Cengage Learning Inc. v.
Steve Myers
Claim Number: FA0712001116919
PARTIES
Complainant is Cengage Learning Inc. (“Complainant”), represented by Alexandre
A. Montagu, 1060 Park Avenue, Suite 10C, New York, NY 10128. Respondent is Steve Myers (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <educationtogoonline.com>, registered
with GoDaddy.com,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 3, 2007; the
National Arbitration Forum received a hard copy of the Complaint on December 4, 2007.
On December 4, 2007, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <educationtogoonline.com> domain name
is registered with GoDaddy.com, Inc. and
that the Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On December 6, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 26, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@educationtogoonline.com
by e-mail.
A timely Response was received and determined to be complete on December 26, 2007.
A timely Additional Submission was received from Complainant and deemed
to be complete on December 31, 2007.
A timely Additional Submission was received from Respondent and deemed
to be complete on January 8, 2008.
On December 31, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that the domain name <educationtogoonline.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical or confusingly similar to the Complainant’s registered trademark EDUCATIONTOGO, that the Respondent has no rights or legitimate interests in the domain name, and that it has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered EDUCATIONTOGO trademark to which reference has already been made (“the EDUCATIONTOGO mark”) and says that the domain name is confusingly similar to the trademark because it incorporates the entirety of the trademark in the domain name with the addition of both the word “online,” which does nothing to detract from the confusing similarity and also the generic top level domain suffix “.com.”
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because the name has no relationship to the business of the Respondent, he is not commonly known by the domain name and has no relationship with the Complainant or permission from the Complainant to use the trademark. Nor has the Respondent made a legitimate non-commercial or fair use of the domain name. Moreover, it is contended that the Respondent has used the domain name for a website that provides access to products and services that compete with those of the Complainant in the field of online education services.
Finally, the Complainant contends
that the domain name was registered and is being used in bad faith. It contends that this is so because the
Respondent has operated a website from the domain name which has offered
services directly competitive to those of the Complainant together with
sponsored advertisements to other online education providers. Moreover, it is
said, as the Respondent has tried to sell the domain name to the Complainant
for a large sum of money, it should be concluded that the Respondent registered
the domain name primarily for the purpose of selling, renting or otherwise
transferring it to the Complainant or a competitor within the meaning of
paragraph 4(b) (i) of the Policy, which itself constitutes bad faith.
B. Respondent
The Respondent contends, first, that the Complainant does not have enforceable trademark rights required by the Policy because the trademark it relies on in a generic term and may not be registered as a trademark.
Alternatively, he says, the trademark is merely descriptive and accordingly the domain name cannot be confusingly similar to it.
Moreover, on the facts as alleged by the Complainant, the domain name cannot be confusingly similar to the trademark, for the Complainant is largely unknown as providing the services claimed and the Respondent himself had never heard of the Complainant prior to the dispute.
With respect to the second element, the Respondent contends that the Complainant has not shown the necessary pre-requisite of a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
Alternatively, he contends that he has rights and legitimate interests in the domain name because he is in the business of offering education related services and uses the domain name to direct Internet traffic to entities providing those services.
He also claims that those rights and legitimate interests come from the very fact that the domain name consists of common, descriptive terms and that the advertisements carried on the website come within the ambit of those descriptive terms.
Thirdly, the Respondent contends that he did not register or use the domain name in bad faith. He says that he is not in competition with the Complainant because whereas he, the Respondent, offers online courses to individual students, the Complainant merely offers them to colleges that then sell them to the colleges’ students. Thus the Respondent could not have sought to damage a competitor, for the Complainant is not a competitor.
Moreover, he contends, the advertisements presently on the website are merely advertisements put on the site by the registrar, with whom he has “parked” the domain name pending the outcome of this dispute.
The Respondent also contends that the Panel should make a finding of
Reverse Domain Name Hijacking against the Complainant.
