Udemy Inc. v. Milen Radumilo
Claim Number: FA1609001694614
Complainant is Udemy Inc. (“Complainant”), represented by Dan Smith of Safenames Ltd., United Kingdom. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <udemy.us>, registered with UdomainName.com LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2016; the Forum received payment on September 21, 2016.
On September 22, 2016, UdomainName.com LLC confirmed by e-mail to the Forum that the <udemy.us> domain name is registered with UdomainName.com LLC and that Respondent is the current registrant of the name. UdomainName.com LLC has verified that Respondent is bound by the UdomainName.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 September 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@udemy.us. Also on September 22, 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 October 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant uses the UDEMY mark in connection with Complainant’s services; namely, an online platform for experts to create courses which can be offered to the public. Complainant has registered the UDEMY mark with a number of trademark authorities, including those in Canada, the United States of America, Japan, the European Union, Norway, and WIPO. The earliest of these registrations is the one registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,314,406, registered Apr. 2, 2013), which demonstrates rights in the mark. Respondent’s <udemy.us> is identical to the UDEMY mark, save for the addition of the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in <udemy.us>. First, the UDEMY mark is only associated with Complainant because it is a fanciful term solely associated with Complainant, evidenced by various search engine results. The evidence therefore points to Respondent not being commonly known by <udemy.us>. Second, Respondent only uses <udemy.us> to promote a number of pay-per-click hyperlinks, which does not indicate any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered or used <udemy.us> in bad faith. Respondent has been found to have cybersquatted in nine previous UDRP disputes, showing a pattern under Policy ¶ 4(b)(ii). Respondent, in attempting to profit through hyperlinks which redirect to Complainant’s competitors, has exhibited Policy ¶ 4(b)(iv) bad faith. Further, Respondent had actual or constructive knowledge of the UDEMY mark when registering or using <udemy.us>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Udemy Inc., uses the UDEMY mark on or in connection with Complainant’s services; namely, an online platform for experts to create courses which can be offered to the public. Complainant has rights in the UDEMY mark through registration with a number of trademark authorities, including those in Canada, the United States of America, Japan, the European Union, Norway, and WIPO. The earliest of these registrations is the one registered with the USPTO (Reg. No. 4,314,406, registered Apr. 2, 2013), which demonstrates rights in the mark. Respondent’s <udemy.us> is identical to the UDEMY mark, save for the addition of the “.us” country-code top-level domain (“ccTLD”).
Respondent, Milen Radumilo, registered <udemy.us> on March 8, 2016.
Respondent has no rights or legitimate interests in <udemy.us>. First, the UDEMY mark is only associated with Complainant because it is a fanciful term solely associated with Complainant. Second, Respondent is not commonly known by <udemy.us>. Further, Respondent only uses <udemy.us> to promote a number of pay-per-click hyperlinks.
Respondent registered and uses <udemy.us> in bad faith. Respondent has been found to have cybersquatted in nine previous UDRP disputes, showing a pattern under Policy ¶ 4(b)(ii). Respondent attempts to profit through hyperlinks which redirect to Complainant’s competitors. Further, Respondent had actual knowledge of the UDEMY mark when registering <udemy.us>.
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 has rights in the UDEMY mark under Policy ¶ 4(a)(i) through registration with a number of trademark authorities, including those in Canada, the United States of America, Japan, the European Union, Norway, and WIPO. The earliest of these registrations is USPTO Registry No. 4,314,406, registered April 2, 2013. When a mark is registered with a governmental authority, rights in the mark exist under Policy ¶ 4(a)(i). See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (“As stated above, Complainant has shown rights in the mark RACKSPACE by virtue of its registrations in the US, Europe, Mexico, Turkey, as well as in Australia, Respondent’s country of origin. All of the trademark registrations predate the registration of the disputed domain name by the Respondent and are sufficient evidence for Complainant’s rights under Policy ¶ 4(a)(i).”).
Respondent’s <udemy.us> is identical to the UDEMY mark, save for the addition of the “.us” ccTLD.
Respondent has no rights or legitimate interests in <udemy.us>. The UDEMY mark is a fanciful term only associated with Complainant. The WHOIS information lists “Milen Radumilo” as registrant. Therefore, Respondent is not commonly known by <udemy.us> under Policy ¶ 4(c)(iii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Respondent does not have rights in a mark identical to the <udemy.us> domain name. 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)).
Respondent is not making a bona fide offering of goods or services with the <udemy.us> domain name, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv), respectively. Instead Respondent only uses <udemy.us> to promote a number of pay-per-click hyperlinks. Competing hyperlinks have not been considered evidence of rights and legitimate interests. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent registered and uses <udemy.us> in bad faith. Respondent has been found to have cybersquatted in nine previous UDRP disputes, showing a pattern under Policy ¶ 4(b)(ii). See Swatch AG v. Perfect Privacy, LLC / Milen Radumilo, D2016-1370 (WIPO Aug. 28, 2016); Accenture Global Services Limited v. Milen Radumilo, D2016-1219 (WIPO Aug. 4, 2016); Banco Davivienda S.A. v. Milen Radumilo, D2016-0912 (WIPO July 4, 2016); Energizer Brands, LLC v. Milen Radumilo, FA1604001670639 (Forum May 9, 2016); Fenix Outdoor AB v. Milen Radumilo, D2016-0333 (WIPO Apr. 12, 2016); Celgene Corporation v. Milen Radumilo, D2016-0018 (WIPO Feb. 22, 2016); Intesa Sanpaolo S.p.A. v. Privacy Protection Service, Communigal Communication Ltd / Milen Radumilo, D2015-2290 (WIPO Feb. 17, 2016); Carrefour v. Milen Radumilo / United Privacy Corp, D2015-1851 (WIPO Dec. 22, 2015); Bharti Airtel Limited v. Milen Radumilo, D2015-1948 (WIPO Dec. 7, 2015). Multiple bad faith decisions show a pattern of bad faith under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Respondent attempts to profit through hyperlinks which redirect to Complainant’s competitors. Using a confusingly similar domain to offer competing hyperlinks, presumably for commercial gain, is bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Respondent had actual notice of Complainant's rights in the UDEMY mark prior to registration of the <udemy.us> domain name because of Respondent’s inclusion of the mark in hyperlinks associated with the domain name. Therefore, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <udemy.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 2, 2016
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