American Council on Education et al. v. Registrant of ged.club et al.

American Council on Education et al. v. Registrant of ged.club et al.
Claim Number: FA1408001577563

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant

The Complainant has proved by documentary evidence being trademark registration, filed along with the URSS Complaint, that they are the registered owner of trademark i.e., “GED” vide Registration No.2,613,984. As noted, the Disputed domain Name <ged.club>, composes of “ged” and “club”. “ged” is identical to the Complainant’s “GED” trademark. “.club” is a generic code top-level domain name (gTLD) suffix. It is non-distinctive and is incapable of differentiating the Disputed Domain Name from the Complainant’s registered trademark. Based on the “GED” being a registered trademark of the Complainant, the Examiner determines that URS 1.2.6.1 (i) covers the domain name at issue in this case.

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

Based on .club WHOIS data it is evident that the Respondent has registered the domain name on May 17, 2014. On the other hand, the Complainant owns trademark registrations in over 35 countries and has first used the GED mark to indentify its goods and services related to educational testing since January 31, 1946 and had registered their trademark “GED”. The fact that the Complainant’s adoption and first use of the registered trademark predates the Respondent’s Disputed Domain Name has the practical effect of shifting the burden of proof to the Respondent in establishing that the Respondent has legitimate rights and/or interests in the Disputed Domain Name. The Respondent is in default and has not filed any Response. Although, the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Arbitral Tribunal can however and does draw evidentiary inferences from the failure of the Respondent to respond. The Complainant has established a prima facie case of lack of rights and legitimate interest and the Respondent has failed to rebut the presumption of absence of rights or legitimate interests. Based on the record, the Respondent does not have rights or legitimate interests in the disputed domain name. Hence, the Examiner determines that URS 1.2.6.2 covers the domain name at issue in this case and that the Respondent has no legitimate right or interest to the domain name.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant

It is well established that the Respondent’s registration and use of the Disputed Domain Name must involve malafides where the registration and use of it was and continues to be made in the full knowledge of the Complainant’s prior rights in the “GED” trademark, and in circumstances where the Respondent did not seek permission from the Complainant, as the owner of the trademark, for such registration and use. The Panel Examiner comes to irresistible determination due to the facts that (i) the Disputed domain Name is identical to the Complainant’s “GED” trademark; (ii) the Respondent’s name does not correspond to the Disputed Domain Name; (iii) the Respondent was aware of the Complainant and its trademark when it registered the Disputed Domain Name; (iv) Respondent offered to sell <ged.club> registration to Complainant for $3,777, in excess of Respondent’s out-of-pocket costs for registering the domain name; (v) Respondent indicated that the domain name was going to be used for a “Global Event Detector” website; v) there is no indication of any authorization to use the Complainant’s mark; and vi) Respondent’s malafide intent to capitalize on Complainant’s GED® mark by luring consumers looking for Complainant’s genuine GED® test and credential, it is lawful to infer that the Disputed Domain Name was registered and is being used in bad faith. Hence, the Examiner determines that URS 1.2.6.3 (a) and (d) covers the domain name at issue in this case and that the domain name was registered and is being used in bad faith.

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

ged.club

	Complainant Submitted: August 29, 2014
	Commencement: August 29, 2014
	Default Date: September 15, 2014
	Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

	Complainant: American Council on Education of Washington, DC, United States of America

	Respondent: Beyond the Dot LTD Domain Administrator of Central, Hong Kong, II, Hong Kong (HK)

	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 Examiner in this proceeding.
	Saravanan Dhandapani, as Examiner

	Procedural Findings:
		Multiple Complainants: There are two Complainants involved in this proceeding. American Council on Education is the Complainant and the GED Testing Service LLC is the Co-Complainant. This Complaint and findings relate to the domain name <ged.club>. No domain name is dismissed from this Complaint.
		Multiple Respondents: No multiple Respondents are involved in this proceeding. This Complaint and findings relate to the domain name <ged.club>. No domain name is dismissed from this Complaint.

	Registries: .CLUB DOMAINS, LLC
	Registrars: 1API GmbH