C. Additional Submissions
In its Supplemental Submission the Complainant contends that, despite
the Respondent’s submission that the trademark is generic, the mark is in fact
registered with the United States Patent and Trademark Office (“USPTO”) and
thus is a valid trademark and an adequate one for the purposes of the UDRP
proceedings. The Complainant also contends that the domain name is confusingly
similar to the trademark because the entirety of the trademark has been
incorporated into the domain name and the generic term “online” that has been
added to it cannot negate the confusing similarity that is apparent. The
Complainant also reiterates its contentions that the Respondent has no rights
or legitimate interests in the domain name and that he registered and used the
domain name in bad faith and also contends that the Panel should not make a
finding of Reverse Domain Name Hijacking.
In his Supplemental Submission, the Respondent contends again that the
trademark claimed by the Complainant confers no trademark rights as it is a
generic term and he adds that ICANN’s policy on this matter cannot be negated
by the
FINDINGS
(a) The Complainant is a provider of online
educational services.
(b) The Respondent is also a provider of online
educational services.
(c) The Complainant is the registered owner of
trademark number 3,050,620 registered on January 24, 2007 with USPTO for
EDUCATIONTOGO.
(d) The Respondent registered the domain name <educationtogoonline.com> on March 13, 2007.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
The Panel finds that the domain name is confusingly similar to the Complainant’s registered trademark EDUCATIONTOGO, details of which appear above and which have been established by evidence annexed to the Complaint. That is so for the following reasons.
First, because the dominant feature of the domain name that compels the attention of any reasonable bystander is the expression “educationtogo,” which is identical to the trademark.
Secondly, the belief engendered by the domain name that it is associated with the trademark is not dispelled in the slightest by adding the word “online.”
In that regard, it has been held many times by UDRP panels that the addition to a trademark of a generic or common expression or a term that does no more than describe some aspect of the trademarked goods, will not negate a finding of identicality or confusing similarity that is otherwise present on the evidence. See Dr. Ing. h.c.F. Porsche AG v. Gary Charles Brown, D2001‑0919 (WIPO Sept. 15, 2001), where it was held that the domain name <porscheimporter.com> was confusingly similar to the trademark PORSCHE because the activity of importing would “commonly be associated with a producer or dealer in automobiles.”
Applying that principle to the present case, it may be said that the act of providing “online” education services that are “to go” or that are in some way delivered to the purchaser, does not distinguish the services offered by the domain name from those offered by the trademark and, if anything, suggests that they are the same.
In any event, it has been specifically held on many occasions that the addition of the word “online” itself does not serve to distinguish a domain name from a trademark; see any of the large number of decisions on the National Arbitration Forum’s list of Domain Name Dispute Proceedings and Decisions where the word “online” has been added to a trademark and the consequent domain name has been held to be confusingly similar to the trademark, for example Caterpillar Inc. v. Miguel Miyar Jr., FA 95623 (Nat. Arb. Forum, Dec. 14, 2000), concerning the domain name <caterpillarpartsonline.com> and The Prudential Insurance Company of America v. Douglas Irvine, FA 95768 (Nat. Arb. Forum, Nov. 6, 2000), concerning <prudentialonline.com>.
As the Respondent has raised the issue, it should also be said that the Complainant’s trademark, being a registered trademark, is sufficient to establish trademark rights for the purposes of the Policy. The Respondent contends that because the expression “education to go” is a common or generic expression, the Complainant cannot have a trademark in those terms. That is not so, for whether or not the trademark is valid or not is determined by the competent national authority, in this case the USPTO. Once registration is established, it sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Moreover,
it has been well established that it is beyond the jurisdiction of a UDRP panel
to second-guess or look behind the registration of a trademark, for, as it was
put in U.S. Office of Pers. Mgmt. v. MS
Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003): “[O]nce the USPTO has
made a determination that a mark is registrable, by so issuing a registration,
as indeed was the case here, an ICANN panel is not empowered to nor should it
disturb that determination.”
The Respondent has also argued that, on the facts as alleged by the Complainant, the domain name cannot be confusingly similar to the trademark, for the Complainant is largely unknown as providing the services claimed and the Respondent himself had never heard of the Complainant prior to the dispute.
