Khan Academy, Inc. v. Peter Misek / Elephant Orchestra, a.s.
Claim Number: FA1404001553502
Complainant is Khan Academy, Inc. (“Complainant”), represented by John L. Slafsky of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Peter Misek / Elephant Orchestra, a.s. (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kahnacademy.org>, registered with Moniker Online Services 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2014; the National Arbitration Forum received payment on April 10, 2014.
On April 11, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <kahnacademy.org> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 April 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2014 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@kahnacademy.org. Also on April 15, 2014, 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 8, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1. Complainant has rights in the KHAN ACADEMY mark, used in connection with free online education tools. Complainant owns registrations for the KHAN ACADEMY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,168,128 registered July 3, 2012, filed May 6, 2011).
2. Complainant has continuously used the KHAN ACADEMY mark in connection with its educational offerings for several years before the <kahnacademy.org> domain name was registered. Complainant is a globally renowned provider of free education services. Complainant has been in business since at least 2006, and Complainant reaches roughly ten million students per month via its online education offerings located at <khanacademy.org> and <khanacademy.com>. Complainant has delivered well over 300 million lessons throughout the world. In 2013, Complainant’s websites received more than 146 million visits. See Complainant’s Exhibit F. Complainant has also been widely recognized for its work by various media outlets. See Complainant’s Exhibit G.
3. Respondent’s <kahnacademy.org> domain name is confusingly similar to Complainant’s KHAN ACADEMY mark. The mark incorporates Complainant’s mark in its entirety, and it only differs from Complainants mark through the transposition of the letters “h” and “a” in the word “Khan.”
4. Respondent does not have rights or legitimate interests in the <kahnacademy.org> domain name.
a. Respondent is not commonly known by the <kahnacademy.org> domain name, and Complainant has not authorized Respondent to use its KHAN ACADEMY mark in any way.
b. The <kahnacademy.org> domain name diverts Internet users to a website containing third-party pay-per-click advertising for education offerings, which are in direct competition with Complainant. See Complainant’s Exhibit L.
5. Respondent registered and is using the <kahnacademy.org> domain name in bad faith.
a. Respondent is disrupting Complainant’s business by using the disputed domain name to promoting a website comprised entirely of advertisements for education offerings in direct competition with Complainant. See Complainant’s Exhibit L.
b. Respondent is attempting to lure Internet users to its pay-per-click advertising website by using a confusingly similar domain name. The resolving website features links to Complainant’s competitors in the education industry. See Complainant’s Exhibit L.
c. Respondent had knowledge of Complainant’s KHAN ACADEMY mark prior to registering the <kahnacademy.org> domain name because Complainant’s mark is well-known.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Khan Academy, Inc. of Mountain View, CA, USA. Complainant is the owner of USA registrations for the mark KHAN ACADEMY, which it has used continuously since at least as early as its registration in 2011, in connection with its provision of internet based education goods and services. Complainant has also provided its goods and services via its website at <khanacademy.org> since the registration of the same in 2007.
Respondent is Peter Misek / Elephant Orchestra, a.s., of Prague, Czech Republic. Respondent’s registrar’s address is listed as Portland, OR, USA.
Respondent registered the <kahnacademy.org> on or about October 10, 2009.
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 it has rights in the KHAN ACADEMY mark, used in connection with free online education tools. Complainant states it owns registrations for the KHAN ACADEMY mark with the USPTO (e.g., Reg. No. 4,168,128 registered July 3, 2012, filed May 6, 2011). Past panels have determined that trademark registration rights date back to the date of filing. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel notes that the registration date for the <kahnacademy.org> domain name predates Complainant’s filing date for all of its trademark registrations. Therefore, the Panel must look to Complainant’s alleged common law rights to determine if Complainant has rights in the KHAN ACADEMY mark pursuant to Policy ¶ 4(a)(i).
The Panel may determine whether Complainant has established common law rights, which past panels have found to be sufficient to meet the burden of establishing rights under Policy ¶ 4(a)(i). See 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).Common law rights require that Complainant’s mark has established a secondary meaning. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). In The Gourmet Depot v. DI S.A. / Administration DomComplainant, FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel stated that evidence relevant to proving secondary meaning “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” In this case, Complainant asserts it has continuously used the KHAN ACADEMY mark in connection with its educational offerings for several years before the <kahnacademy.org> domain name was registered. Complainant states it is a globally renowned provider of free education services. Complainant explains it has been in business since at least 2006, and Complainant reaches roughly ten million students per month via its online education offerings located at <khanacademy.org> and <khanacademy.com>. Complainant notes that it has delivered well over 300 million lessons throughout the world. Complainant also notes that Complainant’s websites received more than 146 million visits in 2013. Complainant observes that it has also been widely recognized for its work by various media outlets. The Panel finds that the evidence provided by Complainant is sufficient to establish a secondary meaning in the KHAN ACADEMY mark, and that Complainant has common law rights in the mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <kahnacademy.org> domain name is confusingly similar to Complainant’s KHAN ACADEMY mark. Complainant observes that the mark incorporates Complainant’s mark in its entirety, and it only differs from Complainant’s mark through the transposition of the letters “h” and “a” in the word “Khan.” The Panel notes that the disputed domain name also removes space that exists between the words in Complainant’s mark as well as adds the generic top-level domain (“gTLD”) “.org.” The Panel notes that transposing letters in a trademark that is incorporated into a disputed domain name does not negate a finding of confusing similarity. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). The Panel further notes that removing a space and adding a gTLD does not sufficiently distinguish a disputed domain name from a trademark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel here finds that Respondent’s <kahnacademy.org> domain name is confusingly similar to Complainant’s KHAN ACADEMY mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant contends that Respondent does not have rights or legitimate interests in the <kahnacademy.org> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its KHAN ACADEMY mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Peter Misek” as the domain name registrant and “Elephant Orchestra, a.s.” as the registrant organization. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Because Respondent was not authorized by Complainant to use the KHAN ACADEMY mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <kahnacademy.org> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that the <kahnacademy.org> domain name diverts Internet users to a website containing third-party pay-per-click advertising for education offerings, which are in direct competition with Complainant. The Panel notes that the links include “Math Practice – Ages 5-15,” “Luminosity Brain Games,” and “Online School.” Past panels have found that using a confusingly similar domain name to operate a pay-per-click website featuring competing third-party links does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with 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))). The Panel here finds that Respondent is not making 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent registered and is using the <kahnacademy.org> domain name in bad faith. Complainant alleges that Respondent is disrupting Complainant’s business by using the disputed domain name to promoting a website comprised entirely of advertisements for education offerings in direct competition with Complainant. The Panel notes that the links include “Math Practice – Ages 5-15,” “Luminosity Brain Games,” and “Online School.” Id. Past panels have found that such conduct does indeed constitute a bad faith disruption pursuant to Policy ¶ 4(b)(iii). See 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 here finds that Respondent registered and is using the <kahnacademy.org> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent is attempting to lure Internet users to its pay-per-click advertising website by using a confusingly similar domain name. Complainant notes that the resolving website features links to Complainant’s competitors in the education industry. The Panel again notes that the links include “Math Practice – Ages 5-15,” “Luminosity Brain Games,” and “Online School.” Id. Prior panels have found that using a confusingly similar domain name to operate a pay-per-click website promoting links to a complainant’s competitors demonstrates bad faith via attraction for commercial gain 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.’”). The Panel here finds that Respondent registered and is using the <kahnacademy.org> domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <kahnacademy.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 22, 2014
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