Course Hero, Inc. v. KATHY REES / ONE HOUR EXPERT
Claim Number: FA2206001999084
Complainant is Course Hero, Inc. (“Complainant”), represented by Phillip Barengolts of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is KATHY REES / ONE HOUR EXPERT (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cliffnotebooks.com>, registered with FastDomain Inc..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2022; the Forum received payment on June 3, 2022.
On June 6, 2022, FastDomain Inc. confirmed by e-mail to the Forum that the <cliffnotebooks.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 June 7, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2022 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@cliffnotebooks.com. Also on June 7, 2022, 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 July 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in CLIFFSNOTES. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant offers study guides by reference to the trademark, CLIFFSNOTES, registered with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 2,497,612, from October 16, 2001;
2. the disputed domain name was registered on February 12, 2008 and has been used in a manner described later; and
3. there is no relationship between the parties.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights as it provides proof of its registration of the trademark, CLIFFSNOTES, with the USPTO, a national trademark authority.
For the purposes of comparison of the domain name with the trademark the gTLD, “.com”, can be disregarded (see, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The disputed domain is a readily understood combination of “cliff” and “note books”/ “notebooks” and so it differs little from the trademark since “cliff” would most likely be understood as a male forename rather than a common noun, whilst “notes” and “note books”/ “notebooks” are conceptually similar. The Panel finds the domain name to be confusingly similar to the trademark (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
Complainant has therefore satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Registrar confirmed the domain name registrant as “Kathy Rees” and the registrant organisation as “One Hour Expert”. There is nothing in the evidence before the Panel which might suggest that Respondent is commonly known by the domain name, nor any evidence that Respondent has trademark rights of its own.
The Complaint states that:
“… Respondent is using the Infringing Domain Name to attempt to disrupt [Complainant’s] business, as the Infringing Domain Name resolves to a website that prominently displays [Complainant’s] trademark at the top of the page and offers literary book reviews similar to [Complainant’s] Study Guides.”
Exhibit 13 to the Complaint shows the landing webpage to which the domain name resolves. The Panel notes that it does not, as asserted, display Complainant’s trademark. What it does show in the form of a banner is the domain name underneath which is the strapline, “Books In A Page”.
Nor, in the Panel’s assessment, is the website content similar to that of “study guides”. The first entry on the landing page under “Best Sellers” is a thumbnail overview dated June 23, 2020 of an autobiography by Edward Snowden. Other popular books are summarised.
The Panel navigated the site and found it to be somewhat unrefined but not obviously a sham. Further, the Panel’s use of the Internet Archive resource shows active use of the domain name since 2008.
The Panel is entitled to accept Complainant’s reasoned allegations but may deny relief where allegations are merely conclusory (see, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”)). That noted, it is generally agreed that Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the domain name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).
Here, the domain name was created in 2008 and there is no explanation as to why it has taken Complainant 14 years to bring these proceedings or how the domain name has been used over that time. At present, a simple website resolves from the domain name which does not trade on Complainant’s reputation in study guides and does not use Complainant’s trademark. If historical use of the domain name may have thrown a shadow over Respondent’s bona fides, we may never know since the Complaint has been so slow coming.
The Panel is left to pause and wonder why the name “Cliff” was chosen by Respondent, especially since the named website contact is a “Lynette Hoy” and, as stated, the domain name holder is “Kathy Rees”. However, the Panel is at the same time mindful that both the trademark and the domain name are composed of a commonplace name plus descriptive nouns and so the chance that the domain name was coined in good faith is not unreasonable.
As the evidence has been presented, the Panel finds that Complainant has failed to make a prima facie case that Respondent lacks a right or interest in the domain name. Put another way, the Panel finds that Complainant has not made a prima facie case that Respondent’s conduct does not fall under either of paragraphs 4(c)(i) or (iii) of the Policy.
Accordingly, the second limb of the Policy has not been established and the Complaint fails.
No findings required (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ORDERED that the <cliffnotebooks.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: July 11, 2022
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