Course Hero, Inc. v. Julius Njeri
Claim Number: FA2105001945579
Complainant is Course Hero, Inc. (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Julius Njeri (“Respondent”), Kenya.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thecoursehero.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.
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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2021; the Forum received payment on May 19, 2021.
On May 20, 2021, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to the Forum that the <thecoursehero.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 May 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2021 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@thecoursehero.com. Also on May 20, 2021, 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 June 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman 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 operates an online learning platform that provides study resources, including those assisting students in writing essays, and allows for interaction between students and educators. Complainant has rights in the COURSE HERO mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,642,642 registered June 23, 2009). See Compl. Exhibit B. Respondent’s <thecoursehero.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the COURSE HERO mark in its entirety and merely adds the term “the” and adds the “.com” generic top-level domain (“gTLD”)
Respondent has no legitimate interests in the <thecoursehero.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the COURSE HERO mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name is used to pass off as Complainant.
Respondent registered and uses the <thecoursehero.com> domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the COURSE HERO mark.
B. Respondent
The <thecoursehero.com> domain name was registered on March 13, 2020. See Compl. Exhibit C. However, Respondent failed to submit a response in this proceeding.
2. Complaint’s rights in the COURSE HERO mark pre-dates the registration of the disputed domain name, <thecoursehero.com>, which was registered by Respondent on March 13, 2020.
3. The disputed domain name is identical or confusingly similar to the COURSE HERO mark.
4. Complainant has not licensed or otherwise authorized Respondent to use its mark, nor is Respondent commonly known by the mark.
5. For the reasons set forth below, Complainant has established that the disputed domain name, which inter alia contains content that directly competes with Complainant, has been registered and used 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”).
Complainant asserts rights in the COURSE HERO mark based upon the registration with the USPTO Reg. No. 3,642,642 registered June 23, 2009 (with a first use in commerce date in 2008). See Compl. Exhibit B. In addition, the COURSE HERO mark was registered in the UK effective as of October 23, 2020. The Trademark for COURSE HERO is valid and in full force and effect. See Compl. Exhibits B and C. 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).”). Since Complainant provides evidence of registration of the COURSE HERO mark with the USPTO, the Panel may find that the Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues Respondent’s <thecoursehero.com> domain name is identical or confusingly similar to Complainant’s COURSE HERO mark as it contains the COURSE HERO mark in its entirety and merely adds the term “the” and the “.com” gTLD. The addition of a generic or descriptive phrase and gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, the burden shifts to Respondent to show 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 contends Respondent lacks rights or legitimate interests in the <thecoursehero.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the COURSE HERO mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Julius Njeri,” and there is no other evidence to suggest that Respondent was authorized to use the COURSE HERO mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the <thecoursehero.com> domain name to pass themselves off as Complainant. Where the respondent uses a disputed domain name to pass themselves off as a complainant, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides screenshots of the disputed domain’s resolving page as of May 11, 2021, Complainant’s own resolving page, and an archived version of the disputed domain name’s resolving page as of April 22, 2021. See Compl. Exhibit D, E and F.
Upon examination of these exhibits and the websites themselves, the Panel notes that both of the sites provide resources for assisting students in writing essays, and contain other academic resources. In addition, the archived version of the disputed domain’s resolving site has numerous references to “The Course Hero”, and although the domain name was not registered until March of 2020, the Respondent’s website claims that “The Course Hero” service has been around for “over 8 years”. See Compl. Exhibit F. Given that the services directly compete with each other and because of the Panel’s analysis on Registration and Use in Bad Faith below, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). It has long been established that where the respondent uses a disputed domain name to redirect users to another site offering competing goods and services, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) or (iv) for the reasons set forth below.
a) Registration in Bad Faith
The mark COURSE HERO incorporates an uncommon combination of words such that it would be so unlikely of others using the same combination COURSE HERO in connection with such similar and arguably competing services. The term COURSE HERO is not an intuitive combination of words and therefore the combined mark is distinctive. These marks, unlike those that are merely descriptive or generic, are generally accorded strong protection against infringement. See Merrell Pharmaceuticals Inc. and Aventis Pharma SA. V. Lana Carter, D2004-1041 (WIPO January 25, 2005)(citing 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, chapter 11 (4th 2004). “A corollary is that domain names incorporating such marks belonging to others may be evidence of a deliberate attempt to misappropriate the mark and accompanying goodwill.” Merrell Pharmaceruticals.
Therefore, the Panel agrees, absent any response from the Respondent, that Respondent had knowledge of Complainant’s rights in the COURSE HERO mark at the time of registering the <thecoursehero.com> domain name. It is well established that although the UDRP does not recognize constructive notice as sufficient grounds for finding that a domain name was registered in bad faith, where there is evidence of actual knowledge, that is sufficient to support a finding of registration in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Although the Complainant has not provided enough evidence to the Panel that the mark “COURSE HERO” is famous or well-known, the mark’s distinctive nature combined with other circumstantial evidence point to the fact that Respondent must have known about the Complainant and its services prior to registering the domain name. Not only is the Complainant the only owner of any trademark registrations in the United States for the COURSE HERO mark, but also it is also the only registered trademark owner in the European Union’s Intellectual Property Office (as of June 28, 2021). Moreover, a google search conducted on the term “Course Hero” produces numerous results, all of which on at least the first ten pages of results, reference, or are about, Complainant. Therefore, the Panel finds that Respondent must have had actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy
b) Use in Bad Faith
Complainant argues that Respondent uses the <thecoursehero.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Where the respondent uses a disputed domain name to pass themselves off as a complainant, the Panel may find 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). Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). As previously noted, Complainant provides screenshots of the disputed domain’s resolving page and Complainant’s own resolving page. See Compl. Exhibits D, E and F.
The Panel agrees with Complainant. Having established that the Respondent likely had actual knowledge of the Complainant and its services, it is also clear that the disputed domain name’s content attempts to compete with the Complainant and the services it offers. Both the Complainant’s and the disputed domain’s content purport to provide an online learning platform containing resources for assisting students in writing essays and allowing for interaction between students and educators. The archived version of the disputed domain name’s content contains a number of references to the “The Course Hero” mark. Although the current content on the disputed domain has removed the references to “The Course Hero” in favor of the abbreviation “TCH”, it is likely that those changes were made in response to a “Cease-and-desist” letter sent by the Complainant on April 22, 2021. See Compl. Exhibit G. According to the Complainant the Respondent did not respond to the letter. However, the content on the website was changed at some point after April 22, 2021 (the date on the letter) and the date this Complaint was filed.
Finally, Complainant has demonstrated that the Respondent operates a number of other websites purporting to provide the exact same educational services as it does under the Disputed Domain Name under the names “Edussay”, “Elite Homework,” and “Transwriter.” See Compl. at p. 5 and Exhibit H. The Panel agrees with Complainant that this is a further demonstration of (a) the Respondent’s lack of legitimate business interest in any of the names that it owns that contains this specific content (including the disputed domain name), but also (b) Respondent’s bad faith in attempting to divert traffic from those intending to find the Complainant and/or trading off of the goodwill of the Complainant.
For all of the reasons above, the Panel finds that Complainant has demonstrated that the disputed domain name was both registered and used in bad faith pursuant to the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thecoursehero.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: June 29, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page