Association for Supervision and Curriculum Development d/b/a ASCD v. LeaseDomains.com
Claim Number: FA1204001441190
Complainant is Association for Supervision and Curriculum Development d/b/a ASCD (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is LeaseDomains.com (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubd.org>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2012; the National Arbitration Forum received payment on April 26, 2012.
On April 26, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ubd.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@ubd.org. Also on May 3, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 2012, 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.
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. 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
Complainant made the following contentions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a membership-based nonprofit organization that develops programs, products and services that are essential to the way that educators learn, teach, and lead.
2. Complainant owns trademark registrations for the UNDERSTANDING BY DESIGN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,571,731 filed February 19, 1998; registered May 21, 2002).
3. Complainant also began using the UBD mark in 1999 and has applied for a trademark registration for that mark with the USPTO (App. No. 85/412,858 filed September 1, 2011).
4. Complainant has established that it has common law rights in its UBD mark and that it had those rights prior to the registration of the disputed domain name.
5. Respondent registered the disputed domain name on May 19, 2000 and uses it to host pay-per-click links to Complainant’s direct competitors and also to host a link advertising that the domain name may be for sale.
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(e), 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 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submitted evidence of its trademark registrations with the USPTO for its UNDERSTANDING BY DESIGN mark (e.g., Reg. No. 2,571,731 filed February 19, 1998; registered May 21, 2002). The Panel finds that Complainant’s USPTO trademark registrations are evidence that Complainant holds rights in its UNDERSTANDING BY DESIGN mark for the purposes of Policy ¶ 4(a)(i), dating back to the filing date of February 19, 1998. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant also argues that it has established rights in its UBD mark. Complainant submitted evidence to show that it has submitted an application to register its UBD mark (App. No. 85/412,858 filed September 1, 2011). While previous panels have found that a USPTO application does not give the Complainant per se rights to the mark, Complainant also argues, in the alternative, that Complainant has established common law rights in the UBD mark since the Policy does not require a trademark registration in order to find rights. The Panel agrees with Complainant and finds accordingly.See Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (“Complainant’s pending applications do not establish any enforceable rights until registration issues.”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant also contends that it has used the UBD mark as a shorthand version of its UNDERSTANDING BY DESIGN mark. Complainant alleges that it has used the UBD mark in connection with various goods and services since at least 1999 and, as such, it has built up a tremendous amount of goodwill in the mark. Complainant further alleges that it has published books under the UBD title, and has offered complementary products and services (including articles, videos, professional development online courses and in-person conferences) with the UBD title. Complainant also submitted evidence to show that news articles regarding the Understanding by Design program use UBD as a shorthand for the program. See Exhibit 13; see also Exhibit 14. Lastly, Complainant contends that it has operated a stand-alone website using the UBD mark and offers an online tool for UBD educators at that stand-alone website. The Panel thus finds that Complainant has established common law rights in the UBD mark for the purposes of Policy ¶ 4(a) (i). See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to the trademarks relied on by Complainant or either of them. Complainant argues that Respondent’s <ubd.org> domain name is identical to Complainant’s UBD mark. The Panel notes that the disputed domain name contains Complainant’s entire mark and the generic top-level domain (“gTLD”) “.org.” The Panel therefore finds that Respondent’s <ubd.org> domain name is identical to Complainant’s UBD mark in accordance with Policy ¶ 4(a) (i). See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a) (i).”).
It is therefore not necessary to decide whether the disputed domain name is also identical or confusingly similar to the UNDERSTANDING BY DESIGN mark.
Accordingly, Complainant has made out the first of the three elements that it must establish.
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 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.”).
The Panel finds that Complainant has made out a prima facie case and that it arises from the following considerations:
(a) Respondent has chosen to take Complainant’s UBD mark and to use it in its domain name.
(b) Respondent has then decided to use the domain name to host pay-per-click links to Complainant’s direct competitors and also to host a link advertising that the domain name may be for sale.
