Pearson Education, Inc. v. Osman Atasoy / ARMA WEB
Claim Number: FA1411001589099
Complainant is Pearson Education, Inc. (“Complainant”), represented by Ryan Bricker of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Osman Atasoy / ARMA WEB (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pearsonsuccessnet.us> and <pearsonsuccessnetplus.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2014; the National Arbitration Forum received payment on November 7, 2014.
On November 8, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <pearsonsuccessnet.us> and <pearsonsuccessnetplus.us> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”)..
On November 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@pearsonsuccessnet.us, postmaster@pearsonsuccessnetplus.us. Also on November 13, 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 December 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the exclusive owner of all trademark rights in and to the SUCCESSNET® mark, as well as the domain name PEARSONSUCCESSNET.COM. Complainant owns U.S. Registration No. 3,317,262 for the SUCCESSNET® mark covering “vocational educational services, namely, a password protected website through which school district administrators, teachers, students and parents may access, namely, online curriculum, coursework, and testing products and progress reports” in International Class 41 (filed August 29, 2005, issued October 23, 2007). Complainant’s parent company, Pearson PLC, also owns many registrations for the PEARSON® mark within the United States and worldwide, including U.S. Registration Nos. 2,599,724; 2,652,792; 2,679,355; 2,691,830; 2,694,359; and 2,600,081. The aforementioned registrations are valid, subsisting and in full force and effect. Copies of these registrations are annexed hereto as Annex C. Complainant first used its SUCCESSNET® mark at least as early as October 2002, and launched its PEARSONSUCCESSNET.COM website at least as early as 2004. Complainant uses the mark and website in connection with an extraordinarily-popular portal that connects teachers, students, and parents, facilitating communication, access to course materials, and visibility into a student’s learning process.
Complainant’s rights in the PEARSONSUCCESSNET.COM name and trademark were confirmed as early as 2009, when the panel in Pearson Education, Inc. v. Er Bai Wu, WIPO Case No. D2009-1582 (Jan. 20, 2010) transferred the <pearsonsuccessnetnet.com> domain name to Complainant based in part on its “reputation and goodwill in relation to its PEARSONSUCCESSNET.COM learning management system and . . . common law trade mark rights in respect of that name.” The SUCCESSNET® mark, PEARSON® mark and the PEARSON SUCCESSNET and PEARSONSUCCESSNET.COM marks are hereinafter collectively referred to as the “Complainant’s Marks” or the “Marks.”
FACTUAL AND LEGAL GROUNDS (usTLD Rule 3(c)(ix))
This Complaint is based on the following factual and legal grounds:
A. Complainant’s Trademark Rights in the Infringing Domain Names
1. Complainant is the global leader in educational publishing. More than 100 million people worldwide use Complainant’s print and digital materials and resources. (“Pearson International Brochure”). Complainant’s educational materials are among the most respected in the industry and include offerings in virtually all subjects, for every age and level of student, from pre-kindergarten through twelfth grade, as well as through higher education and professional life.
2. A cornerstone to Complainant’s K-12 business is its learning management system, PEARSON SUCCESSNET, located at PEARSONSUCCESSNET.COM.[1] The PEARSON SUCCESSNET system acts as a single workplace for teaching and learning. Complainant instituted its PEARSON SUCCESSNET at least as early as 2002 by offering an online portal for access to Complainant’s electronic texts and materials for the K-12 market. Today, PEARSONSUCCESSNET.COM serves as an online platform that not only delivers online content to students, but also provides numerous other services for teachers, students, and parents. Teachers can place assignments on the website, track student’s grades, and provide online tests and quizzes. Students may then visit the website for tasks such as retrieving assignments, taking tests and quizzes, and accessing their texts online. Administrators may also access the PEARSON SUCCESSNET system to retrieve progress reports and notes about particular students, and parents can access the system to assist their child with his or her assignments.
