DECISION

 

Law School Admission Council, Inc. v. Bradley Yi

Claim Number: FA2405002098364

 

PARTIES

Complainant is Law School Admission Council, Inc. ("Complainant"), represented by Wendy K. Marsh of Nyemaster Goode, P.C., Iowa, USA. Respondent is Bradley Yi ("Respondent"), represented by Avraham S.Z. Cohn, Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thelsatgenius.com>, registered with GoDaddy.com, 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.

 

David S. Safran, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 17, 2024; Forum received payment on May 17, 2024.

 

On May 20, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <thelsatgenius.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 May 21, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@thelsatgenius.com. Also on May 21, 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.

 

A timely Response was received and determined to be complete on June 6, 2024.

 

On June 10, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed David S. Safran 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends that the domain <thelsatgenius.com> is confusingly similar to it LSAT marks since it incorporates its LSAT mark in its entirety and the word "the" and "genius" are merely generic terms make the domain even more confusingly similar. Complainant also contends that Respondent has no rights or legitimate interests in the domain at issue because it was registered in the name of the owner of the domain and not a name corresponding to the domain, because the website to which the domain resolves mentions Complainant's mark and because Respondent is not a licensee of Complainant. Still further, Complainant contends that the <thelsatgenius.com> domain was registered and is being used in bad faith since it was registered with knowledge of Complaint's mark, the website to which the domain resolves creates a false association with Complainant and passes off as Complainant.

 

B. Respondent

Respondent asserts that the domain <thelsatgenius.com> is not confusingly similar to Complainant's marks because the word "genius" changes the whole impression of the domain from a test to a tutoring service. Additionally, Respondent contends that it has rights and legitimate interests in association with its use of the domain to promote its tutoring services and the use of the LSAT mark in association with that is a fair use of the mark because it is necessary to enable consumers to know the nature of the tutoring service. Still further, Respondent's website to which the domain resolves does not create a false association with, or pass off as being, Complainant and Complainant has failed to produce any evidence to support its contentions.

 

FINDINGS

The addition of the word "genius" changes the character of the domain from referring to the LSAT test to a person able to successfully take the test. That use of the mark LSAT on the website to which the domain at issue resolves is a fair and necessary use. Complainant has failed to provide evidence of confusion created by the website despite essentially a decade of use of the domain now has Complainant provided evidence as to why a website that is clearly directed to tutoring for its exam is in any way competitive with Complainant as opposed to fostering taking of its exam.

 

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.

 

Identical and/or Confusingly Similar

The Panel finds that the domain is not similar or confusingly similar to Complainants marks because the addition of the word "genius" changes the character of the domain from referring to the LSAT test to a person able to successfully take the test. See New Jersey Transit Corporation v. Michael Bue, FA 1650108 (Forum Jan. 13, 2015) ("…instantly tells the observer that the domain name is something quite different from the trademark and is intended to be different and to be understood to be different").

 

Rights or Legitimate Interests

The Panel finds that Respondent offers a legitimate service distinct from Complainant's offerings. Furthermore, the panel finds that Respondent's use of the LSAT mark is a "fair use" since it would otherwise be impossible to communicate consumers Respondent's specialization in tutoring for the LSAT without mentioning "LSAT". See Toyota Motor Sales v. Tabari, 610 F.3d 1171 (9th Cir. 2010) ("It would be unfair to merchants seeking to communicate the nature of the service or product offered at their sites. And it would be unfair to consumers, who would be deprived of an increasingly important means of receiving such information."). Thus, the Panel finds that Respondent has rights and legitimate interests in the domain name <thelsatgenius.com>.

 

Registration and Use in Bad Faith

The Panel finds that Complainant has provided no evidence of bad faith actions by Respondent. Thus, the Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) ("Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith."); See also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

 

DECISION

Having nor established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <thelsatgenius.com> domain name REMAIN WITH Respondent.

 

 

______________________________

 

David S. Safran, Panelist

Dated: June 12, 2024