American Council on Education and GED Testing Service LLC v. John Bonk / Land Merchandising Corp
Claim Number: FA1612001707104
Complainant is American Council on Education and GED Testing Service LLC (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Minnesota, USA. Respondent is John Bonk / Land Merchandising Corp (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gedtestonline.com>, (‘the Domain Name’) 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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2016; the Forum received payment on December 12, 2016.
On December 13, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gedtestonline.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 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@gedtestonline.com. Also on December 13, 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 January 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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’s contentions can be summarised as follows:
Complainant is the owner of the trade mark rights in the mark GED for various goods and services related to educational testing including numerous US trade mark registrations.
The GED test first became available to civilians in 1947, was first used in 1946 and has been in continuous use since then. As a result of Complainant’s long usage and promotion of the GED mark, this mark has become well known and widely recognised by consumers.
Respondent advertises its services at web sites at ged.com and gedtestingservice.com (registered in 1995 and 2011 respectively).
The Domain Name incorporates Complainant’s GED mark in its entirety and the addition of the common terms ‘test’ and ‘online’ does not negate the confusing similarity between Complainant’s GED mark and the Domain Name under the Policy. Moreover, the addition of a gTLD such as .com is irrelevant to determining similarity of a domain name to a mark.
The website attached to the Domain Name redirects Internet users to third party competing sites using Complainant’s GED mark, suggesting an affiliation with Complainant when none exists. This use is not a legitimate non commercial or fair use of Complainant’s mark. Respondent has no rights or legitimate interests in the Domain Name. Respondent has no connection with Complainant and has not received any permission from Complainant to use its mark. There is no evidence that Respondent is commonly known by the Domain Name. Because it uses Complainant’s mark to offer competing services, Respondent’s use of the Domain Name cannot constitute a bona fide offering of goods or services and is confusing and deceptive to customers.
Respondent registered and is using the Domain Name in bad faith. Respondent’s use shows knowledge of Complainant and its business. Using the web site to point to third party links offering competing services is bad faith registration and use. Respondent registered and is using the Domain Name for commercial gain and to profit from consumer confusion that the Domain Name is connected with Complainant.
Respondent has been the subject of prior adverse UDRP rulings which demonstrate a pattern of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the trade mark GED in the USA for educational materials and services with first use in commerce recorded as 1946.
The Domain Name registered in 2004 has been used to provide links to third party sites offering competing services to Complainant.
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.
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.”).
Identical and/or Confusingly Similar
The Domain Name consists of Complainant's GED mark, the generic words ‘test’ and ‘online’ and the gTLD .com.
Panels have held that adding a term that is descriptive of complainant’s products and a gTLD to Complainant’s mark does not negate confusingly similarity to a complainant's mark pursuant to policy 4 (a)(i). See Gillette Co. v RFK Assocs., FA 492867 (Forum July 28, 2005)(finding that the addition of the term ‘batteries’ which described the complainant's product and the gTLD .com were insufficient to distinguish the domain name duracellbaterries.com from the complainant’s DURACELL mark.)
gTLDs do not serve to distinguish the Domain Name from the GED mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Respondent does not appear to be commonly known by the Domain Name, and is not making a legitimate non commercial or fair use of the name. The site appears to be set up for commercial benefit to compete with Complainant using the latter's intellectual property rights to make a profit by pointing to third party links competing with Complainant's goods and services. See ALPITOUR SpA v Albloushi FA 888651 (Forum. Feb 26, 2007) (rejecting the respondent's contentions of rights and legitimate interests because the respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy. )
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent's use of the site is commercial and he is using it to make a profit from linking to third party web sites in a confusing manner. The use suggests Respondent is aware of Complainant and its business and the meaning of the Domain Name itself suggests this knowledge existed at the time of registration. The Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See Dovetail Ventures LLC v Klayton Thorpe, FA 1506001625786 (Forum Aug 2, 2015)(holding that the respondent had acted in bad faith under Policy 4(b)(iv) where it used the disputed domain name to host a variety of hyperlinks unrelated to the complainant’s business through which Respondent presumably gained).
As such, the Panel holds that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy. The Panel notes Respondent has been subject to a number of adverse UDRP rulings. However, in light of the above finding it is not necessary to consider further possible grounds of bad faith in this case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gedtestonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 24, 2017
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