3. Complainant offers supporting activities and materials through its PEARSON SUCCESSNET learning management system for students in kindergarten through twelfth grade, in addition to 300 education consultants, engineers, technology consultants and professional development personnel whom offer exceptional support to facilitate successful implementation of Complainant’s services. When Complainant’s texts are purchased by a particular school district, access to PEARSON SUCCESSNET is granted to the teacher. If the teacher decides to use the PEARSON SUCCESSNET learning management system, he or she can either (a) register each student and provide the student with a username and password; or (b) provide the student with the website and code so he or she can request a username and password independently. In either event, the student must first visit the PEARSONSUCCESSNET.COM website to log on; there is no other way for the student to access his or her PEARSON SUCCESSNET materials.
4. The PEARSON SUCCESSNET system is exceptionally well-known and popular within the education field. Indeed, Complainant’s Pearson School Companies hold the leading position in student data management at both the district and state level. Id. As such, Complainant’s Marks, used to brand and promote the PEARSON SUCCESSNET system, have accumulated tremendous goodwill and are among Complainant’s most valuable assets.
B. Respondent’s Infringing Acts
5. This is a clear case of a cybersquatter, Respondent Osman Atasoy, who has knowingly reproduced and appropriated Complainant’s Marks – that is, the registered PEARSON® and SUCCESSNET® marks, as well as Complainant’s PEARSON SUCCESSNET and PEARSONSUCCESSNET.COM – verbatim in its Infringing Domain Names. Respondent registered the PEARSONSUCCESSNET.US domain name on September 6, 2013 and the PEARSONSUCCESSNETPLUS.US domain name on September 25, 2013, long after Complainant’s Marks became well known, and long after Complainant registered its Marks in the United States.
6. Turning to the website content itself, Respondent also has reproduced graphic and text elements from Complainant’s PEARSON SUCCESSNET portal and PEARSONSUCCESSNET.COM website, including but not limited to the following: (1) Respondent makes unauthorized use of Complainant’s Marks in the website content; (2) Respondent displays an explanation of Complainant’s PEARSON SUCCESSNET services; (3) Respondent makes unauthorized use of the PEARSON SUCCESSNET logo on the PEARSONSUCCESSNET.US website and a confusingly similar rendition of the PEARSON SUCCESSNET logo on the PEARSONSUCCESSNETPLUS.US website (displayed below);
<redacted>
(4) Respondent reproduces Complainant’s PEARSON SUCCESSNET login form on the PEARSONSUCCESSNET.US homepage and displays archived images of the PEARSON SUCCESSNET login form on the resolving webpage for the link titled “Historical”; (5) Respondent falsely claims on the PEARSONSUCCESSNET.US homepage that the webpage is “the homepage to Pearson's online education portal”; (6) Respondent displays an internal hyperlink labeled “pearsonsuccessnet.com” in the content of the PEARSONSUCCESSNET.US homepage which resolves back to the PEARSONSUCCESSNET.US homepage; and (7) Respondent redirects users who enter their username and password into the form on the PEARSONSUCCESSNET.US login page to Complainant’s own PEARSONSUCCESSNET.COM login webpage. The aforementioned conduct is hereinafter collectively referred to as “Respondent’s Infringing Acts.”
7. In addition to using the Infringing Domain Names and other content to masquerade as Complainant – or at least to deceive visitors into believing that Respondent is endorsed by or affiliated with Complainant – Respondent uses the Infringing Domain Names to link consumers to other commercial sites that advertise services or education products that allegedly compete with those offered by Complainant under the Marks, presumably for compensation in the form of “click-through” payments. Specifically, Respondent’s bad faith intent is to capitalize on Complainant’s Marks by luring consumers looking for Complainant’s services, then diverting them to others’ websites (through the “Google AdChoices” service) that offer competing services using advertising hyperlinks labeled, inter alia, “Pearson Online Textbook,” “Pearson Success Net,” “Pearson,” on the PEARSONSUCCESSNET.US website and hyperlinks labeled, inter alia, “Help with Math Problem,” “Basic Math and Algebra,” and “College Student Success,” on the PEARSONSUCCESSNETPLUS.US website.
