Decision for dispute CAC-UDRP-107576

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of a number of trademark registrations for “HACHETTE” (the “HACHETTE trademark”), including the following representative registrations:

− the French trademark HACHETTE with registration No. 1356085, registered on 25 April 1985 for goods and services in International Classes 9, 16, 28, 35 and 41;

− the European Union trademark HACHETTE with registration No. 003608551, registered on 30 June 2005 for goods and services in International Classes 9, 16, 28, 35, 38, 41 and 42; and

− the International trademark H HACHETTE with registration No. 1038697, registered on 11 December 2009 for goods and services in International Classes 9, 16, 28, 35, 38, 41 and 42, for a number of jurisdictions, including the United States, where the Respondent is located.

The Complainant is an international group, created in 1992, with operations in more than 45 countries worldwide. It employs more than 33 000 people and generated revenue of EUR 8942 million in 2024. The Complainant’s group includes Lagardère Publishing, operating mainly under the Hachette Livre imprint, which is a consumer publishing group in the Trade and Education markets. Hachette Book Group is a division of Lagardère Publishing, and is a leading general-interest book publisher in the United States. Yearly, it publishes more than 2100 adult books, 500 books for young readers, and 750 audiobook titles. In 2022, the company had 200 books on the New York Times bestseller list, 28 of which reached rank one.

The Complainant operates its official website at the domain name <hachette.com>, registered on 24 June 1997. The Complainant also owns the domain names <hachette-edition.com>, registered on 25 March 2010, and <hachettebookpublishing.com>, registered on 27 March 2023.

The disputed domain name was registered on 10 January 2024. It resolves to a website promoting publishing services under the name “Hachette Publications”.

COMPLAINANT:

The Complainant states that the disputed domain name is confusingly similar to the HACHETTE trademark, because it includes this trademark in its entirety, and the addition of the dictionary word “publications” is not sufficient to escape the confusing similarity with the trademark but worsens the likelihood of confusion, as this term directly refers to the Complainant’s own publishing activities and services offered under the HACHETTE trademark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not known under it, is not related to the Complainant, and does not carry out any activity for the Complainant. The Complainant adds that it has not authorized the Respondent to use the HACHETTE trademark or to apply for registration of the disputed domain name. The Complainant points out that the website at the disputed domain name provides no information about the Respondent and there is no publishing company named Hachette Publications in the business registry of companies or at the address indicated by the Respondent in the United States.

The Complainant submits that the disputed domain name resolves to a website promoting publishing activities under the name “Hachette Publications”. According to the Complainant, the Respondent thus exploits the goodwill of the Complainant’s HACHETTE trademark to offer services in direct competition with the Complainant’s publishing activities.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. It notes that the Respondent registered the disputed domain name many years after the Complainant had established a strong reputation and goodwill in its HACHETTE trademark, and submits that the denomination Hachette Publications can only refer to the Complainant’s subsidiary HACHETTE LIVRE, a publishing company named after its founder Louis Hachette in 1826. The Complainant concludes that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s HACHETTE trademark.

The Complainant points out that the disputed domain name resolves to a website promoting publishing activities under the name “Hachette Publications”, and contends that the Respondent uses it to attract Internet users searching for the Complainant to the website at the disputed domain name and to offer them competing publishing services by creating a likelihood of confusion with the Complainant’s HACHETTE trademark for commercial gain.

The Complainant adds that it sent a cease-and-desist letter to the Respondent on 10 April 2025, but did not receive any response.

RESPONDENT:

The Respondent did not submit a Response in this proceeding.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:

(i) the 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 domain name; and

(iii) the domain name was registered and is being used in bad faith.

In this case, the Provider has employed the required measures to achieve actual notice of the Complaint to the Respondent, and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.

Identical or confusingly similar

The Complainant has provided evidence and has thus established its rights in the HACHETTE trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The disputed domain name reproduces the HACHETTE trademark entirely with the addition of the dictionary word “publications”, which is descriptive of the Complainant’s services offered under this trademark and included in its scope. The HACHETTE trademark remains easily recognizable in the disputed domain name. As discussed in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional terms may however bear on the assessment of the second and third elements.

Taking the above into account, the Panel finds that the disputed domain name is confusingly similar to the HACHETTE trademark in which the Complainant has rights.

Rights and legitimate interests

While 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 often-impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because it has not been authorized to use the HACHETTE trademark and is not commonly known under the disputed domain name. According to the Complainant, the Respondent uses the disputed domain name for a website that promotes publishing services in competition with the Complainant. Thus, 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 submitted a Response and has not provided any legitimate reasons why it has registered the disputed domain name and how it intends to use it.

The disputed domain name combines the Complainant’s HACHETTE trademark with the term “publications” which the describes the core activities and products offered by the Complainant under the same trademark. It resolves to a website that promotes the same activities in competition with the Complainant. These circumstances lead the Panel to the conclusion that the Respondent has registered and uses the disputed domain name to exploit the goodwill of the Complainant’s HACHETTE trademark for commercial gain, which cannot give rise to rights or legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

Bad faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The registration of the distinctive HACHETTE trademark predates by many years the registration of the disputed domain name, which combines the same trademark with a term describing the Complainant’s publishing business. It is being used to offer the same services in competition with the Complainant. The Panel therefore considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s business and trademark rights and with the intention of taking advantage of their goodwill.

This satisfies the Panel that the disputed domain name has been registered and is being used in bad faith.