(c) Respondent has engaged in these activities without the consent or approval of Complainant.
(d) Complainant also argues that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies “LeaseDomains.com” as the current registrant of the disputed domain name. Complainant alleges that, while the individual registrant would not disclose its name, the individual registrant did identify itself as a “domain name investor” and, accordingly, there is no reason to believe that the individual registrant’s name bears any similarity to the UBD mark. Previous panels have found that a respondent is not commonly known by a disputed domain name where the WHOIS information, as well as all other information in the record, fails to bear any resemblance to the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c) (ii) based on the WHOIS information and other evidence in the record). The Panel therefore finds that Respondent is not commonly known by the disputed domain name.
(e) Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that the disputed domain name resolves to a website that contains pay-per-click links that redirect Internet users to Complainant’s direct competitors. The Panel therefore finds that Respondent is not using the disputed domain name 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). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
(f) Complainant also asserts that Respondent placed a link on the disputed domain name indicating that the domain name may be for sale. Complainant contends that the link forwards Internet users to a Go Daddy domain name search tool website, which states that the disputed domain name is a “premium domain name” and is currently for sale for $8,800. In addition, Complainant asserts that, in response to a cease and desist letter in which Complainant demanded that Respondent transfer the disputed domain name, a person called Complainant and identified itself as the registrant of the disputed domain name. Complainant submitted in evidence a declaration stating that the caller demanded to be compensated for the costs of acquiring the disputed domain name, which were put at several thousand dollars. See Exhibit 15. The Panel therefore finds this to be further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a) (ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arab. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, Complainant has made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that the individual registrant who used the Respondent’s proxy registration services advised Complainant that it is a “domain name investor” and that it registered the disputed domain name for the purpose of “investing” in a domain name by selling, renting, or otherwise transferring the domain name for a sum in excess of its costs. Complainant also contends that, in response to Complainant’s request that Respondent transfer the disputed domain name, Respondent demanded to be compensated for the thousands of dollars it cost to acquire the disputed domain name. Complainant further alleges that a link on the disputed domain name suggests that the name is for sale and, after clicking on the link, Internet users are forwarded to a Go Daddy domain name search tool website, which states that the disputed domain name is a “premium domain name” and is currently for sale for $8,800. The Panel finds that Respondent offered to sell the disputed domain name and accordingly the Panel also finds that such an offer indicates bad faith registration and use pursuant to Policy ¶ 4(b) (i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Secondly, Complainant argues that Respondent has had several claims brought against it under the UDRP and that, in each of those cases, the disputed domain name was transferred to the appropriate Complainant. See, e.g., Mead Johnson & Co. LLC v. LeaseDomains.com, FA1417912 (Nat. Arb. Forum Jan. 15, 2012); Texas Dep’t of Transp. v. LeaseDomains.com, FA1432014 (Nat. Arb. Forum Apr. 10, 2012). The Panel finds that this is evidence of Respondent exhibiting a pattern of bad faith registration and further evidence that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b) (ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Thirdly, Complainant alleges that Respondent registered and uses the disputed domain name for the purpose of disrupting Complainant’s business. Complainant argues that, by registering the disputed domain name with Complainant’s UBD mark and providing links to Complainant’s competitors, Respondent has the clear goal to disrupt the business of Complainant by diverting Internet traffic meant for Complainant to Complainant’s competitors. The Panel finds that Respondent’s registration and use is for the purpose of disrupting Complainant’s business and that this is evidence of bad faith pursuant to Policy ¶ 4(b) (iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Fourthly, Complainant alleges that Respondent registered and uses the disputed domain name to attract Internet users for commercial gain by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. Complainant argues that, by registering a confusingly similar domain name and hosting pay-per-click links to Complainant’s competitors, Respondent is attracting Internet users and commercially benefiting from that confusion. The Panel finds that Respondent is commercially benefiting from such attraction and therefore also finds bad faith registration and use pursuant to Policy ¶ 4(b) (iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the domain name using the UBD mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubd.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 1, 2012
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