8. Respondent’s Infringing Acts and other conduct leave no doubt that Respondent registered the Infringing Domain Names with the malicious intent to trade on Complainant’s trademarks and goodwill. In fact, Respondent persisted in its infringing and harmful conduct even after receiving explicit notice from Complainant through Respondent’s host ISP. On or about May 13, 2014, Complainant’s counsel sent an email notice to the hosting provider of the Infringing Domain Names, Hosting Solutions International, Inc. d/b/a Server4You (“Server4You”), informing Server4You of Respondent’s Infringing Acts and requesting that the PEARSONSUCCESSNET.US website be disabled. On May 22, 2014, Server4You confirmed in writing that it had disabled the PEARSONSUCCESSNET.US website as of May 19, 2014. On May 22, 2014, Respondent moved the contents of the PEARSONSUCCESSNET.US domain name to a new hosting provider, SadeceHosting.com.
9. Respondent has knowingly appropriated Complainant’s Marks in bad faith without any conceivable legitimate interest or rights in the Infringing Domain Names. Accordingly, under a straightforward application of the trademark law principles, Rules, and Policy governing this Proceeding, Complainant is entitled to an order requiring transfer of the Infringing Domain Names.
C. Legal Analysis
The Infringing Domain Names are Identical or Confusingly Similar to Complainant’s Mark (usTLD Rule 3(c)(ix)(1); usTLD Policy ¶4(a)(i))
10. Respondent’s Infringing Domain Names reproduce Complainant’s Marks – that is, the registered PEARSON® and SUCCESSNET® marks,[2] as well as Complainant’s PEARSON SUCCESSNET and PEARSONSUCCESSNET.COM marks – in their entirety, with the addition of the United States Top-Level Domain (usTLD) “.us.” Indeed, numerous courts and UDRP panels have recognized that “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark.” Philip Morris USA Inc. v. Doug Nedwin/SRSPlus Private Registration, WIPO Case No. D2014-0339 (May 1, 2014); see also PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). Moreover, several UDRP panel decisions have found that the addition of the “.us” usTLD is irrelevant in an analysis of similarity. See, Tumblr, Inc. v. zhao xiaobing, FA1303001492271 (Nat. Arb. Forum May 14, 2013) (in finding <tumblr.us> confusingly similar to the TUMBLR mark, the panel stated, “[t]he addition of a ccTLD to a domain name does not negate confusing similarity under Policy ¶4(a)(i)”). Finally, UDRP Panels have consistently held that the addition of a generic or descriptive term, such as the addition of “plus” to the PEARSONSUCCESSNETPLUS.US domain name, is not sufficient to distinguish the domain name from the Complainant’s Mark. See Yahoo! Inc. v. Wooyoun Cho, FA0302000146934 (Nat. Arb. Forum April 16, 2003) (holding that the <yahooplus.com> domain name is confusingly similar to Complainant’s YAHOO mark because “Complainant’s mark is the dominant element of the disputed domain name and the addition of the descriptive term ‘plus’ and the gTLD ‘.com’ does not sufficiently differentiate Respondent’s <yahooplus.com> domain name.”). Based on the foregoing, the Infringing Domain Names are confusingly similar, if not identical to Complainant’s Marks as a matter of law under the Policy.
11. Based on Complainant’s clear rights in the Marks, along with the widespread popularity of Complainant’s PEARSON SUCCESSNET service and the public’s resulting association of Complainant’s Marks with Complainant, Respondent’s registration and use of the Infringing Domain Names is likely to cause consumer confusion as to the relationship between Complainant and Respondent. As such, Respondent’s Infringing Domain Names are confusingly similar to Complainant’s Marks.
Respondent Has No Right or Legitimate Interest in the Infringing Domain Names (usTLD Rule 3(c)(ix)(2); usTLD Policy ¶4(a)(ii))
12. Respondent has no right or legitimate interest in Complainant’s Marks or in the Infringing Domain Names. Complainant has never authorized Respondent to use the PEARSON SUCCESSNET mark or name in any way.
