Pearson Education, Inc. v. Osman Atasoy / ARMA WEB
Claim Number: FA1412001593013
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 <pearsonsuccessnetapp.com>, <pearsonsuccessnetlog.com>, and <pearsonsuccessnetlogin.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2014; the National Arbitration Forum received payment on December 2, 2014.
On December 4, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <pearsonsuccessnetapp.com>, <pearsonsuccessnetlog.com>, and <pearsonsuccessnetlogin.net> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@pearsonsuccessnetapp.com, postmaster@pearsonsuccessnetlog.com, postmaster@pearsonsuccessnetlogin.net. Also on December 4, 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 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 uses PEARSON and SUCCESSNET to promote its online educational services. The United States Patent and Trademark Office ("USPTO") has registered the PEARSON and SUCCESSNET marks (e.g., SUCCESSNET Reg. No. 3,317,262, registered Oct. 23, 2007; PEARSON Reg. No. 2,599,724, registered July 23, 2002).
2. The earliest registration of these domain names was May 9, 2013.
3. The <pearsonsuccessnetapp.com>, <pearsonsuccessnetlog.com>, and <pearsonsuccessnetlogin.net> domain names are all confusingly similar to the PEARSON and SUCCESSNET marks.
4. Respondent registered the <pearsonsuccessnetapp.com>, <pearsonsuccessnetlog.com>, and <pearsonsuccessnetlogin.net> domain names without rights or legitimate interests. First, Respondent has never been known by these domain names. At various times the domain names have been held either in an inactive status or used to host a website where Respondent passes off as Complainant by using Complainant’s trademarks and logos.
5. Respondent registered and is using the <pearsonsuccessnetapp.com>, <pearsonsuccessnetlog.com>, and <pearsonsuccessnetlogin.net> domain names in bad faith. Respondent has engaged in a pattern of bad faith use and registration, based on Respondent’s registration of at least these three infringing domain names.
6. Further, Respondent is capitalizing on the likelihood Internet users will view Respondent’s websites and believe the offerings are associated with Respondent’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PEARSON and SUCCESSNET marks. Respondent’s domain names are confusingly similar to Complainant’s PEARSON and SUCCESSNET marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <pearsonsuccessnetapp.com>, <pearsonsuccessnetlog.com>, and <pearsonsuccessnetlogin.net> domain names, and that Respondent registered and uses the domain names 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 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 uses its PEARSON and SUCCESSNET marks to promote its online educational services. The USPTO has registered the PEARSON and SUCCESSNET marks (e.g., SUCCESSNET Reg. No. 3,317,262, registered Oct. 23, 2007; PEARSON Reg. No. 2,599,724, registered July 23, 2002). These registrations sufficiently establish Complainant’s Policy ¶ 4(a)(i) rights in the respective marks. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant contends that the <pearsonsuccessnetapp.com>, <pearsonsuccessnetlog.com>, and <pearsonsuccessnetlogin.net> domain names are all confusingly similar to the PEARSON and SUCCESSNET marks. Merely combining these marks, and adding generic terms along with the respective gTLDs, is not enough to distinguish the domain names from Complainant’s marks. Thus, the domain names are confusingly similar to Complainant’s marks within the meaning of Policy ¶ 4(a)(i). See 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks); Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent has never been known by these domain names. “Osman Atasoy” is listed as the registrant of record for the domain names in the WHOIS records. The Panel agrees that this information combined with the failure of Respondent to submit a Response constitutes sufficient evidence to find that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). 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 argues that at various times the domain names have been held either in an inactive status or is used to host a website where Respondent attempts to pass off as Complainant by using Complainant’s trademarks and logos. The domain names appear to have been used to promote hyperlinks through a website that explicitly used Complainant’s own marks and logos. This use establishes that Respondent lacks rights or legitimate interests in the use of the domain names as provided in Policy ¶¶ 4(c)(i) and (iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent has engaged in a pattern of bad faith use and registration, based on Respondent’s registration of at least these three infringing domain names. The Panel agrees that bad faith may be found under Policy ¶ 4(b)(ii) from the multiple registration of domain names violating the rights of one complainant. See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”).
Complainant argues that Respondent is capitalizing on the likelihood Internet users will view Respondent’s websites and believe the offerings are associated with Respondent’s business. The evidence submitted by Complainant demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pearsonsuccessnetapp.com>, <pearsonsuccessnetlog.com>, and <pearsonsuccessnetlogin.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 12, 2015
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