American Council on Education and GED Testing Service LLC v. Domain Hostmaster / Protopixel Pty Ltd
Claim Number: FA1611001701858
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 Hostmaster / Protopixel Pty Ltd (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freeged.com>, registered with Fabulous.com Pty Ltd.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2016; the Forum received payment on November 7, 2016.
On November 9, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <freeged.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 November 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@freeged.com. Also on November 15, 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 December 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 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
Complainant is a higher education organization which represents presidents and chancellors of all types of U.S. accredited, degree-granting institutions, including colleges and universities. Complainant has rights in the GED mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,321,397, registered Feb. 19, 1985). Respondent’s <freeged.com> is confusingly similar, as it includes the GED mark in its entirety, merely differing through the addition of the descriptive or generic term “free,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <freeged.com> domain name, and has no affiliation, connection, endorsement or association with Complainant. The disputed domain name resolves to a parked page containing sponsored links to other commercial sites advertising services or products that compete with those offered by Complainant. Respondent presumably receives compensation each time an Internet user clicks one of the links. Respondent’s use of Complainant’s mark to link to competing services and benefit commercially is not a bona fide offering of goods or services or legitimate noncommercial or fair use under the Policy.
Respondent’s registration and use of the disputed domain name is in bad faith under the Policy. Respondent is attempting to divert visitors to Complainant’s competitors and attract them for commercial gain, evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). Further, Respondent had constructive knowledge of Complainant ACE’s rights in the GED mark when Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: American Council on Education and GED Testing Service LLC. Complainants contend that they have joint standing here, as they assert that GED Testing Service LLC is formerly a division of American Council on Education, that has since become a separate legal entity, but that GED Testing Service LLC performs all of the same tasks it did while a division of American Council on Education. American Council on Education claims ownership of the GED mark at issue here, but licenses GED Testing Service LLC exclusive use of the mark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006)(“ It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity”). See also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (The panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.) See also Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.).
The Panel accepts that the evidence in the Complaint establishes a sufficient nexus or link between the Complainants and will treat them as a single entity in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <freeged.com> domain name.
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(f), 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 (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 ACE claims rights in the GED mark based on registration of the mark with the USPTO (e.g., Reg. No. 1,321,397, registered Feb. 19, 1985). Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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). The Panel therefore holds that Complainant ACE’s registration of the GED mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that <freeged.com> is confusingly similar to the GED mark, as the domain name contains the mark in its entirety, and differs only by the addition of the word “free” and the gTLD “.com” In a recent decision, it was held that “[t]he term ‘free’ is generic, and therefore disregarded under a Policy ¶ 4(a)(i) analysis.” Eastman Kodak Company v. free enda / upot, FA 1698767 (Forum Nov. 23, 2016). The addition of generic or descriptive words and a gTLD does not adequately distinguish a domain name from a complainant’s mark in a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain.). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to the GED mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 (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 argues that Respondent has no rights or legitimate interests in <freeged.com> as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the GED mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, panels have found evidence of lack of rights or legitimate interests in a disputed domain name where there is no evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “Domain Hostmaster” of “Protopixel Pty Ltd.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in <freeged.com> is evidenced by its failure to use the domain name for a bona fide offering of goods or services or legitimate non-commercial or fair use. The disputed domain name resolves to a parked page that hosts links to commercial sites that offer service or education products which compete with those offered by Complainant. Presumably, Respondent receives compensation in the form of “click-through” payments for each of the links an Internet user clicks. Panels have found that the hosting of links to products or services that compete with a complainant does not amount to a bona fide offering of goods or services or a noncommercial or fair use of a disputed domain. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). The Panel agrees that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate non-commercial or fair use and thus evidence of its lack of rights or legitimate interests in the disputed domain name.
Complainant has proved this element.
Complainant argues that Respondent’s diversion of traffic to a website that links Internet users to third-party websites offering and selling goods and services that directly compete with Complainant for commercial gain shows bad faith under Policy ¶¶ 4(b)(iii) and (iv). The disputed domain name resolves to a site that hosts links to direct competitors of Complainant. Linking to competitors has been found to be bad faith under both Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstore, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The Panel agrees and finds that Respondent’s registration and use of the disputed domain name was in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s mark at the time of registration. Complainant contends that the numerous U.S. and international trademark applications and registrations create a presumption that Respondent knew or should have known of Complainant’s rights in the GED mark. While constructive knowledge is not applicable under the Policy (see Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”)), a totality of evidence that a respondent was on notice of a complainant’s rights in a mark has been used to support a finding of bad faith under Policy ¶ 4(a)(iii). Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). The Panel therefore finds that Respondent’s registration and use was in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freeged.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: December 22, 2016
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