Great Lakes Higher Education Corporation v. Live Leadgen
Claim Number: FA1607001685541
Complainant is Great Lakes Higher Education Corporation (“Complainant”), represented by Laura M Konkel of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Live Leadgen (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mygreatlakes.us>, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2016; the Forum received payment on July 26, 2016.
On July 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mygreatlakes.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@mygreatlakes.us. Also on July 27, 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 August 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 usTLD 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 usTLD Policy, usTLD 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
1. Complainant is one of the largest student loan servicers in the United States and operates under the GREAT LAKES mark. Complainant owns two trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,414,244, registered Apr. 22, 2008; Reg. No. 3,417,350, registered Apr. 29, 2008) which identify logos with the GREAT LAKES mark as a prominent feature. See Compl., at Attached Ex. C. Respondent’s <mygreatlakes.us> domain name is confusingly similar because it incorporates the GREAT LAKES mark completely while eliminating spacing between the words of the mark, adding the term “my,” and adding the country-code top-level domain (“ccTLD”) “.us.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of GREAT LAKES in a domain name per Policy ¶ 4(c)(iii). Nothing in the available evidence indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). Further, Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv), respectively. Instead, Respondent offers competing services and presents itself as Complainant, soliciting Internet users to pay for loan consolidation services. Compare Compl., at Attached Exs. D–E (Complainant’s online offerings), with Compl., at Attached Ex. F (Respondent’s online offerings through the <mygreatlakes.us> domain name). Complainant has received at least 60 complaints from borrowers contacted by Respondent who believed Respondent was Complainant.
3. Respondent has registered or used the disputed domain in bad faith. Respondent’s competing use or otherwise passing off behavior imputed bad faith under both Policy ¶¶ 4(b)(iii) and (iv). Further, given such use, Respondent had actual knowledge of Complainant’s rights in the GREAT LAKES mark when registering or using the disputed <mygreatlakes.us> domain name.
B. Respondent
1. Respondent did not submit a Response to the Complaint.
1. Respondent’s <mygreatlakes.us> domain name is confusingly similar to Complainant’s GREAT LAKES mark.
2. Respondent does not have any rights or legitimate interests in the <mygreatlakes.us> domain name.
3. Respondent registered or used the <mygreatlakes.us> domain name 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 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 claims to be one of the largest student loan servicers in the United States who operates under the GREAT LAKES mark. Complainant claims it owns two trademark registrations with the USPTO (Reg. No. 3,414,244, registered Apr. 22, 2008; Reg. No. 3,417,350, registered Apr. 29, 2008), which identify logos with the GREAT LAKES mark as a prominent feature. See Compl., at Attached Ex. C. Panels have seen such registrations confer rights under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Therefore, this Panel agrees that Complainant has satisfied its burden in establishing rights in the GREAT LAKES mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <mygreatlakes.us> domain name is confusingly similar because it incorporates the GREAT LAKES mark completely while eliminating spacing between the words of the mark, adding the term “my,” and adding the ccTLD “.us.” The addition of “my” has not been considered a distinguishing feature. See The Coca-Cola Company v. Pablo Blanco Del Rio / Net Service Syst Spain S.L., FA1416842 (Forum Jan. 13, 2012) (“The Panel find [sic] that the addition of the generic term “my” fails to distinguish the disputed domain name [myfanta.us] from the FANTA mark.”). The elimination of spaces and addition of “.us” have also been considered nondistinguishing features. See EMVCo, LLC c/o Visa Holdings v. Stephanie Wells, FA 1617890 (Forum June 11, 2015) (asserting, “‘ccTLDs’ are irrelevant to Policy ¶ 4(a)(i) analysis.”); see also Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶ 4(a)(i).”). Therefore, this Panel agrees that Respondent’s <mygreatlakes.us> domain name is confusingly similar to the GREAT LAKES mark under Policy ¶ 4(a)(i).
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 the disputed domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of GREAT LAKES in a domain name per Policy ¶ 4(c)(iii). The Panel looks to the available WHOIS information and considers that Respondent has not submitted any evidence which would rebut the assertion that it is not commonly known by the disputed domain name. Therefore, this Panel sees no foundation upon which a declaration that Respondent is commonly known by the <mygreatlakes.us> domain name is proper. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Further, Complainant argues that Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv), respectively. Instead, Respondent offers competing services and presents itself as Complainant, soliciting Internet users to pay for loan consolidation services. Compare Compl., at Attached Exs. D–E (Complainant’s online offerings), with Compl., at Attached Ex. F (Respondent’s online offerings through the <mygreatlakes.us> domain name). Complainant also claims it has received at least 60 complaints from borrowers contacted by Respondent who believed Respondent was Complainant. Panels have found competing use or otherwise passing off behavior to trick Internet users is not a bona fide offering nor a legitimate noncommercial or fair use. See Dell Inc. v. BHUWANESHWAR KC / mmm bbb, FA1675190 (Forum June 23, 2016) (“A respondent’s use of a complainant’s mark to offer competing services (or to pass itself off as complainant) does not to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv).”). Accordingly, the Panel sees Complainant’s contentions and evidence as sufficient, and it determines that Respondent has not overcome Complainant’s prima facie case.
Complainant alleges that Respondent has registered or used the disputed domain in bad faith because of the competing use or otherwise passing off behavior imputes bad faith under both Policy ¶¶ 4(b)(iii) and (iv). The Panel is mindful of Respondent’s competing use in Exhibit F, and Complainant’s assertion that over 60 complaints have been filed in which borrowers were contacted by Respondent, believing Respondent was Complainant. Panels have found competing use or passing off behavior as disruptive per Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). 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).”); see also CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). Therefore, this Panel agrees that Respondent has demonstrated bad faith registration or use under Policy ¶¶ 4(b)(iii) and (iv).
Further, given Respondent’s use, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the GREAT LAKES mark when registering or using the disputed <mygreatlakes.us> domain name. Panels have agreed actual knowledge exists under such circumstances. See Pearson Education, Inc. v. Osman Aatasoy / ARMA WEB, FA1589099 (Forum Dec. 23, 2014) (“In light of the use of the domain names, this Panel agrees Respondent actually knew about Complainant’s marks with Respondent registered the domain names. This constitutes bad faith registration and use under Policy ¶4(a)(iii).”). Therefore, this Panel agrees that there is sufficient evidence to conclude that Respondent had actual knowledge of the GREAT LAKES mark and Complainant’s rights in the mark, and therefore registered or used the <mygreatlakes.us> domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mygreatlakes.us> domain name be TRANSFERRED from Respondent to Complainant.
Dated: August 30, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page