American Council on Education and GED Testing Service LLC v. Domain Admin / Whois protection, this company does not own this domain name s.r.o.
Claim Number: FA1609001696119
Complainant is American Council on Education and GED Testing Service LLC (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Minnesota, USA. Respondent is Domain Admin / Whois protection, this company does not own this domain name s.r.o. (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gedtesting.com>, registered with Gransy, s.r.o. d/b/a subreg.cz.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically September 29, 2016; the Forum received payment September 29, 2016.
On October 4, 2016, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <gedtesting.com> domain name is registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the names. Gransy, s.r.o. d/b/a subreg.cz verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2016, 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@gedtesting.com. Also on October 4, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 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’s Contentions in this Proceeding:
Complainant has rights in the GED mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No., 1,321,397, registered Feb. 19, 1985). Respondent’s domain name <gedtesting.com> is identical to the GED mark as the addition of the generic term “testing” and the generic top-level domain (“gTLD”) “.com” to the mark does not distinguish the disputed domain name from the mark.
Respondent has no rights or legitimate interests in the <gedtesting.com> domain name. Respondent has no relationship with Complainant and is not commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use with the disputed domain name as Respondent uses the domain name to resolve to a website advertising services that compete with Complainant.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s bad faith is evident from Respondent’s using the disputed domain name to resolve to a website that competes and disrupts Complainant’s business. Respondent also uses the GED mark to confuse and attract Internet users for commercial gain. Respondent should also be deemed as having constructive knowledge of Complainant’s rights in the GED mark.
Respondent’s Allegations in this Proceeding:
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent created the disputed domain name February 16, 2000.
FINDINGS:
Complainant has well-established rights to and legitimate interests in its well-known mark.
Respondent has no such rights or legitimate interests in Complainant’s protected mark.
Respondent registered a domain name that contains in its entirety Complainant’s well-known mark and is confusingly similar to that protected mark.
Respondent registered and used the domain name 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 to 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.
Given 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(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant has rights in the GED mark based on registration of the mark with the USPTO (Reg. No., 1,321,397, registered Feb. 19, 1985). See Compl., at Attached Ex. A. A complainant has rights in a mark based on registration with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant claims that Respondent’s domain name is identical to the GED mark as addition of the generic term “testing” and the gTLD “.com” to the mark does not distinguish the <gedtesting.com> domain name from the mark. Adding a generic term and a gTLD to a mark in a domain name does not differentiate the domain name from the mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel therefore finds that Respondent’s domain name is identical or confusingly similar to the GED mark for the purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 contends that Respondent has no relationship with Complainant, and that Respondent is not commonly known by the disputed domain name. WHOIS information associated with the disputed domain name identifies Respondent as “Domain Admin” of the organization, “Whois protection, this company does not own this domain name s.r.o..” See Client at WHOIS. A respondent is not commonly known by a disputed domain name based on WHOIS information and/or a lack of information to the contrary, even where it is evident that a respondent used a privacy service to mask identifying information. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next contends that Respondent’s domain name is not being used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name <gedtesting.com> resolves to a website offering various “related links” with titles such as “GED Testing,” “Online School,” and “High School Diploma Online.” See Compl., at Attached Ex. C. Clicking on one of these links leads to a page with various advertisements and links to third-party websites such as <gedprepared.com>, <diplomacourse.socialpick.net>, and <free-ged-practice.com>. See Id. Using a confusingly similar disputed domain name to resolve to a website hosting links and advertisements for competing products and services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use). The Panel finds that Respondent does not use the disputed domain name within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the mark contained in its entirety within the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent’s bad faith is evident from Respondent’s using the disputed domain name to resolve to a website that competes and disrupts Complainant’s business. Respondent’s domain name resolves to a website offering advertisements for services that compete with Complainant’s services. See Compl., at Attached Ex. C. Respondent acts in bad faith when using a disputed domain name to offer products or services in competition with those offered by Complainant. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Aizhenhua / Aizhenhua, FA140700157872 (Forum September 17, 2014) (finding that because the complainant operated in the field of automobile parts and services and the respondent was using the disputed domain name to display hyperlinks to companies that operate in the same field, the respondent was disrupting the complainant’s business, demonstrating bad faith according to Policy ¶ 4(b)(iii)). The Panel finds that Respondent acted in bad faith using a Policy ¶ 4(b)(iii) evaluation.
Complainant next argues that Respondent also uses the GED mark to confuse and attract Internet users for commercial gain. Again, Respondent’s domain name <gedtesting.com> resolves to a website that hosts various hyperlinks related to the education services and specifically related to the GED. See Compl., at Attached Ex. C. A respondent using another’s mark to advertise products or services related to the mark is attempting to confuse and attract Internet users for wrongful commercial gain. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (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 finds that Respondent’s domain name functions in a manner that constitutes bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent was on notice of Complainant’s rights in its mark prior to domain name registration because Respondent included the entire mark in the domain name. Complainant states that Respondent ought to be held to a constructive notice standard. While Complainant believes that constructive notice is sufficient, the Panel notes that the trend in UDRP proceedings is to find bad faith only through actual knowledge. See, e.g., BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). However, the Panel also finds that the content of the domain name’s website and the use Respondent made of it, provides evidence that Respondent actually knew about Complainant’s GED mark through related advertisements on the resolving website. As such, the Panel finds that Respondent actually knew of Complainant’s rights in the mark and Respondent acted in bad faith when registering and using the disputed domain name containing Complainant’s protected mark. Such conduct supports findings of bad faith pursuant to Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that requested relief shall be GRANTED.
Accordingly, it is Ordered that the <gedtesting.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 15, 2016.
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