ProQuest Information and Learning Company v. Domain Administrator
Claim Number: FA0608000784206
Complainant is ProQuest Information and Learning Company (“Complainant”), represented by Brett E. Lewis, of Lewis & Hand, LLP, 45 Main Street, Suite 818, Brooklyn, NY 11201, USA. Respondent is Domain Administrator (“Respondent”), PO Box 533 WB, West Bay KY, US 000000.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <explorescience.com>, registered with Parava Networks Inc d/b/a Registrateya.com Naame.com.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 25, 2006.
On August 25, 2006, Parava Networks Inc d/b/a Registrateya.com Naame.com confirmed by e-mail to the National Arbitration Forum that the <explorescience.com> domain name is registered with Parava Networks Inc d/b/a Registrateya.com Naame.com and that Respondent is the current registrant of the name. Parava Networks Inc d/b/a Registrateya.com Naame.com has verified that Respondent is bound by the Parava Networks Inc d/b/a Registrateya.com Naame.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 20, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@explorescience.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist.
On October 3, 2006, thirteen days after the deadline for submitting a Response, Respondent submitted a late Response that was not in compliance with the Rules. The Panel has the discretion to consider a late response, and chooses not to consider this Response as no exceptional circumstance indicating a reason for the extreme tardiness of the submission was provided. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (“Because of the expedited nature of these proceedings, absent unusual circumstances, it appears appropriate to exclude late submissions that have not been requested by the Panel.”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (without an adequate timely filed response, all reasonable inferences of fact in the allegations of the complaint will be taken as true).
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." 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 makes the following assertions:
1. Respondent’s <explorescience.com> domain name is identical to Complainant’s EXPLORESCIENCE mark.
2. Respondent does not have any rights or legitimate interests in the <explorescience.com> domain name.
3. Respondent registered and used the <explorescience.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant, ProQuest Information and Learning Company, provides interactive online teaching tools under the EXPLORESCIENCE mark. Complainant has continuously used the EXPLORESCIENCE mark in connection with interactive teaching tools since 1995. Numerous educational associations have recognized Complainant’s products under the EXPLORESCIENCE mark as a leader in the educational software industry. Complainant recently won the Software and Information Industry Association’s Codie Award for “Best Instructional Solution: Science,” the highest honor in the software industry.
Complainant’s predecessors launched a website at the domain name in dispute, <explorescience.com>, in 1997. In 2000, Dr. Raman Pfaff, the original registrant of the disputed domain name, assigned the registration to Third Millennium Press, which was helping to develop the EXPLORESCIENCE website. In 2003, Complainant purchased the business assets of Third Millennium Press. In 2005, Complainant attempted to transfer the disputed domain name registration to itself from Third Millennium Press. In the process, the <explorescience.com> domain name was inadvertently deleted.
Respondent registered the <explorescience.com>
domain name on July 4, 2006 and is using the disputed domain name to operate a
commercial search engine web page with links to other online educational tools
and science websites.
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."
In view of Respondent's failure to submit a timely 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 S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (without an adequate timely filed response, all reasonable inferences of fact in the allegations of the complaint will be taken as true).
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.
For purposes of Policy ¶ 4(a)(i), Complainant is not required to hold a valid trademark registration to demonstrate its rights in the mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant has continuously used the EXPLORESCIENCE mark in
connection with interactive teaching tools since 1995 and had won numerous
awards for its products and services under the mark. Therefore, the Panel finds that Complainant’s EXPLORESCIENCE mark
has generated secondary meaning sufficient to establish common law rights in
the mark pursuant to Policy ¶ 4(a)(i). See
Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
[KEPPEL BANK] in connection with its banking business, it has acquired rights
under the common law.”); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002)
(finding that the complainant established common law rights in the mark through
continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Furthermore, Complainant and its predecessors used the <explorescience.com> domain name
for several years prior to this dispute and inadvertently deleted it. The Panel finds that Complainant’s prior
possession of the disputed domain name further demonstrates its rights in the
EXPLORESCIENCE mark under Policy ¶ 4(a)(i).
See Mgmt. Plus Enters. v. MPE Tech. Servs., FA 192746 (Nat. Arb. Forum Oct. 27, 2003) (“Complainant
has established rights in the MPE mark through widespread use of the mark in
commerce, in addition to its longstanding use of the <mpe.com> domain
name prior to this dispute.”); see
also Suburban Ostomy Supply Co. v.