13. Respondent’s Attempt to Pass Itself Off as Complainant Does Not Constitute a Bona Fide Offering of Goods or Services or Legitimate Noncommercial or Fair Use. Respondent’s Infringing Domain Names divert Internet users seeking Complainant’s services to Respondent’s websites. Moreover, Respondent’s Infringing Acts demonstrate Respondent’s attempt to deceive Internet users and pass itself off as the Complainant when in fact there is no relationship between the parties. It is well-established that “using a confusingly similar domain name to resolve to a website that attempts to pass itself off as the complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.” Broadcom Corporation, a California corporation v. shenzhen / billy, FA1311001528945 (Nat. Arb. Forum Dec. 19, 2013) (finding no rights or legitimate interests in the disputed domain name that leads to a Chinese translation of complainant’s website owned by a Chinese company impersonating Complainant and pretending to be an authorized agent of Complainant); see also Société des Produits Nestlé S.A. v. Rova Andrianjohany c/o Locmad, WIPO Case No. D2014-0271 (Apr. 16, 2014) (finding no rights or legitimate interests where respondent used the <cafe-dolce-gusto.com> domain to resolve to a website included the same images and designs as those on the Complainant’s official website and offered the Complainant’s products for sale without authorization.).
14. Respondent is Using the Infringing Domain Names Solely for Commercial Gain. Respondent does not provide, nor is authorized to provide any of the Complainant’s services described on the homepage of the Infringing Domain Names. Rather, the Infringing Domain Names are ostensibly used as a pay-per-click or sponsored listings website to link consumers to other commercial sites that advertise services or education products that allegedly compete with those offered by Complainant. Moreover, Respondent is presumably compensated for displaying such links in the form of “click-through” payments. Multiple UDRP panels have held that the use of hyperlinks as part of a commercial scheme to generate profit via click-through fees or other arrangements is not a bona fide offering of goods or services that can establish rights or legitimate interests in a disputed domain name. See, e.g., Pearson Education, Inc. v. Er Bai Wu, D2009-1582 (WIPO Jan. 20, 2010) (finding no rights or legitimate interests in respondent’s use of the <pearsonsuccessnetnet.com> domain to derive Pay-Per-Click revenue through links redirecting users to sites/businesses engaged in the same field of activity as the Complainant”); see also American Century Proprietary Holdings, Inc. v. Travis Martin, FA0905001262486 (Nat. Arb. Forum Jun. 23, 2009) (holding no rights or legitimate interests where domain name resolves to a parked website and Respondent presumably generates click-through fees from such use); Genzyme Corp. v. Keyword Marketing, Inc., FA0706001007979 (Nat. Arb. Forum Jul. 17, 2007) (holding no rights or legitimate interests where domain name resolves to a pay-per-click website featuring sponsored links to various commercial websites).
15. Respondent Is Not Commonly Known By the Infringing Domain Name. Furthermore, nothing in Respondent’s WHOIS information demonstrates that Respondent is commonly known by the Infringing Domain Names. Respondent’s name is Osman Atasoy, and its “organization” is ARMA WEB – neither even remotely corresponds to Complainant’s Marks or to the Infringing Domain Name. See, e.g., Yahoo! Inc. v. Junlong Zheng c/o OnlineNIC, FA 1142567 (Nat. Arb. Forum Mar. 25, 2008) (holding respondent has no rights or legitimate interests because there is no evidence in the record or WHOIS information indicating respondent is commonly known by the disputed domain name and because Complainant did not authorize respondent to use its YAHOO mark); Yahoo! Inc. v. John Morgan, FA 1195421 (Nat. Arb. Forum July 9, 2008) (holding that respondent was not common known by the disputed domain names <yahoocupid.com> and <yahoocupid.net> since the WHOIS domain name registration information for the disputed domains listed the registrant as “John Morgan.”).
Respondent Registered And Used The Infringing Domain Names In Bad Faith (usTLD Rule 3(c)(ix)(3); usTLD Policy ¶4(a)(iii))
16. Respondent Undoubtedly Registered the Infringing Domain Names with Actual Knowledge of Complainant’s Rights in its Marks. First, the Complainant made use of its SUCCESSNET® Mark at least as early as 2002 and registered the PEARSONSUCCESSNET.COM domain name at least as early as 2004. Respondent did not register the Infringing Domain Names until September 2013, well after the Marks were recognized and relied upon by online consumers throughout the world to identify and distinguish Complainant’s website and services from the goods and services of others. There is no question that Respondent was aware of Complainant’s rights in its Marks prior to registering the Infringing Domain Names. As many Panels have observed, “[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.” Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum, Oct. 24, 2002).
