Penn Foster, Inc. v. Direct Privacy ID 99CCC / Domain Name Proxy Service, Inc.
Claim Number: FA1204001437866
Complainant is Penn Foster, Inc. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Direct Privacy ID 99CCC / Domain Name Proxy Service, Inc. (“Respondent”), represented by John Di Giacomo of Traverse Legal, PLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pennfordhighschool.com>, registered with directNIC, LTD. c/o DNC Holdings, Inc.
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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2012; the National Arbitration Forum received payment on April 3, 2012.
On April 4, 2012, directNIC, LTD. c/o DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <pennfordhighschool.com> domain name is registered with directNIC, LTD. c/o DNC Holdings, Inc. and that Respondent is the current registrant of the name. directNIC, LTD. c/o DNC Holdings, Inc. has verified that Respondent is bound by the directNIC, LTD. c/o DNC Holdings, Inc. 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 April 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2012 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@pennfordhighschool.com. Also on April 5, 2012, 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.
A timely Response was received and determined to be complete on April 25, 2012.
An Additional Submission was received on April 30, 2012 and determined to be compliant with Supplemental Rule 7.
On May 4, 2012, Respondent replied to this Additional Submission.
On May 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
1) Complainant owns the trademark registration for its PENN FOSTER HIGH SCHOOL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,382,965 registered February 12, 2008). See Complainant’s Exhibit 2.
2) Complainant provides education services for high school and career distance learning and has used the PENN FOSTER HIGH SCHOOL mark in its education services since 2005.
3) Respondent owns the disputed <pennfordhighschool.com> domain name, which it registered on October 14, 2011. See Complainant’s Exhibit 4.
4) Respondent uses the domain name to operate a fraudulent business by offering a high school diploma to consumers without requiring any coursework.
5) Respondent does not have rights to use the PENN FOSTER HIGH SCHOOL mark or register the mark in a domain name.
6) Respondent uses the domain name to maintain a website that looks similar to Complainant’s website and uses the same stylized font and nearly identical logo.
7) Respondent had constructive and actual knowledge of Complainant’s rights in the PENN FOSTER HIGH SCHOOL mark.
B. Respondent
Respondent makes the following contentions:
1) Respondent’s institution, PennFord School, has existed since 1999 and registered the <pennfordhighschool.com> domain name on October 14, 2011 in order to expand its existing institution.
2) Respondent’s domain name resolves to a website that offers education opportunities to nontraditional students globally.
3) Respondent offers high school and trade program educations, as well as Associates and Bachelor’s degrees. See Respondent’s Annex A.
4) Respondent’s institution existed prior to Complainant’s registration of its PENN FOSTER HIGH SCHOOL mark.
5) Respondent registered and uses the disputed domain name in good faith.
C. Additional Submissions
Complainant makes the following contentions in its Additional Submission:
1) It does not matter that Complainant disclaimed exclusive rights in a portion of its mark because the disputed domain name contains Complainant’s entire mark, with a couple of minor changes.
2) Respondent’s disputed domain name is confusingly similar to Complainant’s mark.
3) Respondent failed to present sufficient evidence that it is commonly known by the disputed domain name.
4) Complainant’s investigator researched Respondent’s business and found that it was not conducting a legitimate business.
5) Complainant’s business is not fraudulent.
Respondent makes the following contentions in its Additional Submission:
1) In examining the marks and the disputed domain name as a whole and in light of the disclaimed materials, there is no likelihood of confusion between Complainant’s marks and the disputed domain name.
2) There is no likelihood of confusion when comparing Respondent’s website at the time of its creation with the Complainant’s website during the same time.
3) Respondent used the trademark PENNFORD prior to Complainant’s use of the term PENN FOSTER.
4) The Panel is not properly tasked with determining the legitimacy of Respondent’s school and its ability to decide this dispute is limited to Respondent’s purported abusive registration of the disputed domain name.
Complainant offers online education services and is the right holder of the PENN FOSTER HIGH SCHOOL mark through its registration with the USPTO (Reg. No. 3,382,965 registered February 12, 2008) that it uses in connection to those services.
The disputed domain name has been registered by Respondent on October 14, 2011, using a privacy service.
The website linked to the disputed domain name advertises online education services. This website has used similar signs to the signs that were used by the Complainant on its website. A private investigator has reported that in exchange for money, diplomas are offered through the website linked to the disputed domain name, together with a transcript that listed “phony” classes and grades from Respondent’s institution.
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.
Policy ¶ 4(a)(i) requires a complainant to show that it the domain name is identical or confusingly similar to the mark that the complainant claims rights in. Complainant provides evidence of its rights in the PENN FOSTER HIGH SCHOOL mark through its registration with the USPTO (Reg. No. 3,382,965 registered February 12, 2008). See Complainant’s Exhibit 2. While Respondent argues that Complainant disclaimed exclusive rights in the terms “PENN” and “HIGH SCHOOL,” in its Additional Submission, Complainant argues that the disclaimer does not matter to this case because the disputed domain name incorporates Complainant’s entire PENN FOSTER HIGH SCHOOL mark, with a few changes. The panel in Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006), stated that the complainant’s registration of its mark with the USPTO satisfies the requirement of demonstrating rights in the mark under Policy ¶ 4(a)(i). In Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006), the panel held that the complainant secured rights in its BLOOMBERG mark through its registration with the USPTO. Therefore, the Panel finds that, by registering its PENN FOSTER HIGH SCHOOL mark with the USPTO, Complainant demonstrates rights in the mark pursuant to the requirement of Policy ¶ 4(a)(i).