The answer to this argument is that in determining identicality or confusing similarity for the purposes of the Policy, the comparison must be made between the actual wording of both the domain name the trademark, for that is what the Policy requires.
That does not mean
however, that the factors raised by the Respondent, the alleged generic nature
of the trademark, the public’s knowledge of the Complainant in the industry in
question and whether the Respondent knew of the Complainant when he registered
the domain name, are irrelevant to the proceedings as a whole. These and other
factors may not be considered when determining whether Policy ¶ 4(a)(i) has been met, but they become very
relevant when Policy ¶ 4(a)(ii) and (iii) are up for decision.
For all of these reasons the Panel determines that the domain name is confusingly similar to the trademark and that the Complaiant has established the first of the three elements that it must make out.
Under Policy ¶
4(a)(ii), Complainant has the burden of establishing that Respondent has no
rights or legitimate interests in respect of the disputed domain name.
But by virtue of Policy ¶ 4(c) of the Policy, it is open to a respondent
to establish its rights or legitimate interest in the disputed domain name,
among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if Respondent proves any of these elements or indeed anything else that shows that it has a right or interest in the disputed domain name, Complainant will have failed to discharge its onus and the Complaint will fail.
It is now well established that 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), and then the burden shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. That prima facie case arises from the following circumstances: the domain name consists of the entirety of the trademark with the addition only of the generic and common expression “online”; the Complainant has shown that Respondent is not commonly known by the domain name <educationtogoonline.com>; the Complainant has also shown that Respondent is not affiliated with or licensed by it to use the EDUCATIONTOGO mark in any way; the domain name was registered on March 13, 2007 at a time when the Complainant’s trademark EDUCATION TO GO and its associated name “ed2go” had achieved at least some prominence due to its operations throughout the USA and a public announcement on February 20, 2007 that it had enrolled its one millionth student.
That being so, the burden of proof then shifts to the Respondent to show on the balance of probabilities that he has a right or legitimate interest in the domain name.
The Respondent seeks to make out
this case essentially by making two arguments.
The first argument is that he has rights and legitimate interests in the domain name because he is in the business of offering education related services and uses the domain name to direct Internet traffic to entities providing those services.
The second argument is that his rights and legitimate interests come from the very fact that the domain name consists of common, descriptive terms and that the advertisements carried on the website come within the ambit of those descriptive terms.
This dual approach to establish a right or interest
has been endorsed in several National Arbitration Forum decisions, notably Walsh Bishop Associates, Inc. v. Honggi,
Honggi Kim, FA 907521 (Nat. Arb. Forum Mar. 6, 2007) (relying on Eastbay Corp. v.
VerandaGlobal.com, Inc., FA 105983 (Nat.
Arb. Forum May 20, 2002) and Accetta v.
Domain Admin, FA 826565 (Nat. Arb. Forum Jan. 2, 2007)).
The same approach was recently taken in Christian Credit Counsellors Inc v. Domain Group LLC, D2007-1509 (WIPO Dec. 17, 2007).
The approach is therefore well-established, but after reviewing the decisions referred to and many others, as well as all of the evidence in the present proceeding, the Panel has concluded that neither argument enables the Respondent to rebut the prima facie case that has been made against it.
With respect to the first argument,
the Respondent is unable to make out the conditions that must be satisfied to
show that he has been using the domain name in the manner he has claimed. In
particular, he has not shown “good faith efforts to avoid registering and using
domain names that are identical or confusingly similar to marks held by others”
or that “the domain name is not identical or confusingly similar to a famous or
distinctive mark.” See Christian Credit Counsellors Inc v. Domain
Group LLC, D2007-1509, and Walsh
Bishop Associates, Inc. v. Honggi, Honggi Kim, FA 907521. That is so
because the Respondent has chosen as a domain name an expression that is
confusingly similar to the Complainant’s trademark. Moreover, as will be seen
later in this decision, the Panel has not been persuaded that the Respondent
chose the domain name in a bona fide manner.
