DECISION

 

Law School Admission Council, Inc. v. Vandalay Media / sean matthews

Claim Number: FA2405002096289

 

PARTIES

Complainant is Law School Admission Council, Inc. ("Complainant"), represented by Wendy K. Marsh of Nyemaster Goode, P.C., Iowa, USA. Respondent is Vandalay Media / sean matthews ("Respondent"), Florida, USA

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <lsatdoctor.com>, <lsat911.org> and <lsatdr.com> ("Domain Names"), registered with GoDaddy.com, LLC and Network Solutions, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 3, 2024; Forum received payment on May 3, 2024.

 

On May 6, 2024 and May 8, 2024, GoDaddy.com, LLC and Network Solutions, LLC confirmed by e-mail to Forum that the <lsatdoctor.com>, <lsat911.org> and <lsatdr.com> domain names are registered with GoDaddy.com, LLC and Network Solutions, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Network Solutions, LLC have verified that Respondent is bound by the GoDaddy.com, LLC and Network Solutions, LLC registration agreements 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 May 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 2024 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@lsatdoctor.com, postmaster@lsat911.org and postmaster@lsatdr.com. Also on May 9, 2024, 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 May 30 ,2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Law School Admission Council, Inc., is a not-for-profit organization that provides products and services that support candidates and schools through the law school admissions process. This includes the Law School Admission Test (LSAT) which is a commonly used admissions tool in the United States, Canada and other countries, with over 100,000 applicants annually. Complainant asserts rights in the LSAT mark based upon use in connection with testing and test preparation course materials since 1948 and registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,082,047, registered January 10, 1978). Respondent's <lsatdoctor.com>, <lsat911.org> and <lsatdr.com> domain names are confusingly similar to Complainant's mark because each domain name wholly incorporates the LSAT mark in its entirety and adds a generic term or abbreviation, and the generic top-level domain ("gTLD") ".com".

 

Respondent does not have rights or legitimate interests in the <lsatdoctor.com>, <lsat911.org> and <lsatdr.com> domain names. Respondent is not licensed or authorized to use Complainant's LSAT mark and is not commonly known by the Domain Names. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate non-commercial or fair use as its sole apparent use is to pass off as affiliated with Complainant for the promotion of competing services.

 

Respondent registered and uses the <lsatdoctor.com>, <lsat911.org> and <lsatdr.com> domain names in bad faith.  Respondent has attempted to disrupt Complainant's business and attract internet users to its sites for commercial gain by creating a likelihood of confusion as to the source or affiliation of its website. Additionally, Respondent has attempted to pass itself off as Complainant or licensee thereof and offers unauthorized versions of Complainant's products and services.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the domain names <lsatdoctor.com>, <lsat911.org> and <lsatdr.com>, has not established all required elements of its claim, and thus its complaint in respect of <lsatdoctor.com>, <lsat911.org> and <lsatdr.com> must be denied.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant has rights in the LSAT mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 1,082,047, registered January 10, 1978). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) ("Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

The Panel finds that each of the <lsatdoctor.com>, <lsat911.org> and <lsatdr.com> domain names are confusing similar to Complainant's LSAT mark as they each wholly incorporate the LSAT mark and add either a generic term or abbreviation ("doctor/dr") or a three-digit number, and a gTLD.  Registration of a domain name that incorporates a complainant's mark and adds a number or a generic term and a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i).  See 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."); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because the domain name syntax requires TLDs.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names 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) and 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.").

 

The Panel holds that Complainant has not made out such a prima facie case and that Respondent is making a bona fide offering of goods and services at the Doman Names. Indeed, the facts of this case are remarkably similar to Law School Admission Council, Inc. v. Fischel Bensinger, FA 2054973 (Forum Aug. 31, 2023) in which Complainant unsuccessfully sought transfer of a domain name that was using Complainant's LSAT mark for the sole purpose of accurately describing their LSAT test preparation services.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because Respondent offers and promotes unauthorized services and passes off as being associated with the Complainant.