17. Respondent Intentionally Attempted to Create Confusion and Attract Internet users to the Infringing Domain Names by Impersonating the Complainant. Respondent’s Infringing Acts confirm that it had knowledge of Complainant’s Marks prior to registering and using the Infringing Domain Names. Specifically, Respondent endeavored to use Complainant’s trademarks, web content, and descriptions of Complainant’s own services to masquerade as Complainant, thereby deceiving consumers and redirecting visitors from Complainant’s sites to the Infringing Domain Names. Respondent’s behavior is clear evidence of bad faith registration and use. See James Murtagh M.D. v. Clark Baker, Office of Medical and Scientific Justice, D2014-0711 (WIPO June 26, 2014) (“the Respondent's intentionally misleading the public by holding himself out via the disputed domain name as the Complainant constitutes bad faith in registration and use of the disputed domain name”).
18. Respondent is using the Infringing Domain Names to Divert Internet Traffic for Respondent’s Financial Gain. Respondent’s bad faith use of the Infringing Domain Names is further evidenced by the fact that Respondent is using the Infringing Domain Names to capture click-through revenue. Given the commercial purpose of the website at the Infringing Domain Name, there can be no doubt that Respondent is acting in bad faith. See, e.g., Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when the domain name resolves to commercial websites that respondent was using the domain name in bad faith); Hilton Group plc v. Forum LLC, WIPO Case No. D2005-0244 (use of domain name to attract users for commercial gain is evidence of bad faith); Yahoo! Inc. et al. v. J. Lee, FA0503000436932 (NAF April 26, 2005) (holding respondent’s use of the domain names to generate click-through fees from third party links on its websites constitutes bad faith because “[r]espondent is unfairly and opportunistically benefiting from the goodwill and reputation associated with Complainant’s marks).
19. Respondent Has Demonstrated a Pattern of Bad Faith Use and Registration. Respondent has registered and uses the Infringing Domain Names with the bad faith intent to trade off the goodwill invested in Complainant’s Marks. Registration of multiple confusingly similar domain names to complainant’s mark is indicative of a pattern of bad faith registration. See Yahoo! Inc. v. VALUE DOMAIN / DIGIROCK, INC.; DIGIROCK, INC. / DOMAIN SECTION VALUE DOMAIN, FA1206001450315 (Nat. Arb. Forum Jul. 6, 2012). (“the Panel finds that Respondent’s registration of multiple disputed domain names in one instance is indicative of a pattern of bad faith registration and use under Policy ¶4(b)(ii).”).
20. In conclusion, based on the Respondent’s conduct discussed above, it is clear that Respondent registered and has used the Infringing Domain Names in bad faith and in violation of the Policy. Respondent registered a domain that is identical and confusingly similar to Complainant’s Marks, and has used the Infringing Domain Names to trade on Complainant’s goodwill and reputation, thereby causing Complainant significant harm.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 uses the SUCCESSNET mark for vocational educational services, notably a learning management system and online portal for access to Complainant’s electronic texts and materials. Complainant has trademark rights in the SUCCESSNET mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,317,262, registered Oct. 23, 2007). Complainant’s parent company owns the PEARSON mark through another USPTO registration (e.g., Reg. No. 2,599,724, registered July 23, 2002). Complainant’s USPTO registrations satisfy the initial requirements of Policy ¶4(a)(i), even though Respondent lives in Turkey. At this stage of the proceeding, all Complainant must do is show SOME rights to the mark, not whether or not Complainant’s rights are superior. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under [UDRP] ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Complainant claims the <pearsonsuccessnet.us> and <pearsonsuccessnetplus.us> domain names are confusingly similar to the PEARSON and SUCCESSNET marks. Adding the ccTLD “.us” is irrelevant to the confusing similarity analysis under Policy ¶4(a)(i) because they are required by domain name syntax rules. The addition of the generic descriptive terms “net” and “plus” are not sufficient to distinguish the subject domain names from the incorporated marks. Prior panels have determined such minor alterations are insufficient to adequately distinguish the names from the incorporated marks and this Panel concurs with that analysis. See McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008) (finding confusing similarity where Respondent combined Complainant’s GLENCOE and MCGRAW-HILL marks to form the <glencoemcgrawhill.com> domain name); Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under [UDRP] ¶4(a)(i)). The <pearsonsuccessnet.us> and <pearsonsuccessnetplus.us> domain names confusingly similar to the PEARSON and SUCCESSNET marks pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interest in the disputed domain names. Respondent did not submit a Response, meaning there is no affirmative evidence in the record showing Respondent is the owner of any trademarks or service marks similar to the <pearsonsuccessnet.us> and <pearsonsuccessnetplus.us> domain names.
