Pearson Education Limited / Pearson PLC v. Wang Yi / Shenzhen IKK Co. Ltd.
Claim Number: FA2002001882995
Complainant is Pearson Education Limited / Pearson PLC (“Complainant”), represented by Patrick J. Gallagher of Barnes & Thornburg LLP, Minneapolis, USA. Respondent is Wang Yi / Shenzhen IKK Co. Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pte-ai.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2020; the Forum received payment on February 12, 2020. The Complaint was submitted in both Chinese and English.
On February 13, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <pte-ai.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pte-ai.com. Also on February 18, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Pearson Education Limited, is a multinational publishing and education company specializing in preparing its customers to take English language proficiency tests, the successful completion of which is used to prove such customer’s English ability for university and college admissions or as part of a visa application. Complainant has rights in the trademark PTE based upon its use in commerce since 2008 and registration of the mark with the United States Patent and Trademark Office (“USPTO”), the China Trademark and Patent Office (“CTPO”), and the national trademark offices of various other countries dating back to 2009. Complainant also owns rights in the trademark PEARSON TEST OF ENGLISH. Respondent’s <pte-ai.com> domain name, registered on January 10, 2018, is identical to Complainant’s PTE mark because it incorporates the mark in its entirety, simply adding a hyphen, the generic or descriptive term “AI” (for “artificial intelligence”), and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <pte-ai.com> domain name. Respondent is not licensed or authorized to use Complainant’s PTE mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to falsely pass itself off as an authorized reseller of Complainant’s products and services in order to divert users to Respondent’s own website where it, in fact, offers competing goods and services.
Respondent registered and uses the <pte-ai.com> domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Further, Respondent had actual knowledge of Complainant’s rights in the PTE mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Matter - Multiple Complainants
In the instant proceedings, there are two named Complainants. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two named Complainants in this matter are Pearson Education Limited and Pearson plc. Complainant claims that Pearson Education Limited is “a wholly-owned subsidiary of Pearson plc”.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
See also Procter & Gamble Business Services Canada Company, The Gillette Company LLC, Braun GmbH and The Procter & Gamble company v. Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Artem Shostak, Private person 66478, Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Artem Shostak, Private person 53397, Privacy Protection, HOSTING UKRAINE LTD / Коваленко Валерий/Konovalenko Valeriy, Privacy Protection, HOSTING UKRAINE LLC / Коваленко Валерий/Konovalenko Valeriy, D2017-1493 (WIPO Oct. 6, 2017) (consolidation of multiple complainants found to be equitable and procedurally efficient where “[t]he Complainant Procter & Gamble is a parent company of the First Three Complainants. Therefore, the evidence shows that the Complainants have a common grievance against the Respondents by virtue of having common legal interest.”).
In the present case, the Complaint has noted the relationship between the two named Complainants. Respondent has provided no response or other submission in this case and so it has not contested this relationship. Further, each of the Complainants are named as owner of certain trademark registrations for the trademark PTE which is highly relevant to this case. Under the circumstances this Panel holds that the there is a link between the two named Complainants and that they have a specific common grievance against the Respondent who has engaged in a common action that has affected the Complainants’ in a similar fashion.
For the sake of simplicity, Pearson Education Limited and Pearson plc will hereafter be referred to in this decision as “Complainant” unless otherwise noted.
The Panel notes Complainant’s request that English be the language of this administrative proceeding pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement for the disputed domain name. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Evidence exhibiting Respondent’s understanding of the English language should be considered and the parties must not be unduly prejudiced by the use of a language other than that appearing in the registration agreement of the disputed domain name. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) In support of its request Complainant points to the fact that the <pte-ai.com> domain name uses characters and acronyms which are based in the English language, that portions of the website that resolves from the disputed domain name appear in English, and the somewhat unique circumstance that “Respondent, by virtue of the [English language instruction and testing] services offered on its website, is effectively holding itself out as an expert on the English language.” Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to indicate the high probability that the Respondent is proficient in the English language. Further, Respondent has not filed a response or made any other submission to contest Complainant’s language request. After considering the circumstance of the present case, the Panel decides that the proceedings should be in English.
Complainant claims to have rights in the PTE mark based upon its registration thereof with the USPTO, the CTPO, and other national trademark offices. Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides images of some of its trademark registrations and screenshots from the websites of certain national trademark offices but these are a bit confusing. Some list the trademark owner as Pearson Education Limited and one lists Pearson PLC but many others list a UK company called Edexcel Limited. The only mention of Edexcel in the Complaint is a statement that this entity awards certificates of completion for Complainants’ English language proficiency tests and is “accredited by Ofqual in the United Kingdom”. As Edexcel is not a party to this dispute and as there is no mention of how it is legally related to the Complainant entities, those trademarks which list it as the owner will be disregarded by this Panel. Nevertheless, as the named Complainants have demonstrated their rights to the PTE mark, the Panel finds that they have rights in such mark under Policy ¶ 4(a)(i). Finally, Complainant mentions its ownership of the mark PEARSON TEST OF ENGLISH however the relevance of this fact to the present case seems somewhat limited other than as an explanation of the meaning of the PTE acronym mark.