 

The Domain Names were registered in 2016. The evidence before the Panel is that each of the Domain Names resolves to a website ("Respondent's Website") at <lsat911.org>. At the Respondent's Website, Respondent, under the name www.LSAT911.org or Dr. LSAT, offers private or group tutoring preparing students for the Law School Admission Test (LSAT). It appears that Respondent has offered these services since 2017. The Respondent's Website contains the disclaimer "*Test names and other trademarks are the property of the respective trademark holders. None of the trademark holders are endorsed by nor affiliated with LSAT911.org or this website."

 

Contrary to the unsupported assertions in the Complaint about the Respondent's Website mimicking Complainant or "falsely suggest that they are associated with Complainant" there is nothing in the Respondent's Website would imply to a visitor that Respondent is anything other than what it is, namely a business offering a LSAT preparation service independent of Complainant. There is a clear disclaimer, no obvious assertion that Respondent is connected to Complainant and no apparent use of Complainant's get-up or copyrighted material on the Respondent's Website. Indeed it would be difficult for any visitor to think that they were visiting a website operated by the Complainant when the most prominent words on the website are "Private LSAT Tutoring For Almost 50% Less Than The Big Companies!"

This doctrine of nominative fair use has been applied by UDRP panels.  The leading decision is Oki-Data, in which the respondent was a reseller of the complainant's OKIDATA products.  The respondent registered and used the domain name <okidataparts.com> in connection with that business.  The panel in that case concluded that this use could be a bona fide offering of goods or services within the meaning of the Policy if the following conditions were satisfied: 

·       The respondent must actually be offering the goods or services at issue,

·       The respondent must use the site to sell only the trademarked goods (otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods),

·       The site itself must accurately disclose the respondent's relationship with the trademark owner, and

·       The respondent must not try to 'corner the market' in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

Other panels have concluded that applying the nominative fair use doctrine could also be appropriate in cases other than those involving a reseller of branded parts, provided that the respondent operated a business genuinely revolving around the trademark owner's goods or services, see National Association for Stock Car Auto Racing, Inc. v. Racing Connection/The Racin' Connection, Inc.,  D2007-1524 (WIPO January 28, 2008) and YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC. FA 1675141 (Forum July 11, 2016). Such services do not have to be authorized by a Complainant. The Oki Data standard has repeatedly been applied in the context of unauthorized resellers/repair companies. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., D2007-1524 (WIPO Jan. 28, 2008); Volvo Trademark Holding AB v. Peter Lambe, D2001-1292 (WIPO June 8, 2005); and YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC. FA 1675141 (Forum July 11, 2016).  Indeed, there is no reason to distinguish between nominative fair use principles whether the user is authorized or unauthorized.  Either way, if the use is fair and non-confusing, it should be permitted.

In the present case Respondent on its face appears to be offering LSAT test preparation services under the names LSAT911.org or Dr. LSAT. Complainant asserts that Respondent is providing unauthorized services that falsely suggest that they are associated with the Complainant. To the extent that Respondent's services are not authorized by Complaint, such authorization is not required for the purposes of establishing nominative fair use.

The Panel is satisfied that the Respondent is making a bona fide offering of goods and services at the Doman Name. The Respondent is offering independent LSAT test preparation services under the names LSAT911.org or Dr. LSAT. The Respondent is not seeking to pass off as the Complainant or as associated with the Complainant as there is nothing on the Respondent's Website that suggests an affiliation with the Complainant beyond the fact that Respondent offers services connected with Complainant's LSAT; indeed it would be difficult to identify how Respondent could describe or advertise its LSAT test preparation services absent any use of the term "LSAT". The Respondent is not trying to corner the market in domain names to deprive Complainant of the opportunity to reflect its mark in a domain name.

In summary it appears that Respondent operates a legitimate business offering LSAT test preparation services and both in the Domain Names and on the Respondent's Website uses the term LSAT to describe the services it offers. There is no evidence that that Respondent is seeking to take advantage of any similarity between the Domain Names and LSAT mark beyond that which arises from a truthful use of the LSAT mark to describe the services that Respondent's business provides.

 Complainant has failed to demonstrate that Respondent lacks rights or a legitimate interest in the Domain Names.

 

Registration and Use in Bad Faith

In light of the Panel's dispositive finding on the issue of rights or legitimate interests, the Panel declines to address the question of registration and use in bad faith.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <lsatdoctor.com>, <lsat911.org> and <lsatdr.com> domain REMAIN WITH Respondent.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: May 30, 2024