Complainant claims Respondent is not commonly known by the disputed domain names as demonstrated by the WHOIS information listing “Osman Atasoy” of “ARMA WEB” as registrant. There is no obvious similarity between the registrant’s name and the disputed domain names. Based on the record, there is no basis for finding Respondent to be “commonly known as” <pearsonsuccessnet.us> and <pearsonsuccessnetplus.us> domain names. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant claims Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent promotes pay-per-click listings directing users to other commercial sites advertising education services or products which compete with Complainant. Respondent’s web sites are similar to Complainant’s legitimate web site, suggesting Respondent is trying to pass itself off as Complainant. Both resolving websites feature Complainant’s mark and some promoted content, both in competition and unrelated to Complainant, such as “Printable Math Worksheets,” “Spelling Games,” and “Automatic Homework Assessments.” The website at <pearsonsuccessnet.us> features Complainant’s mark, logo, and slogan. Respondent’s use of the domain names to direct users to services and products in competition with Complainant demonstrate no Policy ¶4(c)(ii) bona fide offering of goods or services, or Policy ¶4(c)(iv) legitimate noncommercial or fair use of the domain names. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to [UDRP] ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to [UDRP] ¶4(c)(iii).”). Respondent’s efforts to impersonate Complainant demonstrates Respondent’s lack of Policy ¶4(a)(ii) rights. 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 [UDRP] ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to [UDRP] ¶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).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in a pattern of bad faith use and registration as demonstrated by Respondent’s registration of multiple confusingly similar domain names to Complainant’s marks. This Panel does not find such activity constitutes bad faith registration and use without some additional fact(s). Complainant has not been prevented from reflecting its mark in a domain name.
Complainant claims Respondent has intentionally attempted to mislead users to the disputed domain names by impersonating Complainant in furtherance of Respondent’s own commercial website. The <pearsonsuccessnet.us> domain name resolves to feature Complainant’s mark, logo, and slogan. Both disputed domain names resolve to promote products and services related to Complainant or in competition with Complainant’s educational services. Respondent’s efforts to impersonate Complainant and/or promote click-through links to goods and services in competition with Complainant supports a finding of Policy ¶4(b)(iv) bad faith registration and use. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the [UDRP].”).
Complainant claims Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the marks, and therefore in bad faith. In light of the use of the domain names, this Panel would have to agree Respondent actually knew about Complainant’s marks with Respondent registered the domain names. This constitutes bad faith registration and use under Policy ¶4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <pearsonsuccessnet.us> and <pearsonsuccessnetplus.us> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, December 23, 2014
[1] Prior to registering the PEARSONSUCCESSNET.COM website, Complainant used the websites PHSUCCESSNET.COM and SFSUCCESSNET.COM for its SUCCESSNET® program.
[2] Although Respondent appears to reside in Turkey, since Complainant has trademark rights in and to the Marks in the U.S., the Complainant is deemed to have trademark rights in the Marks under Policy. See Tumblr, Inc. v. zhao xiaobing, FA1303001492271 (Nat. Arb. Forum May 14, 2013) (finding that since the Policy “does not require that the mark be registered in the country in which Respondent operates[,]… Complainant’s registration of the TUMBLR mark with the USPTO proves its rights in the mark under Policy ¶4(a)(i)).”).
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