
MACMILLAN mark by providing evidence of its trademark registrations.

The disputed domain names incorporate the MACMILLAN mark in its entirety. This is sufficient for showing confusing similarity under the Policy.

Accordingly, the Panel finds that the Complainant has established this first element under the Policy.

C. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondents lack rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondents (with the burden of proof always remaining with the Complainant).

On this point, the Complainant asserts, among other things, that: (1) the Complainant has not granted the relationship between the Complainant and the Respondents, (3) use of the disputed domain names to

resolve to publishing websites using Complainant’s trademark does not confer rights or legitimate interests,

and (4) the Respondents have not been commonly known by the disputed domain names.

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Instead, the Respondents have used the disputed domain names to establish websites that display the

Complainant's mark and allegedly offer goods similar to those provided by the Complainant, reinforcing the

impersonating nature of the disputed domain names’ composition.

The Panel finds that the Complainant has made the required prima facie showing. The Respondents have not presented evidence to overcome this prima facie showing and nothing in the record otherwise tilts the

balance in the Respondents’ favor. Panels have held that the use of a domain name for illegal activity, here

claimed impersonation/passing off for Respondent’s financial gain, can never confer rights or legitimate

interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

D. 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. For example, under paragraph

4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally

attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by

creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or

endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or

location”.

In the present case, the Panel notes that the Respondents have used the disputed domain names to set up

websites that bear the Complainant’s mark and otherwise seek to imitate the Complainant. The Panel finds

that this is a clear example of bad faith registration and use. The Respondent has provided no argument or
evidence as to any proper basis for having registered and used the disputed domain name.

Accordingly, based on the available record, the Panel finds the third element of the Policy has been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the disputed domain names <macmillanebookpublishers.com> and

<macmillanbookpublishers.org> be transferred to the Complainant.

/Evan D. Brown/

Evan D. Brown

Sole Panelist
Date: January 5, 2024