Tremblay, FA 140639 (Nat. Arb. Forum Feb. 24, 2003) (“Complainant’s
continuous use in commerce and its prior registration of the [disputed] domain
name provide strong evidence that Complainant has rights in the SUBURBAN OSTAMY
mark pursuant to Policy ¶ 4(a)(i).”).
The Panel also finds that there are no distinguishing differences between the <explorescience.com> domain name and Complainant’s EXPLORESCIENCE mark. The domain name simply adds the generic top-level domain “.com,” which is irrelevant to a Policy ¶ 4(a)(i) analysis. Thus, the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or
legitimate interests in the <explorescience.com> domain name. Complainant has the initial burden of proof
in establishing that Respondent lacks rights or legitimate interests in the
domain names. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also Document Tech., Inc. v. Int’l Elec.
Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph 4(a) of
the Policy requires that the Complainant prove the presence of this element
(along with the other two), once a Complainant makes out a prima facie
showing, the burden of production on this factor shifts to the Respondent to
rebut the showing by providing concrete evidence that it has rights to or
legitimate interests in the Domain Name.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <explorescience.com>
domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of
the Policy, any rights or legitimate interests in the domain name”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
There is no evidence in the record that Respondent is commonly known by the <explorescience.com> domain name. The WHOIS information lists “Domain Administrator” as the registrant of the disputed domain name, and nothing else in the record indicates that Respondent is commonly known by the disputed domain name. Therefore, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Moreover, Respondent’s use of the <explorescience.com>
domain name to operate a commercial search engine website with links to
Complainant’s competitors and related goods provides further evidence that
Respondent lacks rights or legitimate interests in the contested domain
name. In Ameritrade Holdings Corp.
v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the respondent was
using a domain name confusingly similar to the complainant’s AMERITRADE mark to
divert Internet users to a competing financial services website. The panel concluded that redirecting
Internet users to a competing website could not be deemed a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), and that such use for
Respondent’s own commercial gain could not be a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
Id. In this case,
Respondent is likely earning click-through fees for each Internet user it
diverts to similar or competing websites.
Therefore, Respondent is not using the <explorescience.com>
domain name in connection with 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). See The Royal
Bank of Scotland Grp plc et. Al. v. Demand Domains, FA 714952 (Nat. Arb.
Forum Aug. 2, 2006) (finding that the operation of a commercial web directory
displaying various links to third-party websites was not a use in connection
with 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), as the respondent presumably earned “click-through” fees for each
consumer it redirected to other websites).
Additionally, in Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005), the panel stated, “[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).” Because Complainant operated a website at the <explorescience.com> domain name from 1997 to 2005 and Respondent only registered the disputed domain name after Complainant inadvertently deleted it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the <explorescience.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is using the disputed domain name to divert Internet users seeking Complainant’s educational products and services to a commercial web page displaying links to the websites of Complainant’s competitors and related products. In Ticketmaster Corporation v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 11, 2001), the respondent registered the <ticketmaster.net> domain name, which included the complainant’s TICKETMASTER mark, and was using it to redirect Internet users to a competing website at the <ticketpro.com> domain name. The panel found that such use constituted bad faith registration and use, because “[s]uch actions clearly manifest an intent of the [r]espondent to commercially benefit from the ensuing confusion of Internet users” who enter the disputed domain name attempting to reach the complainant’s website but are instead directed to the respondent’s website. Id. In this case, Respondent is also redirecting Internet users seeking Complainant’s products and services to competing websites for its own commercial gain, is taking advantage of the confusing similarity between the disputed domain name and Complainant’s EXPLORESCIENCE mark, and presumably profiting from the goodwill associated with the mark in the form of click-through fees. The Panel finds such conduct to be in violation of Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
Furthermore, by registering a domain name identical to
Complainant’s EXPLORESCIENCE mark and using it to operate a website providing
links to the websites of Complainant’s competitors, Respondent has registered
the domain name for the purpose of disrupting Complainant’s business, which
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
A further indication of Respondent’s bad faith registration and use is that Respondent registered the <explorescience.com> domain name after Complainant had inadvertently allowed the domain name registration to expire. Because Complainant had operated an extensive website at the disputed domain name in connection with its EXPLORESCIENCE mark for many years before Respondent registered the domain name opportunistically, the Panel concludes registration and use was done in bad faith under Policy ¶ 4(a)(iii). See Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the respondent’s pattern of registering domain names which had inadvertently been permitted to lapse satisfies the provisions of Policy ¶ 4(b)(ii)).
The Panel concludes 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 <explorescience.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: October 11, 2006
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