Complainant contends that the <pennfordhighschool.com> domain name is confusingly similar to its PENN FOSTER HIGH SCHOOL mark. Complainant points out that the only variations between the mark and the domain name is the removal of the spaces between words, removing the letters “ster” in the FOSTER mark, which are replaced by the letters “rd,” and the addition of the generic top-level domain (“gTLD”) “.com.” Complainant argues that the changes made in the domain name are not sufficient to eliminate its confusing similarity to Complainant’s mark. The panel in U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), held that eliminating the spaces between words of a mark does not adequately distinguish the disputed domain name from the mark. In Roye v. Sterling Music Prods., FA 1339347 (Nat. Arb. Forum Oct. 1, 2010), the panel stated that replacing the letter “l” with the letter “b” does not establish a sufficient difference from the complainant’s mark and determined the domain name to be confusingly similar to the mark. In Morgan Stanley v. Morgan Stanley, FA 1169733 (Nat. Arb. Forum, May 3, 2008), the panel found that the addition of a gTLD is not relevant in distinguishing a domain name from the complainant’s mark, because every domain must have a gTLD. The Panel finds that the changes made to the disputed domain name do not take away the confusing similarity of the disputed domain name to Complainant’s mark under Policy ¶ 4(a)(i), as there is a clear visual and aural similarity between the disputed domain name and Complainant’s mark.
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 it does have 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 UDRP ¶ 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.”).
Complainant argues that Respondent is not commonly known by the <pennfordhighschool.com> domain name or the PENN FOSTER HIGH SCHOOL mark and submits evidence of the WHOIS information, which identifies the registrant as “Direct Privacy ID 99CCC, Domain name Proxy Service, Inc.” See Complainant’s Exhibit 4. Complainant argues that Respondent is not a licensee of Complainant and is not permitted to use the PENN FOSTER HIGH SCHOOL mark in any way. In Complainant’s Additional Submission, Complainant argues that Respondent’s evidence that it is commonly known by the disputed domain name is unsubstantiated and unreliable. The Panel determines that the WHOIS information provided is evidence that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) and that Respondent does not submit any reliable evidence to the contrary. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Complainant argues that Respondent uses the disputed domain name to issue high school diplomas in exchange for “significant” sums of money. Complainant claims that a consumer is not required to attend any classes to obtain the diploma. Complainant states that its private investigator contacted Respondent via a chat room at the resolving website to inquire about the offered high school diploma and was informed that a diploma could be obtained without attending any courses at a cost of $275. Complainant’s private investigator paid the $275 fee and received a diploma and transcript in the mail that listed “phony” classes and grades from Respondent’s institution. See Complainant’s Additional Submission Exhibit 8. Complainant reiterates these allegations in its Additional Submission. Complainant asserts that such use of the disputed domain name is not in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. The panel in W. Coast Univ., Inc. v. W. Coast Univ. Inc / West Coast Univ., FA 1416332 (Nat. Arb Forum Dec. 21, 2011), found that use of a domain name to operate a website that “attempts to sell fraudulent degrees and educational services” by presenting itself as an educational institution was not a bona fide or legitimate use. In Cramer Rosenthal mcGlynn, LLC v. Stefan, FA 1351742 (Nat. Arb. Forum Nov. 24, 2010), the panel stated that the respondent’s use of a domain name to a website that claims to offer legal services was most likely fake and was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. In the case at hand, the Panel is of the opinion that Respondent’s use of the disputed domain name to host a website that offers high school diplomas in exchange for payment is 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).
Complainant submits evidence in its Policy ¶ 4(a)(i) argument of its Complaint and Additional Submission that allegedly demonstrates that Respondent attempts to pass itself off as Complainant’s business by using a “nearly identical” logo and font on its website that Complainant uses for its own website. The panel in Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), held that the respondent tried to pass itself off online as the complainant, which the panel found was unauthorized use of the complainant’s mark and demonstrated that the respondent had no rights or legitimate interests in the domain name. In Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003), the panel stated that the respondents attempts to profit from a domain name by passing itself off as the complainant was not a bona fide offering of goods or services, nor was it a legitimate noncommercial or fair use. The Panel concludes that Respondent created a website at the disputed domain name to pass itself off as Complainant and find that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant alleges that Respondent takes advantage of the confusing similarity between the PENN FOSTER HIGH SCHOOL mark and the <pennfordhighschool.com> domain name in order to attract consumers to its website to offer its purported competing services. Complainant contends that it paid a $275 fee in exchange for a diploma and a transcript with “phony classes completed and fake grades received,” which it alleges is a fraudulent scheme that demonstrates bad faith registration and use. Complainant further alleges in its Policy ¶ 4(a)(i) argument that Respondent’s disputed domain name resolves or used to resolve to a website that looks nearly identical to Complainant’s website, using a similar logo and the same stylized font. The Panel is of the opinion that Respondent attracts Internet users by using a confusingly similar disputed domain name to make a commercial profit, which amounts to bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant argues that Respondent uses the disputed domain name to operate the resolving website to perpetrate a fraud against consumers. Complainant alleges in its Policy ¶ 4(a)(i) argument that Respondent issues high school diplomas without requiring consumers to take any classes and charges a sum of money instead. The Panel finds that Respondent’s operation of a website to carry out a fraudulent scheme demonstrates bad faith registration and use under Policy ¶ (a)(iii). See Yale Univ. v. Yale Explore, D2011-1367 (WIPO Oct. 3, 2011) (holding that using a domain name to offer fake education services was indicative of bad faith registration and use); see also Royal Bank of Scotland Group v. RBS Assent Mgmt., FA79208 (Oct 29, 2007) (stating that using a domain name in a manner connected with a scheme to defraud the complainant’s Internet customers and manipulate them into revealing personal and financial information constitutes bad faith registration and use under Policy ¶ 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 <pennfordhighschool.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: May 16, 2012
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