K12 Inc. v. Rahul Rahul
Claim Number: FA0904001259769
Complainant is K12
Inc. (“Complainant”), represented by Matthew
F. Dexter, of Kirkland & Ellis LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwk12.com>, registered with Red Register.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 29, 2009.
On May 5, 2009, Red Register confirmed by e-mail to the National Arbitration Forum that the <wwwk12.com> domain name is registered with Red Register and that Respondent is the current registrant of the name. Red Register has verified that Respondent is bound by the Red Register 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 May 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 2009 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@wwwk12.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
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 <wwwk12.com> domain name is confusingly similar to Complainant’s K12 mark.
2. Respondent does not have any rights or legitimate interests in the <wwwk12.com> domain name.
3. Respondent registered and used the <wwwk12.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, K12 Inc., provides online courses of instruction at the preschool and primary school level and the printed teaching and instructional materials used in connection with such courses. Complainant has registered its K12 mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,655,115 issued November 26, 2002, issued June 20, 2000). Complainant maintains its website at the <k12.com> domain name.
Respondent registered the <wwwk12.com> domain name on February 27, 2002. The disputed domain name has been utilized to disseminate computer viruses and other malware, and also to display adult-oriented material.
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 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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.”).
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.
The Panel finds that Complainant has sufficient rights in its K12 mark through its registration of the mark with the USPTO, and that such rights date back to the mark’s filing date under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
The <wwwk12.com> domain name contains the
entire K12 mark while adding the generic prefix “www” and the generic top-level
domain “.com.” Neither alteration has
been held in previous decisions to demonstrate a sufficient distinction so as
to thwart a finding of confusing similarity under Policy ¶ 4(a)(i). See, e.g., Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests. The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also 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).
There is no evidence within the record, including the WHOIS
information listing Respondent as “Rahul Rahul,” that would support an
assertion that Respondent is commonly known by the disputed domain name. No affiliation between the parties is
alleged, nor is any license or permission to use the K12 mark on behalf of
Respondent provided. As such, the Panel
finds that Respondent is not, and has never been, commonly known by the
disputed domain name under Policy ¶ 4(c)(ii). See Coppertown
Drive-Thru Sys., LLC v.
Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also
Respondent’s disputed domain name has been used to resolve to websites of various form, as alleged by Complainant. Such uses have included the distribution of spyware and malware computer programs, as well as the dissemination of adult-oriented materials. The Panel presumes, without any contradiction from Respondent, that Respondent intended some monetary benefit from this egregious diversion of Internet users, the vast majority of whom are of schooling age, to these resolving websites. Whether this monetary gain is obtained through some later deception or trickery involved in either use, the Panel finds it clear that Respondent has failed to create a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name, which attempted to download malicious computer software onto Internet users’ computers, was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with pornographic material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”).
Moreover, the mere fact that a respondent has displayed adult-oriented content on the resolving website from the disputed domain name demonstrates sufficient evidence by itself that such respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). The Panel so finds in the instant case. See Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.”); see also Nat’l Football League Props., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the respondent had no rights or legitimate interests in the domain name <chargergirls.net> where the respondent linked the domain name to its pornographic website).
The disputed <wwwk12.com> domain name solely
differentiates itself from the mark—outside of the generic top-level domain—by
including the common prefix “www,” which represents to this Panel Respondent’s
intent to exploit the common mistake of Internet users who omit the period
between this prefix and Complainant’s mark.
This represents a clear example of “typosquatting.” Thus, this constitutes additional evidence
that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Diners
Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA
156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
the complainant’s DINERS CLUB mark, was evidence in and of itself that the
respondent lacks rights or legitimate interests in the disputed domain name vis
á vis the complainant); see also Amazon.com, Inc. v. J J Domains,
FA 514939 (Nat. Arb. Forum Sept. 2 2005) (“respondent lacks rights and
legitimate interests in the <www-amazon.com> domain name because
respondent's addition of the prefix "www-" to complainant's
AMAZON.COM mark constitutes typosquatting.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As stated above, the Panel presumes that Respondent obtains financial gain through the disputed domain name and its various uses in conjunction with the distribution of malware and the dissemination of adult-oriented material. In the context of bad faith registration and use, the Panel finds that Respondent clearly intended a likelihood of confusion as to Complainant’s affiliation with or sponsorship of the disputed domain name and resolving website under Policy ¶ 4(b)(iv). See 24/7 Real Media Inc. v. Schultz, D2009-0043 (WIPO March 5, 2009) (finding the respondent’s use of a website to distribute malware was an attempt to attract Internet users to its website or other online location for commercial gain, by creating a likelihood of confusion with the complainant’s mark.); see also Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).
Again, the use of the disputed domain name to display adult-oriented materials—whatever the motivation—has been sufficient in previous cases to demonstrate that the respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to a pornographic website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith). Given the nature of Complainant’s business, as well as the presumed intent of Respondent to target Complainant’s customers, the Panel finds that the instant case demonstrates a particularly flagrant example of the above conceptualization of bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, the Panel finds that Respondent, who has been found
by the Panel to have engaged in typosquatting, has engaged in bad faith
registration and use under Policy ¶ 4(a)(iii) on account of this aforementioned
typosquatting. See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that
the respondent engaged in typosquatting, which is evidence of bad faith
registration and use under Policy ¶ 4(a)(iii)); see also Black & Decker Corp. v. Khan, FA 137223 (Nat.
Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was
registered to “ensnare those individuals who forget to type the period after
the ‘www’ portion of [a] web-address,” which was evidence that the domain name
was registered and used in bad faith).
The Panel finds that Policy ¶ 4(a)(ii) has been 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 <wwwk12.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 16, 2009
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