Next Education, LLC v. vibhooti kishor / Animation Mentor
Claim Number: FA1206001450133
Complainant is Next Education, LLC (“Complainant”), represented by Barbara L. Friedman of Cobalt, LLP, California, USA. Respondent is vibhooti kishor / Animation Mentor (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <animationmentors.org>, registered with SiliconHouse.Net Pvt. Ltd. (R1901-LROR).
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2012; the National Arbitration Forum received payment on June 25, 2012.
On July 8, 2012, SiliconHouse.Net Pvt. Ltd. (R1901-LROR) confirmed by e-mail to the National Arbitration Forum that the <animationmentors.org> domain name is registered with SiliconHouse.Net Pvt. Ltd. (R1901-LROR) and that Respondent is the current registrant of the name. SiliconHouse.Net Pvt. Ltd. (R1901-LROR) has verified that Respondent is bound by the SiliconHouse.Net Pvt. Ltd. (R1901-LROR) 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 July 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@animationmentors.org. Also on July 11, 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 August 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
Respondent’s <animationmentors.org> domain name, the domain name at issue, is confusingly similar to Complainant’s ANIMATION MENTOR mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a sufficient Response in this proceeding.
Since its inception in 2003, Animation Mentor has made continuous, extensive,
and prominent use of its ANIMATION MENTOR name and mark in connection
with educational services in the field of animation, thus establishing strong rights in this name and mark. Complainant has rights in the ANIMATIONMENTOR mark through its registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,147,035 registered September 19, 2006. Complainant also has rights in the ANIMATIONMENTOR.COM mark with the USPTO (Reg. No. 3,674,545 registered Aug. 25, 2009) as well as rights in the ANIMATIONMENTOR.COM THE ONLINE ANIMATION SCHOOL mark (Reg. No. 3,252,616 registered June 12, 2007). Respondent registered the domain name at issue on April 21, 2012, which was long after Complainant’s first registration for the ANIMATIONMENTOR mark. Respondent is not commonly known by the <animationmentors.org> domain name and is not licensed or permitted to use Complainant’s ANIMATIONMENTOR mark. Respondent is passing its <animationmentors.org> website off as Complainant’s while offering directly competing services and is therefore not using the <animationmentors.org> website for any legitimate purpose. Respondent failed to submit a Response.
However, he did submit e-mail correspondence to the Forum stating that its business is registered under the Indian Trust Act 1882 and that it provides education in the animation industry in Bihar, India exclusively. Respondent claims it was unaware of Complainant’s business and ANIMATIONMENTOR mark. Respondent closes by explaining that if its <animationmentors.org> domain name is cancelled or transferred, it will lose Respondent about $10,000.
The Panel finds that this email from Respondent is not sufficiently in compliance with the terms of the Policy to be considered a Response. Accordingly, the case will be decided as if it were a default proceeding.
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.”).
Complainant contends that it has established strong rights in the ANIMATIONMENTOR mark based on its continuous, extensive and prominent use or the mark in connection with educational services as well as its registrations with the USPTO (Reg. No. 3,147,035 registered September 19, 2006). Complainant also claims rights in the ANIMATIONMENTOR.COM mark through its trademark registration with the USPTO (Reg. No. 3,674,545 registered August 25, 2009) as well as rights in the ANIMATIONMENTOR.COM THE ONLINE ANIMATION SCHOOL mark (Reg. No. 3,252,616 registered June 12, 2007). Typically, panels find that registration with the USPTO establishes rights in a given mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also 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). The Panel notes that, to establish rights in a mark, a complainant need not register the mark in the country in which the respondent resides or operates. 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). Based on this analysis, the Panel finds that Complainant possesses rights in the ANIMATIONMENTOR, ANIMATIONMENTOR.COM, and ANIMATIONMENTOR.COM THE ONLINE ANIMATION SCHOOL marks pursuant to Policy ¶ 4(a)(i).
Respondent’s <animationmentors.org> domain name is confusingly similar to Complainant’s ANIMATIONMENTOR and ANIMATIONMENTOR.COM marks. Pluralizing a mark and adding a generic top-level domain (“gTLD”) “.org” does not distinguish it from a given mark. Prior panels have agreed with Complainant’s assertions. See Irwin Financial Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (holding that the addition of a generic top-level domain such as “.com” and “.org” to a disputed domain name is irrelevant to the Policy 4(a)(i) analysis, as a top-level domain is a required element of domain names); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Based on this evidence, the Panel finds that the <animationmentors.org> domain name is confusingly similar to Complainant’s ANIMATIONMENTOR mark.
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has never been commonly known by the registered domain name and thereby has no rights or legitimate interests in the <animationmentors.org> domain name. The WHOIS information lists the registrant as “vibhooti kishor” and registrant organization as “Animation Mentor.” Complainant provided evidence that there is no such entity as “Animation Mentor” registered in India. Respondent has not submitted any further evidence indicating that it is commonly known by the <animationmentors.org> domain name. Based on these facts, the Panel finds that there is no connection between Respondent and the <animationmentors.org> domain name or Complainant’s ANIMATIONMENTOR mark. Accordingly, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is passing its resolving site off as Complainant’s. Respondent’s resolving website contains reference to Complainant’s ANIMATIONMENTOR mark frequently throughout the page as well as an alleged description of what Complainant’s business is. Under Policy ¶ 4(a)(iii), Respondent appears to offer directly competing services through the disputed domain name. Passing off an unaffiliated website as that of a complainant’s is not a bona fide offering of goods or services nor a legitimate noncommercial fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Therefore, Respondent has made no bona fide offering of goods or services nor a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent lures Internet users to Respondent’s site, which features services directly competing with Complainant’s business, thereby disrupting Complainant’s business. Respondent’s website features courses and degrees in animation and filmmaking that are identical to what Complainant offers. Previous panels have found that attempts to disrupt a complainant’s business is bad faith registration and use under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Respondent is attracting and confusing Internet users seeking commercial gain in violation of Policy ¶ 4(b)(iv). Respondent’s resolving website features the type of courses and degrees in animation and filmmaking that are substantially identical to those offered by Complainant, thereby confusing prospective customers of Complainant. Respondent is aiming to confuse Internet users by implying a sponsorship or official relationship between the parties where none exists. The Panel presumes that Respondent is commercially profiting from diverting Internet users away from Complainant’s business to Respondent’s directly competing business. Based on these facts, the Panel finds that Respondent registered and uses the <animationmentors.org> domain name in bad faith pursuant to Policy ¶4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <animationmentors.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 9, 2012
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