Russell Frey d/b/a edHelper v. HYRO FZ-LLC
Claim Number: FA 1362409
Complainant is Russell Frey d/b/a edHelper (“Complainant”), represented by Clifford D. Hyra, Virginia, USA. Respondent is HYRO FZ-LLC (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <www-edhelper.com>, registered with PSI-USA, INC. D/B/A DOMAIN ROBOT.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 8, 2010; the National Arbitration Forum received payment December 8, 2010.
On December 9, 2010, PSI-USA, INC. D/B/A DOMAIN ROBOT confirmed by e-mail to the National Arbitration Forum that the <www-edhelper.com> domain name is registered with PSI-USA, INC. D/B/A DOMAIN ROBOT and that Respondent is the current registrant of the names. PSI-USA, INC. D/B/A DOMAIN ROBOT verified that Respondent is bound by the PSI-USA, INC. D/B/A DOMAIN ROBOT registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2010, 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@www-edhelper.com. Also, on December 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <www-edhelper.com>, is confusingly similar to Complainant’s EDHELPER mark.
2. Respondent has no rights to or legitimate interests in the <www-edhelper.com> domain name.
3. Respondent registered and used the <www-edhelper.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Russell Frey d/b/a edHelper, operates a website featuring worksheets, puzzles, lesson plans, and other materials for teachers. Complainant operates this website under its EDHELPER service mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,955,044 issued May 24, 2005).
Respondent, HYRO FZ-LLC, registered the disputed domain name <www-edhelper.com> August 19, 2007. The domain name resolves to a links page offering hyperlinks to education in general. Some of the displayed links include generic links to educational materials and games.
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."
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds that Complainant demonstrated the trademark rights necessary to meet the requirements of Policy ¶ 4(a)(i). Complainant provided the Panel with its trademark registration with the USPTO (Reg. No. 2,955,044 issued May 24, 2005). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
The fact that Complainant has not demonstrated these rights within Respondent’s home jurisdiction is irrelevant. Complainant need only demonstrate that it holds the necessary rights in any jurisdiction, as it has done. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has the necessary rights in its EDHELPER mark pursuant to Policy ¶ 4(a)(i).
The Panel also finds that Respondent’s <www-edhelper.com> domain name is confusingly similar to Complainant’s EDHELPER mark. The “www” added to the beginning of the mark adds little distinctive value to a domain name because its clear intent is to take advantage of an error on the part of Internet users. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). Further, punctuation in domain names is irrelevant to the Policy ¶ 4(a)(i) analysis and therefore the hyphen added between the mark and the “www” also adds no distinctive value. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Lastly, the addition of the generic-top-level domain(“gTLD”) “.com” to the end of the mark is also inconsequential; gTLD’s are not considered in the Policy ¶ 4(a)(i). Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). After removal of the additions discussed above, all that remains is Complainant’s mark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant has shown rights in the mark contained within the disputed domain name and has alleged that Respondent has no such rights to or legitimate interests in the <www-edhelper.com> domain name. Where Complainant makes a prima facie showing to support these allegations, the burden of proof shifts to the Respondent to prove that it does have such rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii).
Given the evidence provided, the Panel finds that Complainant made a prima facie case. Because the Respondent failed to respond to the Complaint, the Panel may assume that Respondent does not have rights to or legitimate interests in the <www-edhelper.com> domain name. However, the Panel still examines the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant also alleges that Respondent is not commonly known by the disputed domain name. The evidence before the Panel lacks any indication that Respondent is known by any version of the domain name. The disputed domain name’s WHOIS information indicates that the domain name registrant is not known by the disputed domain name, but by “Hyro.” Respondent has not responded to this allegation. Therefore, the Panel finds that Respondent is not commonly know by <www-edhelper.com> pursuant to ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant alleges that Respondent does not make a bona fide offering of goods or services and/or any legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a page that displays generic links to the viewer. Some of these links compete with Complainant’s business. Respondent’s use thus diverts Internet users away from Complainant’s business. Use of a confusingly similar domain name in this fashion is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate, noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
This Panel accordingly finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent registered and used the disputed domain name in bad faith. The Panel finds that Respondent’s registration and use of a confusingly similar domain name with the intent to compete with Complainant’s business supports findings of bad faith registration and use. The page contains links to educational materials as well as education games and these links compete with Complainant’s offerings. Since Respondent is using a confusingly similar domain name to host these links, Respondent’s use is also disruptive of Complainant’s ability to register a domain of its own and this further supports findings of bad faith registration and use under ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel also finds that Respondent has used the disputed domain name with an intent to create confusion regarding Complainant’s suggested affiliation with the domain name when no such affiliation exists. Respondent fosters this confusion to increase traffic through its domain name and thus to increase its profits from pay-per-click advertising. The use of a confusingly similar domain name to attract Internet users to a links page for profit supports findings of bad faith registration and use. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(b)(iv) and ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <www-edhelper.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 19, 2011.
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