Decision for dispute CAC-UDRP-107654

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 owns the following trademark registrations:

French trademark HACHETTE n°1356085 registered since April 25, 1985;

European trademark HACHETTE n°003608551 registered since June 30, 2005;

International trademark HACHETTE n°948251 registered since November 6, 2007;

International trademark H HACHETTE n°1038697 registered since December 11, 2009; and

United States trademark H HACHETTE n° 4058068 registered since November 22, 2011.

The Complaint is an international group with operations in 45 countries worldwide. It employs more than 33,000 people and generated revenue of €8,942 million in 2024. The Group is structured around two main business lines: Lagardère Publishing and Lagardère Travel Retail. Lagardère Publishing, operating mainly under the Hachette Livre imprint, is the world’s third largest consumer publishing group in the Trade and Education markets. Hachette Book Group is a leading U.S. general-interest book publisher and a division of Lagardere Publishing. Yearly, Hachette Book Group publishes over 2,100 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 the number one rank. The Complainant owns many registrations for the HACHETTE trademark as well as a number of related domain names including <hachettebookpublishing.com>. The disputed domain name <hachettepublishers.com> was registered on December 24, 2024.

COMPLAINANT

The Complainant states that the disputed domain name is confusingly similar to the Complainant’s trademark as it includes the trademark in its entirety and adds only the term “publishers” as well as the “.com” TLD.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name as it is not commonly known by the domain name and it resolved the domain name to a website that promoted publishing activities under the name “Hachette Publishers”, effectively competing with the Complainant. After the Complainant sent a cease-and-desist letter to the Respondent, the website has been taken down and is no longer accessible.

The Complainant contends that the disputed domain name was registered and used in bad faith based on the above-mentioned activity by the Respondent.

RESPONDENT

No administratively compliant Response has been filed.

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.

1. Confusing Similarity

The Complainant has established its rights to the HACHETTE trademark through its submission into evidence of various trademark registration certificates, the earliest of which is dated 25 April, 1985.

The disputed domain name combines the Complainant’s trademark with the word “publishers” and the “.com“ gTLD. These additions to the term “HACHETTE” do not dispel the confusing similarity between the disputed domain name and the Complainant’s trademark. Avast Software s.r.o. v. Milen Radumilo, 102384 (CAC April 19, 2019) (“it is well accepted that where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive terms would not prevent a finding of confusing similarity.”). Further, the Complainant’s assertion that use of this word “worsens the likelihood of confusion, as the term “PUBLISHERS” directly refers to the Complainant’s own publishing activities and the service offered under the trademark” is well taken. Union des Associations Europeenes de Football (UEFA) v. Nemykin Dmitriy Aleksandrovich, UDRP-107283 (CAC March 3, 2025) (“The descriptive term “tickets” does not eliminate confusing similarity. Moreover, given the Complainants’ business activities, it actually increases confusion” as used in the domain name uefa-tickets.com).

Also, the extension “.com” typically adds no meaning or distinctiveness to a disputed domain name and may most often be disregarded in the Paragraph 4(a)(i) analysis. Novartis AG v. Wei Zhang, 103365 (CAC December 9, 2020) (“it is generally accepted that the addition of the top-level suffix in the domain name (e.g., ‘.com’) is to be disregarded under the confusing similarity test”).

Accordingly, the Panel finds that the Complainant has rights to its claimed trademark and that the addition of a descriptive word thereto in the disputed domain name is insufficient to avoid a finding that it is confusingly similar to the Complainant’s trademark. Thus, the Complainant has satisfied Paragraph 4(a)(i) of the Policy.

2. Rights Or Legitimate Interests

 Pursuant to Paragraph 4(a)(ii) of the Policy, the complainant has the burden of making a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. Cephalon, Inc. v. RiskIQ, Inc., 100834 (CAC September 12, 2014). Once this burden is met, it then shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy offers the respondent several examples of how to demonstrate its rights or legitimate interests in the disputed domain name.

With reference to Paragraph 4(c)(ii) of the Policy the Complainant states that “[n]either license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark HACHETTE or apply for registration of the disputed domain name by the Complainant.”. The Respondent has not participated in this case and so it does not contest this. As such, the Panel concludes that the Respondent is not affiliated with the Complainant, nor is it authorized or licensed to use the Complainant’s trademark or to seek registration of any domain name incorporating the asserted trademark. Furthermore, the Registrar for the disputed domain name identifies the Respondent as “Digicore Solution”. There is no evidence that the Respondent is known otherwise and its use of the Complainant’s trademark on its website does not, alone, support a different conclusion. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO October 16, 2000) (“use which intentionally trades on the fame of another” should not be considered. “To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”)  Based upon the available evidence in this case, the Panel cannot conclude that the Respondent is commonly known by the disputed domain name.

