Macmillan Publishers International Limited v House John

WIPO Case No. D2025-1402

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Macmillan Publishers International Limited v. House John

Case No. D2025-1402

1. The Parties

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

NORDEMANN, Germany.

The Respondent is House John, United States of America.

2. The Domain Name and Registrar

The disputed domain name <macmillanbookpublishingllc.com> is registered with NameCheap, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2025. On differed from the named Respondent (unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 8, 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 amendment to the Complaint on April 8, 2025.

April 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 7, 2025, the Registrar transmitted by email to the
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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2025.

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The Center appointed Alexandre Nappey as the sole panelist in this matter on May 8, 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 book publishing company with prominent imprints around the world. It publishes a broad range of award-winning books for children and adults in all categories and formats.

The Complainant is a part of Holtzbrinck Publishing Group, a large family-owned media company headquartered in Stuttgart, Germany.

The Complainant offers products online, inter alia on the website “us.macmillan.com”.

The Complainant also owns, inter alia, the domain names <macmillanlearning.com> and
<panmacmillan.com>, and a large number of other domain names incorporating the word MACMILLAN
which direct to the websites of the Complainant.

The Complainant is the owner of numerous “MACMILLAN” trademarks registered in many countries, among which:

- European Union trademark “MACMILLAN” No. 000066225 filed on April 1st, 1996, and registered on March 18, 1998, in classes 9, 16 and 41, duly renewed,

- Mexican trademark “ MACMILLAN ” 1133104 filed on November 19, 2009 and registered on

November 30, 20029 in class 41, duly renewed.

The disputed domain name <macmillanbookpublishingllc.com> was registered on January 22, 2025.

It points to an English-language website reproducing the trademark MACMILLAN and offering writing and book publishing services.

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 disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its earlier trademark MACMILLAN, to the point of creating confusion.

Indeed, the disputed domain name <macmillanbookpublishingllc.com> incorporates the Complainant’s trademark with the addition of the descriptive indication “book publishing llc”.

According to the Complainant, the additional elements “book publishing” suggest that the Respondent’s website is operated as an online shop for publishing and writing services, and it creates the false impression that the website is associated with, or approved by, the Complainant.

Then, the Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain name.

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The Respondent has no trademark rights for the term Macmillan used in the disputed domain name.
The Respondent is not affiliated with the Complainant in any way.

The Respondent has not been authorized by the Complainant to register or use the disputed domain name or to seek the registration of any domain name incorporating the Complainant’s Trademarks.

The Respondent is not commonly known by the disputed domain name, whereas the Complainant has prior rights in the trademarks, which preceded the Respondent’s registration of the disputed domain name by years.

Third, the Complainant claims that the disputed domain name was registered and is being used in bad faith.

According to the Complainant, the disputed domain name, which was registered in 2025, and the website
operated under it is a pure imitation of the Complainant’s website and business, as the identified combination
of Complainant’s Trademarks, trade name and general brand image on this website cannot be a
coincidence. It is evident that the disputed domain name was registered in bad faith as the Trademarks have
been registered and widely used and are well-known for years, and the disputed domain name was
registered with the sole purpose of fraudulently getting consumers into thinking that they are visiting an
official website of the Complainant in order to obtain unfair advantage from the Trademarks’ reputation and

the image of expertise.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the default of the Respondent, the Complainant has the burden of proof to make its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

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

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

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the
Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having considered the Parties’ submissions the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following:

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 disputed 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.

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

Despite the addition of other words, here, “book”, “publishing” and “llc” (which is the abbreviation in English of Limited Liability Company”) “may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed 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 disputed 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 disputed domain name such as those enumerated in the Policy or otherwise.

The Panel considers that the record of this case reflects that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4.

Panels have held that the use of a domain name for illegitimate activity, here, claimed impersonation/passing off can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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.

In the present case, the Panel notes that the Complainant has shown that MACMILLAN trademarks have been registered and used for years.

Thus, taking into consideration the Complainant’s goodwill in MACMILLAN trademarks, and in the absence
of arguments or evidence to the contrary, the Panel finds that the circumstances of this case indicate that, on
the balance of probabilities, the Respondent knew or should have known about the Complainant and likely
registered the disputed domain name to target the Complainant’s mark.

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The fact that the Respondent used the disputed domain name to operate a website incorporating the supports the Panel’s finding on bad faith.

Panels have held that the use of a domain name for illegitimate activity, here impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel considers that the record of this case reflects that the Respondent is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its websites 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 Respondent’s website or location or of a product or service on the Respondent’s website

or location. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4.

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 disputed domain name <macmillanbookpublishingllc.com> be transferred to the Complainant.

/Alexandre Nappey/
Alexandre Nappey
Sole Panelist
Date: May 22, 2025