Next, Complainant argues that Respondent’s <pte-ai.com> domain name is identical to Complainant’s mark because it incorporates Complainant’s PTE mark in its entirety, simply adding a hyphen, a generic/descriptive term, and a gTLD to form the disputed domain name. Addition of a generic and/or descriptive terms and a gTLD to a mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) Here, Complainant argues that Respondent merely adds the generic or descriptive term “AI” (referring to “artificial intelligence”), a hyphen, and the “.com” gTLD to Complainant’s PTE mark. As these additions do little to reduce the similarity between the disputed domain name and Complainant’s mark in appearance, sound, or meaning, the Panel finds that the disputed domain name is confusingly similar to Complainant’s PTE mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant asserts that Respondent does not have rights or legitimate interests in the <pte-ai.com> domain name because Respondent is not licensed or authorized to use Complainant’s PTE mark and is not commonly known by the disputed domain name. In considering this issue WHOIS information can be used to show that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”) Additionally, lack of authorization to use a mark constitutes a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record for the <pte-ai.com> domain name notes “Wang Yi / Shenzhen IKK Co. LTD” as the registrant and no information suggests that Complainant has authorized Respondent to use the PTE mark in any way. Further, a section of Respondent’s website titled “Brief Introduction” identifies the supplier of the promoted services as “Shenzhen Keke Intelligent Technology Co. Ltd.” and the footer of Respondent’s website displays a Copyright notice that states “ikk.All Rights Reserved.” Upon a preponderance of the evidence in this case, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant asserts that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <pte-ai.com> domain name to pass itself off as an authorized reseller in order to offer for sale English language proficiency test preparation materials which, in fact, compete with Complainant. Use of a disputed domain name to pass oneself off as a complainant in order to sell goods or services that compete with the complainant is not a bona fide offering of goods or services, or for any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) Complainant provides screenshots of the website that resolves from the disputed domain name and this site offers test preparation materials that appear to be very similar to those of Complainant. It also makes liberal use of the PTE mark in the promotion of these products and services. Complainant asserts that “Respondent is holding itself out as an apparent ‘authorized reseller’ of PTE® test vouchers for mainland China” and that this constitutes passing off. Further, Respondent’s actions fail the test for fair distributorship as set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) as Respondent “is using the disputed domain name to sell its own products and services, not the Complainant’s trademarked goods or services” and Respondent “does not accurately disclose its relationship with Complainants”. The Panel agrees with these assertions and Respondent has not participated in this case to refute them. Therefore, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant claims that Respondent has both constructive and actual knowledge of Complainant’s rights in the PTE mark. The Panel finds that any arguments of bad faith based on constructive notice are not applicable, however, because UDRP case precedent most often declines to find bad faith as a result of constructive knowledge – especially where, as here, there is no evidence that the Respondent is subject to the laws of a jurisdiction that adopts such principle. See UBS AG v. Randy Allotey, FA1810001812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge."). However, actual knowledge of a complainant’s mark has been found to support a claim of bad faith – particularly where the affected mark is well-known or where a respondent uses a confusingly similar domain name in competition with a complainant. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainants “respectfully submit that the PTE® Marks are well-known * * * based on the evidence discussed herein”. However, the Panel has not been supplied with any annexes or other evidence beyond Complainant’s own statements that it has used its PTE mark since 2008, it owns registrations of the mark in many countries (though some are owned by the unexplained Edexcel Limited entity), it operates offices in many different countries, and that the PTE certification is “accepted by thousands of academic programs, including prestigious institutions such as Harvard Business School, Yale and INSEAD.” As Complainant notes, these factual claims have been “discussed” in the Complaint but most have not been supported with any evidence.[i] In view of the limited evidence presented by Complainant, the Panel is unable to determine whether the PTE mark is well-known.
However, Complainant notes that Respondent’s website uses the PTE mark in connection with offering educational products and services purportedly intended to help consumers prepare for English language proficiency tests. Complainant provides screenshots from the <pte-ai.com> website showing extensive references to the PTE mark and English language proficiency courses including prominent use of the mark in the website’s header. Thus, based upon the evidence presented, it is clear to the Panel that Respondent had actual knowledge of the PTE mark at the time it registered the disputed domain name and used it to create its resolving website.
Next, Complainant argues that Respondent registered and uses the <pte-ai.com> domain name in bad faith since Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Use of a disputed domain name to offer competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”) As noted, Complainant provides screenshots of Respondent’s website showing that it is promoting its English language proficiency exam study services to potential customers in a manner that is in direct competition with Complainant. Upon the preponderance of the evidence presented and in the absence of any response or other submission by Respondent, the Panel finds that the <pte-ai.com> domain name was registered and is used in bad faith under Policy ¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pte-ai.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 17, 2020
[i] In an interesting contrast, Complainant argues that any claim of rights or legitimate interests by Respondent must be supported by “Concrete evidence” which “requires more than personal assertions; it requires documents or third-party declarations in support of such assertions” citing Kate Spade, LLC v. Darmstadter Designs, D2001-1384 (WIPO Jan. 3, 2002)
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