American Council on Education and GED Testing Service LLC v. robel getaneh
Claim Number: FA1712001761719
Complainants are American Council on Education and GED Testing Service LLC (“Complainants”), represented by Patrick J. Gallagher of Cozen O'Connor, Minnesota, USA. Respondent is robel getaneh (“Respondent”), represented by Roberto Ledesma of LEWIS & LIN, LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gedfast.org>, registered with Google Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Debrett Gordon Lyons, David H. Bernstein, and Mark McCormick (Chair) as Panelists.
Complainants submitted a Complaint to the Forum electronically on December 7, 2017; the Forum received payment on December 7, 2017.
On December 7, 2017, Google Inc. confirmed by e-mail to the Forum that the <gedfast.org> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google Inc. 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 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@gedfast.org. Also on December 8, 2017, 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.
A timely Response was received and determined to be complete on December 27, 2017.
An additional submission was received from Complainants, but the Panel has disregarded the additional submission because the information it provided was all available at the time of the original filing. See generally YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC, Claim Number 1675141 (Forum July 11, 2016).
On January 10, 2018, pursuant to Complainants’ request to have the dispute decided by a three-member Panel, the Forum appointed Debrett Gordon Lyons, David H. Bernstein, and Mark McCormick (Chair) as Panelists.
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.
Complainants request that the domain name be transferred from Respondent to Complainant. The Complaint did not specify which complainant should receive the transfer in the event that Complainants prevail.
Respondent contends the case is outside the scope of the UDRP. He asserts that the registration and use of <gedfast.org> presents a trademark issue that should be referred to the courts. He claims the use of the nominative fair use doctrine requires a claimant to provide “likelihood of confusion,” which is part of trademark law and is outside the scope of UDRP.
The Panel has jurisdiction to consider the parties’ contentions. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000). In this case, Complainants allege bad faith use and registration of the domain name at issue, which is the essence of cybersquatting. Respondent’s arguments with respect to confusion and fair use can be considered as part of the UDRP analysis, including in assessing whether Respondent has rights or legitimate interest in the domain name, and whether the Respondent registered and used the domain name in bad faith. The fact that Respondent raises those defenses does not divest the Panel of jurisdiction to hear this challenge. Accordingly, the Panel concludes that it has jurisdiction to adjudicate this dispute under the UDRP.
A. Complainants
Complainant American Council on Education is a higher education organization that represents accredited degree-granting institutions in the United States. Complainant GED Testing Service, a former division of Complainant American Council on Education, manages and administers testing services by reference to the trademark, GED. Complainant American Council on Education owns the trademark GED and has granted an exclusive license to GED Testing Service to use the trademark. Complainant American Council on Education registered the trademark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <gedfast.org> is confusingly similar to Complainants’ GED mark because it incorporates the mark in its entirety, adding the dictionary term “fast” and the “.org” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <gedfast.org>. Respondent is not commonly known by the disputed domain name. Complainants have not authorized or licensed Respondent to use the GED mark in any regard, nor is Respondent affiliated with Complainants. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain name. Respondent’s <gedfast.org> resolves to a website offering goods and services in direct competition with Complainants under Complainants’ GED mark.
Respondent registered and is using <gedfast.org> in bad faith. The disputed domain name attracts internet users to Respondent’s website for commercial gain through the retail of competing goods and services. Respondent registered <gedfast.org> with actual knowledge of Complainants and their rights to the GED mark.
B. Respondent
Respondent is the current registrant of <gedfast.org>. Respondent registered <gedfast.org> on January 25, 2017.
Respondent has legitimate interests in <gedfast.org> and is not Complainants’ competitor. Respondent operated a legitimate business well before notification of this proceeding. Respondent uses the disputed domain name and resolving website for a nominative fair use promoting and retailing GED test preparation materials. Respondent would not be able to effectively market its products without using the GED mark.
Respondent does not hold itself out to be a provider of the GED test, only a provider of services to assist students preparing to take the GED test. Respondent’s website contains a disclaimer indicating that it is not affiliated with Complainants. Complainants do not prove the existence of actual customer confusion between the GED mark and Respondent’s <gedfast.org> domain name. Complainants do not have a monopoly on the retail of test preparation materials and there is a “robust online third party market” of retailers offering study materials utilizing the GED mark.
