American Council on Education and GED Testing Service LLC v. Steve Remley
Claim Number: FA1612001707102
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 Steve Remley (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <my-ged.com>, <freeonlineged.org>, <freegedpracticetest.com>, <gedonline.net>, <gedonlinetest.org>, and <gedonlinediploma.com>, registered with GoDaddy.com, LLC.
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 Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2016; the Forum received payment on December 12, 2016.
On December 13, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <my-ged.com>, <freeonlineged.org>, <freegedpracticetest.com>, <gedonline.net>, <gedonlinetest.org>, and <gedonlinediploma.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2017 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@my-ged.com, postmaster@freeonlineged.org, postmaster@freegedpracticetest.com, postmaster@gedonline.net, postmaster@gedonlinetest.org, postmaster@gedonlinediploma.com. Also on December 20, 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 March 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <my-ged.com>, <freeonlineged.org>, <freegedpracticetest.com>, <gedonline.net>, <gedonlinetest.org>, and <gedonlinediploma.com> domain names are identical to Complainant’s GED mark.
2. Respondent does not have any rights or legitimate interests in the<my-ged.com>, <freeonlineged.org>, <freegedpracticetest.com>, <gedonline.net>, <gedonlinetest.org>, and <gedonlinediploma.com> domain names.
3. Respondent registered and uses the <my-ged.com>, <freeonlineged.org>, <freegedpracticetest.com>, <gedonline.net>, <gedonlinetest.org>, and <gedonlinediploma.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant represents accredited degree-granting institutions in the United States, and uses the GED mark in conjunction with its business practices. GED Testing Service manages and administers GED testing services under a license from Complainant. Complainant holds a registration for the GED mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,321,397, registered Feb. 19, 1985). Complainant also registered the GED mark with the Australian Intellectual Property trademark agency (e.g., Reg. No. 1534032, registered Apr. 7, 2014).
Respondent registered the <my-ged.com> domain name on November 1, 1997, the <gedonline.net> domain name on September 13, 2002, the <gedonlinediploma.com> domain name on July 16, 2007, the <gedonlinetest.org> domain name on January 25, 2009, the <freeonlineged.org> domain name on February 6, 2009, and the <freegedpracticetest.com> domain name on March 3, 2004. Previously, the disputed domain names resolved to fraudulent high school websites offering products in direct competition with Complainant.
The Panel notes that Respondent is subject to a Court Order disabling all of the disputed domain names. Respondent also states in an email that he is ready to transfer the disputed domain names to GED Testing Service.
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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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.”).
The Panel finds that Complainant’s trademark registrations with the USPTO and the Australian Intellectual Property trademark agency demonstrate sufficient rights to the GED mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Respondent’s <my-ged.com>, <freeonlineged.org>, <freegedpracticetest.com>, <gedonline.net>, <gedonlinetest.org>, and <gedonlinediploma.com> domain names all incorporate the GED mark in its entirety, adding various gTLDs and the generic terms “online”, “test”, “diploma”, “free”, “practice”, “my.” One domain adds a hyphen to the mark. Previous panels have found that such changes are insignificant under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (Forum Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <my-ged.com>, <freeonlineged.org>, <freegedpracticetest.com>, <gedonline.net>, <gedonlinetest.org>, and <gedonlinediploma.com> domain names are confusingly similar to Complainant’s GED mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), 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 asserts that Respondent has no rights or legitimate interests in the <my-ged.com>, <freeonlineged.org>, <freegedpracticetest.com>, <gedonline.net>, <gedonlinetest.org>, and <gedonlinediploma.com> domain names, and is not commonly known by the disputed domain names. The WHOIS information associated with the disputed domain names identifies “Steve Remley” as the registrant. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant maintains that Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain names. Complainant demonstrates that Respondent’s disputed domain names currently resolve to blank pages resulting from a suspension order issued by the federal court on February 24, 2016. Previously, the disputed domain names resolved to fraudulent high school websites offering products in direct competition with Complainant. Neither use constitutes a bona fide offering of goods or services, or a legitimate noncommercial or fair use of disputed domain names. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and used <my-ged.com>, <freeonlineged.org>, <freegedpracticetest.com>, <gedonline.net>, <gedonlinetest.org>, and <gedonlinediploma.com> in bad faith by initially using them to resolve to fraudulent high school websites offering products and services in direct competition with Complainant before being suspended by the U.S. District Court of Arizona. Respondent attempted to disrupt Complainant’s business by diverting Internet users to websites offering products and services in direct competition with Complainant, presumably for Respondent’s financial gain. The Panel finds that this use is bad faith under Policy ¶ 4(b)(iii). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”).
Because the link between the complainant's mark and the content advertised on the respondent's website was obvious, Complainant argues that Respondent must have had actual and/or constructive knowledge of Complainant and its rights in the mark prior to registering the disputed domain names. The Panel agrees and finds that Respondent actually knew of Complainant’s rights in the GED mark, bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (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.”).
The Panel finds that 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 <my-ged.com>, <freeonlineged.org>, <freegedpracticetest.com>, <gedonline.net>, <gedonlinetest.org>, and <gedonlinediploma.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 3, 2017
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