With respect to the Respondent’s
second argument, it is undoubtedly true that if a domain name consists of terms that are generic and of common use and if the
terms have not taken on a particular cachet that associates them with the
Complainant and its trademark, the registrant will have gone a long way to
establishing rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc.
v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the
respondent was using the <kaleidoscope.com> domain name for a bona
fide offering of goods or services because the term was “generic” and
respondent was using the disputed domain name as a search tool for Internet
users interested in kaleidoscopes); see
also Qwest
Commc’ns Int’l v. QC Publ’g Group, Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s
rights in the QWEST mark are limited to its application to the
tele-communications industry,” where a variety of other businesses used the
mark in unrelated fields).
These
principles have recently been restated in HSBC Finance Corporation v. Clear Blue Sky
Inc. and Domain Manager, D2007-0062 (WIPO
June 4, 2007), where a three person panel said:
A number of panels have concluded that a respondent has a
right to register and use a domain name to attract Internet traffic based on
the appeal of a commonly used descriptive phrase, even where the domain name is
confusingly similar to the registered mark of a complainant. See National Trust for Historic Preservation v.
A similar way of expressing the same notion is to be found in Walsh Bishop Associates, Inc. v. Honggi, Honggi Kim, FA 907521: “It has been found that that a respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”
To apply
this principle, which the Respondent is relying on, requires a finding that the
expression in question is a “common descriptive and generic expression,” Eastbay Corp. v. VerandaGlobal.com, Inc., FA
105983, and then, if it is generic, a further finding that the Respondent
registered and used the domain name “… to profit from the generic value of the
word, without intending to take advantage of complainant’s rights in that
word.” Walsh Bishop Associates,
Inc. v. Honggi, Honggi Kim, FA 907521.
There
are several difficulties in the way of applying the principle just stated to
the present case. The first is that although the expression “educationtogoonline”
is made up of several common or dictionary words, there must be doubt whether
the expression as a whole is a “common descriptive and generic expression.”
This situation is similar to that faced by the panel in HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062:
[W]hile both “credit” and “keeper” may be generic in the
sense that they are dictionary words, the USPTO’s registration of the
CREDITKEEPER mark on its principal register constitutes an official determination
that the mark is not descriptive with respect to the debt deferment and credit
reporting services for which it was registered. Given the USPTO’s
determination, the Panel entertains serious doubt whether the Respondent’s use
of the disputed domain name to advertise credit-related services of a similar
nature constitutes the use of the domain name in a descriptive as opposed to a
trademark sense.
Likewise, in the present
case, in view of the USPTO’s determination on the registration of the trademark
EDUCATIONTOGO with respect to specified educational services, the mere addition
to it of the word “online,” the Panel doubts whether the domain name is a “common descriptive and generic expression.”
Even assuming
for present purposes that the expression is such a generic expression, there is
an onus on the Respondent to show that he was not intending to take advantage of Complainant’s rights in the
EDUCATIONTOGO trademark.
The problem is that the Respondent is silent on why the expression used in the domain name was chosen at all. This is a fundamental shortcoming in the Respondent’s case and a major reason for the Panel’s conclusion that the Respondent has not rebutted the prima facie case against it.
Put simply, the Respondent was faced with allegations by the Complainant in substance that he had taken the Complainant’s trademark and used it in the domain name to promote the Respondent and the services of the Complainant’s rivals. The Respondent replied simply that he had not heard of “the Complainant” or it domain names until “recently.” He repeated this assertion in his Supplemental Submission.
The question thus arises as to why the Respondent chose the name that he did for his domain name. It seems a remarkable coincidence that he chose virtually the same name as the Complainant’s trademark, a name which on the evidence had been in use by the Complainant’s predecessors since May 30, 1996 for “Educational services in the nature of interactive correspondence schools conducted via a global computer network.” Such a coincidence is, of course, possible and it could also be that the Respondent, weighing up different names, felt that “educationtogoonline” was the most appropriate for his business.