Next, under Paragraphs 4(c)(i) and 4(c)(iii) of the Policy the Panel considers whether the Respondent is using the disputed domain name to make a bona fide offering of goods or services or whether it is making a legitimate non-commercial or fair use of the disputed domain name. Prior to the Complainant sending a cease-and-desist letter to the Respondent, the disputed domain name resolved to a website that claimed to offer book publishing services under the name HACHETTE PUBLISHERS. Using a confusingly similar domain name to impersonate and pass oneself off as a complainant is not a bona fide offering of goods or services or a legitimate non-commercial or fair use per Paragraphs 4(c)(i) or (iii) of the Policy. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (FORUM July 9, 2018) (no right or legitimate interest found where “the Domain Name, deliberately and inherently impersonates the Complainant and its trade marks.”). Here, the Complainant asserts that “[b]y profiting of the notoriety of the Complainant’s trademark in the disputed domain name, the Respondent uses the disputed domain name to offer services in direct competition with the Complainant’s publishing activities. Using a confusingly similar domain name that resolves to a competing webpage is not a bona fide offering of goods or services”. The Complainant provides screenshots of the Respondent’s resolving website and the Panel notes that it displays the name HACHETTE PUBLISHERS at the top followed by the text “Fuel Your Author Dreams - Up to 70% OFF on eBook Writing & Marketing Packages From Blank Page to Bestseller Amazon Kindle Book Publishing – Simplified, Streamlined, Successful” and a form with fields for the user to input their name, email, and phone number. The page makes additional use of the HACHETTE PUBLISHERS name and displays the covers of a number of books, the phrase “Crack the Bestseller List with Our Book Writing and Publishing Service, and the logos of a number of media organizations such as the BBC, the Los Angeles Times, The New York Times, NBC, and Forbes. Finally, the footer of the page displays a notice “© 2024 Copyright Hachette Publishers” and a postal address in Wylie, Texas, U.S.A., despite the Respondent being located in Karachi, Pakistan. The Complainant’s assertion that this use of its trademark is for the purpose of impersonation and competition appears well-founded and the Respondent has not filed a Response or made any other submission in this case to offer an alternative explanation for its actions. As the Complainant has made out a prima facie case that has not been rebutted by the Respondent, upon a preponderance of the evidence before it the Panel finds that the Respondent fails to make a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name under Paragraphs 4(c)(i) or (iii) of the Policy.

3. The disputed domain name was registered and used in bad faith

The Complainant must prove, by a preponderance of the evidence, that the disputed domain name has been registered and used in bad faith under paragraph 4(a)(iii) of the Policy. Hallmark Licensing, LLC v. EWebMall, Inc., D2015-2202 (WIPO, February 12, 2016) (“The standard of proof under the Policy is often expressed as the ‘balance of the probabilities’ or ‘preponderance of the evidence’ standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true.”).

The Complainant first asserts that the Respondent was aware of and targeted the HACHETTE trademark at the time it registered the disputed domain name. Actual knowledge of a complainant’s trademark may form the foundation upon which to build a case for bad faith under Policy paragraph 4(a)(iii). See, Intesa Sanpaolo S.p.A. v. Ciro Lota, UDRP-106302 (CAC April 4, 2024) (“Given the distinctiveness and reputation of the Complainant's prior marks, it is inconceivable that the Respondent could have registered the disputed domain name for a mere chance without actual knowledge of the Complainant's rights in such well-known marks and the intention to exploit such reputation by diverting traffic away from the Complainant’s website.”). The Complainant asserts that it “had established a strong reputation and goodwill in its mark” and it supports this with evidence that it is one of the world’s largest book publishers with revenue of EUR 8.942 Billion in 2024, a network of over 33,000 employees, 4,900 points of sale, and operations in 45 countries. Its books and authors have won accolades that include the Pulitzer Prize, Nobel Peace Prize, James Beard Award, and other major honors. Further, the fact that the Complainant’s trademark is rather unique to the publishing industry provides further evidence that the Respondent was aware of and targeted the Complainant. As such, the Panel concludes that it is more likely than not that the disputed domain name was registered with actual knowledge of the Complainant’s trademark rights.

Next, the Complainant argues that the Respondent registered and used the disputed domain name in bad faith and seeks to pass itself off as and compete with the Complainant. Using a confusingly similar disputed domain name to pass oneself off as a complainant can demonstrate bad faith under Paragraphs 4(b)(iii) and (iv) of the Policy. See Harley-Davidson Motor Company Inc. v. Liu Peng et al., UDRP-106275 (CAC March 27, 2024) (“use of a disputed domain name to pass off as a complainant and offer competing or counterfeited goods may be evidence of bad faith per Policy paragraph 4(b)(iii) and (iv).”). As noted above, the Complainant provides screenshots of the Respondent’s website and the Panel notes that it makes generous use of the name HACHETTE PUBLISHERS, offers book writing and publishing services, and suspiciously displays the logos of a number of very well-known media companies that issue bestseller book lists. The Respondent has not participated in this case to explain its actions and so, based upon a preponderance of the available evidence, the Panel finds it highly likely that the Respondent registered and used the disputed domain name in bad faith by competing with the Complainant and seeking commercial gain through impersonation of the Complainant and confusion with its trademark, under Paragraphs 4(b)(iii) and (iv).