Respondent’s legitimate use of <gedfast.org> precludes a finding of bad faith. Respondent did not register or use <gedfast.org> in an abusive manner, as established by Policy ¶ 4(a)(iii). Respondent does not divert internet users to a website in competition with Complainants. Complainants offer a certification examination under the GED mark, whereas Respondent is a third party offering study aids to assist students in passing the exam. Respondent’s business is not different than other third-party retailers selling preparation materials utilizing the GED mark.
(1) The domain name registered by Respondent is confusingly similar to a trademark in which Complainants have rights;
(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 that Complainants 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 Complainants have 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.
Complainants provide evidence that American Council on Education is the owner of USPTO Trademark Reg. No. 2,613,984 (registered Sept. 3, 2002). Registration of a mark with the USPTO is prima facie evidence of the validity of a trademark, and is sufficient to establish rights in the mark for purposes of the UDRP. See Electronic Commerce Media, Inc. v. Taos Mountain, Claim Number 95344 (Forum Oct. 11, 2000)(federal registration is prima facie evidence of validity of mark that can only be overcome with compelling evidence). Because Respondent does not challenge the validity of this federal registration, this registration is sufficient to establish that Complainants have rights in the GED mark.
Complainants assert that Respondent’s <gedfast.org> domain name is confusingly similar to the GED mark because it incorporates the mark in its entirety, adding the dictionary term “fast” (to communicate that one can prepare quickly to take the GED test) and the “.org” gTLD. The addition of a dictionary term and a TLD do not prevent a finding that the domain is confusingly similar to a mark for purposes of the first factor of the UDRP. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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, the differences between the domain name and its contained trademark being insufficient to differentiate one from the other for the purposes of the Policy). As such, the Panel concludes that Respondent’s <gedfast.org> domain name is confusingly similar to Complainants’ GED mark.
Because the second factor requires that Complainants undertake the difficult challenge of proving a negative, Complainants may initially satisfy their obligation by making 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 production shifts to Respondent to come forward with evidence showing that 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.”). Even after the burden of production shifts to the Respondent, the burden of proof always remains with the Complainants.
Complainants assert that Respondent does not have rights or legitimate interests in the <gedfast.org> domain name. To support their assertion, Complainants aver that they have not authorized or licensed Respondent to use the GED mark in any regard nor is Respondent affiliated with the Complainants. Further, Complainants state that Respondent is not commonly known by the disputed domain name.
WHOIS information associated with this case identifies Respondent as “robel getaneh.” A complainant can make a prima facie showing that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by the that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, given that “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name,” the Panel finds that Complainants have made a prima facie showing that Respondent is not commonly known by <gedfast.org>, subject to Respondent’s right to rebut that prima facie showing. Respondent has not come forward with any persuasive evidence to the contrary.
Under ¶4(c)(iii) of the Policy, Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing that it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Respondent argues that it is making a nominative fair use of the GED trademark to indicate to consumers that it provides preparation materials and services for the GED exam.
In the UDRP context, an oft-cited standard for assessing nominative fair use is the standard first articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (Nov. 6, 2001). Although that decision does not reference the trademark principle of “nominative fair use,” the standards are functionally equivalent, and the four part test articulated in Oki Data is shaped by the same underlying policy concerns. Under that standard, to demonstrate a bona fide interest under ¶4(c)(i) of the Policy, Respondent:
i. must actually be offering the goods or services at issue;
ii. must use the resolving site to sell only the trademarked goods (otherwise, it could be using the trademark to bait Internet users and then switch them to other goods);
iii. must accurately disclose the relationship between the domain name registrant and the trademark owner; and,
iv. must not try to corner the market in all domain names, thus depriving the trademark owner from reflecting its own mark in a domain name.
Though the Oki Data test was developed in the context of an authorized retailer, subsequent case law makes clear that the Oki Data factors apply both to authorized resellers and unauthorized third party resellers or service providers. See Yeti Coolers v. Lyon et al., FA1675141 (Forum July 11, 2016); see also Norcold, Inc. v. Brian Currier, FA1604001668815 (Forum July 16, 2016). Because Respondent must satisfy all factors in order to have a legitimate interest in or right to use the domain name, Respondent’s failure to meet any one of the factors (let alone multiple) is fatal to its fair use defense.