For present purposes, however, the point is that the Respondent, although he had two opportunities to do so, did not give any explanation as to why he chose the name that he did. Accordingly, as it has to decide this issue, the Panel can only have regard to the evidence of both sides and measure it in the light of the test that the onus is on the Respondent to show on the balance of probabilities that its registration and use of the domain name was bona fide and legitimate.
On one side of the scales are the facts that:
(a) the trademark EDUCATIONTOGO had been in use since May 30, 1996 and had been registered on January 24, 2006;
(b) it had been used to provide educational services to 1 million students by February 20, 2007;
(c) it had achieved at least some prominence due to those operations and a public announcement on that date;
(d) the trademark had been used “extensively in printed publications, the Internet, and other media” and has been widely advertised;
(d) the domain name was registered on March 13,
2007; and
(f) the Respondent works and has worked in the same field.
On the other side of the scales are the facts that:
(a) Although he has had the opportunity to do so, the Respondent has given no explanation as to why he chose the name “educationtogooline” for his domain name;
(b) when the Respondent was challenged about the
registration and use of the domain name he offered to sell it to the
Complainant for $1,000.00.
Taking all
of these matters into account, the Panel has not been persuaded that the
Respondent registered and used the domain name without intending to take advantage of complainant’s rights in the
EDUCATIONTOGO trademark or that he chose the domain name without regard to its confusingly similarity to
the Complainant’s trademark.
The Panel is therefore not satisfied on the
evidence that, as the test was put in HSBC Finance Corporation v. Clear Blue Sky
Inc. and Domain Manager,
D2007-0062 that the Respondent registered “…a
domain name consisting of ‘dictionary’ terms because the respondent has a good
faith belief that the domain name’s value derives from its generic or
descriptive qualities, … and not because of its value as a trademark.”
Accordingly, the Panel finds that the Respondent has not rebutted the prima facie case against it by his submission that his rights and legitimate interests come from the fact that the domain name consists of common, descriptive terms and that the advertisements carried on the website come within the ambit of those descriptive terms.
In so far as the Respondent is also arguing that he can rely on Policy ¶ 4(c)(i), that he was making a bona fide offering of goods or services, or on Policy ¶ 4(c)(iii), that he was making a legitimate noncommercial or fair use of the domain name, the Panel does not accept either of those arguments. The Panel has not been persuaded that the use of the domain name was bona fide or legitimate, for the reasons that have already been given.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000‑0003 (WIPO Feb. 18, 2000).
Further guidance on how to implement this requirement is to be found in Policy ¶ 4(b), which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out‑of‑pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on‑line 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 site or location.
The Panel finds that the case comes within Policy ¶ 4(b)(i) and (iv).
The case comes within Policy ¶ 4(b)(i) because it is apparent from the evidence that the Respondent offered to sell the domain name to the Complainant and in circumstances such that the inference should be drawn that he registered the domain name primarily for the purpose of selling it to the Complainant and in excess of his out-of-pocket costs.
The evidence is that the Complainant’s attorney sent the Respondent a cease and desist letter on August 14, 2007 to which the Respondent replied on September 20, 2007.
In that reply the Respondent said among other things: “The quickest solution is: I am not sure who you are; who your client is; but if they want to ‘make me whole,’ send me a check for $1000 and I will assign ‘educationonlkine.com’ [sic] to them.”
The Complainant’s attorney replied to that letter on October 3, 2007 declining the offer by saying that: “Furthermore, please note that my client is not interested in purchasing the domain name from you.” The Respondent replied on October 21, 2007 saying among other things “I hereby demand, you pay me $100,000 for my property or take your shake down and piss off.”
It is clear that the initiative to sell the domain name came from the Respondent and there is no evidence that the Complainant ever asked the Respondent to sell the domain name to it. The offer to sell was, of course, only six months after the domain name was registered on March 13, 2007.
It is not clear beyond any doubt as to the precise intentions of the Respondent at the time of registration of the domain name, as he has not revealed this in his Response or Supplemental Submission, but the Panel finds on the balance of probabilities that in all the circumstances the Respondent registered the domain name primarily for the purpose of selling the domain name registration to the Complainant, for valuable consideration in excess of the Respondent’s documented out‑of‑pocket costs directly related to the domain name.
