Udemy, Inc. v. Noxtools / Nox Tools
Claim Number: FA2305002046849
Complainant is Udemy, Inc. (“Complainant”), represented by Jessica Tam of Udemy, Inc., California, USA. Respondent is Noxtools / Nox Tools (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <udemy.host>, (‘the Domain Name’) registered with DOTSERVE INC..
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 as Panelist.
Complainant submitted a Complaint to Forum electronically on May 31, 2023; Forum received payment on May 31, 2023.
On June 2, 2023, DOTSERVE INC. confirmed by e-mail to Forum that the <udemy.host> Domain Name is registered with DOTSERVE INC. and that Respondent is the current registrant of the name. DOTSERVE INC. has verified that Respondent is bound by the DOTSERVE 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 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 2023 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.host. Also on June 6, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
The Complainant’s contentions can be summarised as follows:
The Complainant owns the trade mark UDEMY registered, inter alia, in the USA for online learning services with first use recorded as 2010.
The Domain Name registered in 2023 is identical to the Complainant’s mark for the purposes of the Policy because it wholly incorporates it and is differentiated from it only by the addition of the gTLD .host.
Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
Respondent currently uses the Domain Name to pass off as Complainant to engage in a copyright infringement scheme wherein Respondent sells access to Complainant’s subscription service through a hacked account. The Respondent is mirroring an account belonging to one of Complainant’s customers and selling access to it through its own site. Copyright infringement is not a bona fide offering of goods or services or a legitimate non commercial fair use. It is opportunistic bad faith in actual knowledge of the Complainant and its rights, confusing Internet users by unlawful commercial gain and disrupting the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark UDEMY registered, inter alia, in the USA for online learning services with first use recorded as 2010.
The Domain Name registered in 2023 has been used to sell access to the Complainant’s subscription service through a hacked account.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The Domain Name consists of the Complainant’s UDEMY trade mark (registered, inter alia, in the USA for online learning services with first use recorded as 2010) and the gTLD .host.
The gTLD .host does not serve to distinguish the Domain Name from the Complainant’s 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 identical for the purpose of the Policy to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial and so cannot be non commercial legitimate fair use.
The web site attached to the Domain Name offered unlawful access to the Complainant’s services through a hacked account. The site did not make it clear that there is no commercial connection between the site attached to the Domain Name and the Complainant and the web site appeared official. The Panel finds this use was deceptive. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.)
Using a Domain Name to pass off a service as that of the trade mark owner relating to that service is not a bona fide offering. See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”).
Use of a domain name to offer hacked services is not a bona fide offering of goods and services. Microsoft Corp. v. Webmasterz Entertainment, FA 1266932 (Forum Aug. 5, 2009) (determining that there was no bona fide offering, or legitimate use, when the domain name at issue was being used to hack into the accounts and services of the complainant and complainant’s customers).
The Respondent has not answered the Complaint or rebutted the prima facie case evidenced by the Complainant.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers unlawful access to the Complainant’s services giving the impression that the site attached to the Domain Name is official. Offering access to the Complainant’s services through a hacked account shows that the Respondent has actual knowledge of the Complainant and its business, products and rights.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
See also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Further, offering hacked services is registration and use in bad faith. Microsoft Corp. v. Thanh, FA 1653178 (Forum Jan. 24, 2016) (holding that respondent registered and used its domain in bad faith where it was used to offer free access to complainant’s Minecraft game). As is unlawful conduct which has also been held, in and of itself, to evidence bad faith registration and use. Autodesk Inc. v. Telecom Tech Corp, WIPO Case No. D2011-1670 (January 30, 2011) (“A respondent’s use of a disputed domain name to pursue an illegal activity automatically qualifies that domain as having been registered and used in bad faith.”), Cameron Thomaz P/K/A Wiz Khalifa and Wize Khalifa Trademark, LLC v. Kyle Lynch, WIPO Case No. 2014-1525 (November 4, 2014) (finding bad faith registration and use where respondent’s webpages offered illegal downloads of complainant’s music.).
As such, the Panelist believes that the 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 under para 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <udemy.host> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 7, 2023
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