Respondent fails to demonstrate a bona fide interest in the disputed domain name under the Oki Data factors. Specifically, Respondent fails under the third factor, requiring that the website accurately disclose registrant’s relationship with the trademark owner. Here, Respondent does not make clear that the website is not affiliated with Complainants. To the contrary, the website’s repeated reference to “GED®” (complete with the registration symbol) suggests that the website operator is associated with, or acting with the sponsorship or permission of, the Complainants. Moreover, the look, feel and content of the website to which the disputed domain name resolves is markedly similar to GED Testing Service LLC’s actual website, with portions of the text being identical to the text on GED Testing Service LLC’s website. Prior panels have found that such mimicry in and of itself amounts to impermissible passing off. See e.g., Twitch Interactive, Inc. v. Katherine Anjomi, FA 1701001710534 (Forum Feb. 11, 2017) (finding respondent’s attempt to pass itself off as complainant by adopting a webpage resembling complainant’s to be evidence that respondent lacks rights and legitimate interests in the disputed domain name).
As a defense, Respondent argues that, at the time of the Complaint, the website displayed a disclaimer at the bottom of the home page and all pages on the website, stating that Complainants are not affiliated with nor endorse Respondent’s website. This disclaimer, though, was totally ineffective. First, the disclaimer was located at the bottom of a very long webpage, where it was unlikely to be noticed. Second, the disclaimer was presented in small text, which made it even more unlikely that it would be seen or read. Thus, even with this disclaimer, the Panel finds that consumers were still likely to be confused into believing that the website was associated with, or sponsored or approved by, the Complainants, in violation of both the principles of fair use. See, e.g., New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992) (fair use requires that “[o]nly so much of the mark or marks may be used as is reasonably necessary to identify the product or service” and that “[t]he user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder”), and the Oki Data factors. Moreover, after the Complaint was filed, the Respondent moved the disclaimer to the top of the website, which serves as a tacit admission that the disclaimer’s prior location made it unlikely to be seen or read.
Respondent further argues that a decision in favor of the Complainants would be unfair because other parties against whom Respondent competes are also making fair use of the GED mark in describing the test preparation services that they offer. The Panel agrees that fair use of the GED mark is, in principle, possible. Here, though, the content and design of the website undermines any assertion of fair use.
Accordingly, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA1002001306493 (Forum March 18, 2010) (holding that “capitalizing on the well-known marks of Complainant by attracting internet users to its domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii)”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods or services.”). As discussed above, because Respondent’s offering of competing goods and services was deceptive in the way in which the website repeatedly references GED® and mimics the look and feel of Complainants’ website, Respondent’s activities cannot be considered bona fide or legitimate for purposes of the Policy. The Panel finds Policy¶4(a)(ii) satisfied.
To prevail on this element, Complainants must establish both that Respondent registered the domain name in bad faith and that Respondent is using the domain name in bad faith. To have registered the domain name in bad faith targeted towards Complainants, Respondent must have been aware of, or at least willfully blind to, Complainants’ trademark rights. Policy¶4(b) states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
i. circumstances indicating that [the Respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
ii. [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
iii. [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, [the Respondent] intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or of a product or service on [the Respondent’s] website or location.
There is no dispute as to Respondent’s knowledge of Complainants’ trademark rights. Respondent not only repeatedly refers to the GED mark on its website, but he does so with the encircled-R registration symbol, thus confirming that Respondent knew the mark was registered and that it was owned by Complainants.
As explained above, Respondent uses Complainants’ GED mark in a way that is likely to cause confusion and attract Internet users to his website for commercial gain. Further, Respondent’s mimicry of the look, feel and content of Complainants’ website contributes to a likelihood of confusion and supports an inference that Respondent designed the website to divert consumers by causing confusion as to whether, inter alia, the site is the official GED site or that of an authorized third party. Prior panels have been clear that such passing off evinces bad faith under the Policy. See e.g., Chevron Intellectual Property LLC v. Buchi Anderson/Guiness, FA1407001570792 (Forum August 26, 2014) (finding respondent’s mimicry of the look of complainant’s official website to be indicative of bad faith under Policy¶4(b)(iii)); Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because respondent not only registered complainant’s TARGET mark but also reproduced complainant’s TARGET mark and added complainant’s distinctive red bull’s eye). The Panel finds Respondent’s extensive use of the GED mark throughout his website, combined with the mimicry of the look, feel and content of Complainants’ website, to be evidence of bad faith registration and use under Policy ¶4(b)(iii).
The Panel finds Policy¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gedfast.org> domain name be TRANSFERRED from Respondent to American Council on Education (as the owner of the federal trademark registration for GED).
Debrett Gordon Lyons, David H. Bernstein, and Mark McCormick (Chair), Panelists
Dated: January 31, 2018
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