So far as Policy ¶ 4(b)(iv) is concerned, the Complainant’s evidence is that until its attorney sent the first cease and desist letter of August 14, 2007, the Respondent used the domain name for a website offering services “which are directly competitive to those of” the Complainant together with sponsored advertisements. The Complainant has exhibited to the Complaint a screenshot from the website taken on August 10, 2007 and that document contains an outline of the Respondent’s services in the field of education delivered over the Internet. The Complainant’s evidence is that after the presumed receipt of the first cease and desist letter the Respondent removed from the website the references to his products and services and replaced them with a series of sponsored links to other websites, some of which offer services that are competitive with those of the Complainant’s business. The Complainant has also exhibited to the Complaint a screenshot from the website taken on October 31, 2007; the sponsored links are to offerings such as online degrees and online education.
The Respondent’s case is that the Complainant does not offer services directly to students but only to institutions such as colleges and that, far from having enrolled its one millionth student, it has not yet enrolled its first, as it does not enroll students at all. In contrast he, the Respondent, provides online education to individual students and it is that different service that is being offered on the website to which the domain name resolves. Accordingly, he contends, the parties are not in competition and there can be no confusion between the services offered by the Complainant under the trademark and the services offered by the Respondent under the domain name. As the Respondent puts it himself: “We are not in the same business, they provide a server to institutions and I market to end-users (students), without students the Complainant would cease to exist.”
The Respondent’s evidence is also to the effect that when the dispute arose he removed his content from the website and “parked” the domain name with GoDaddy.com Inc, the registrar. Accordingly, the sponsored advertisements presently on the website are there at the instigation of the registrar and the entitlement to any revenue earned from them is that of GoDaddy.com, Inc.
In his Supplemental Submission the Respondent says that “…both sites do not offer the same services …” and that the two websites, those of the Complainant and the Respondent, are not in competition.
It is true that the Complainant’s
website refers to institutions through which its services are delivered, but
the main thrust of the content on the site is with respect to courses, where
the merit of undertaking them is addressed to individuals. For example:
Basic Computer Literacy
Learn computer basics,
keyboarding, Windows, Linux, or the Macintosh operating system.
Computer Applications
Become proficient with
Microsoft Excel, QuickBooks, Word, Access, PowerPoint, Crystal Reports,
Publisher, and more.
Graphic Design
Produce eye-catching
photographs, ads, newsletters, catalogs, cards, and magazines with Photoshop,
Illustrator, CorelDRAW, Microsoft Publisher and other powerful design tools.
The Internet
Master the ins and outs
of the Internet, Outlook, search engines, doing business online, and more.
Web Page Design
Create and post your
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These services are directed
to the ultimate consumer, as were the concepts promoted on the Respondent’s
website before they were removed. The difference between the two websites is
therefore slight and would not in the opinion of the Panel be regarded by
visitors to the Respondent’s site as being of any substance. Clearly, both the
Complainant and the Respondent are trying to entice individuals to undertake
online education and they are both offering courses that constitute online
education.
Accordingly,
by offering substantially similar services to those of the Complainant, the
Respondent was, at least until the advertisements were removed, using the <educationtogoonline.com>
domain name to attract Internet users to his website, by creating a likelihood
of confusion with the Complainant’s EDUCATIONTOGO trademark as to the
affiliation of the Respondent’s website and the services promoted on it.
In the absence of any evidence to the contrary, it must be assumed and the Panel so finds, that this was being done intentionally and for commercial gain.
Although opinions differ on the issue, the view of the Panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the Respondent is also responsible for the sponsored links currently appearing on the website.
The finding of the Panel is therefore that the Respondent both registered and used the domain name in bad faith within the meaning of the Policy.
The Complainant
has thus made out the third of the three elements that it must establish.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <educationtogoonline.com> domain name
be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 15, 2008
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