DECISION

 

Law School Admission Council, Inc. v. Nathan Cepelinski / City Jingles

Claim Number: FA2405002098803

 

PARTIES

Complainant is Law School Admission Council, Inc. ("Complainant"), represented by Wendy K. Marsh of Nyemaster Goode, P.C., Iowa, USA. Respondent is Nathan Cepelinski / City Jingles ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <masterlsat.com> ("Domain Name"), 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.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 21, 2024; Forum received payment on May 21, 2024.

 

On May 22, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <masterlsat.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 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@masterlsat.com. Also on May 23, 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 11, 2024.

 

On June 12, 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name 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 <masterlsat.com> domain name is confusingly similar to Complainant's mark because it wholly incorporates the LSAT mark in its entirety and adds the generic term "master", and the generic top-level domain ("gTLD") ".com".

 

Respondent does not have rights or legitimate interests in the <masterlsat.com> domain name. Respondent is not licensed or authorized to use Complainant's LSAT mark and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate non-commercial or fair use as seeks to pass itself off as affiliated or associated with Complainant for the promotion of competing services.

 

Respondent registered and uses the <masterlsat.com> domain name in bad faith.  Respondent by incorporating the LSAT mark in the Domain Name 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 an associate or licensee thereof.

 

B. Respondent

The Response in its entirety is set out below:

 

"I received this complaint on May 23 2024. I was immediately in touch with complainant who acknowledged that they simply wanted to sign a licensing agreement with me to allow me to continue using the domain. We agreed on the terms and they agreed to send paperwork for signing. They also agreed to withdraw this complaint upon initiating our agreement.

 

I am still willing to sign the agreement. However, I have not received it from them as of yet.

 

In the event that the agreement is not initiated, I am contesting this domain challenge on the grounds that my domain makes no claim, explicit or implicit, to be affiliated with LSAC or any of its trademarks. Being that I am an LSAT tutor, there is simply no reasonable way to advertise my services without mentioning "LSAT" as part of my website. Many third-party LSAT prep companies use "LSAT" in their names and domains, and no reasonable consumer would interpret that alone as affiliation with LSAC."

 

FINDINGS

Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the domain name <masterlsat.com>, has not established all required elements of its claim, and thus its complaint in respect of <masterlsat.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.

 

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 the <masterlsat.com> domain name is confusing similar to Complainant's LSAT mark as it wholly incorporates the LSAT mark and adds a generic term ("master"), and a gTLD.  Registration of a domain name that incorporates a complainant's mark and adds 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 Name. 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 Name 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 Name. Indeed, the facts of this case are remarkably similar to Law School Admission Council, Inc. v. Fischel Bensinger FA 2054973 (Forum Aug. 31, 2023) and Law School Admission Council, Inc. v. Vandalay Media / sean Matthews FA 2096289 (Forum May 31, 2024) and in which Complainant unsuccessfully sought transfer of domain names that were using Complainant's LSAT mark for the sole purpose of accurately describing the LSAT test preparation services offered by the respective respondents.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because Respondent offers and promotes unauthorized services and passes off as being associated with the Complainant.  The Domain Name was registered in 2016 and resolves to a website ("Respondent's Website") where Respondent, under the name MASTER LSAT or Nate Morris, offers private or group tutoring preparing students for the Law School Admission Test (LSAT). It appears that Respondent has offered these services since 2013. While the Respondent's Website does not contain a disclaimer indicating that the services are not authorized by the Complainant, it is immediately apparent upon first viewing of the page (due to the prominently displayed statements "Premium LSAT Course With The World's #1 LSAT Tutor" and "Nate's students quickly see tremendous score increases and get admitted into their dream schools.") that the Respondent's Website is offering private tutoring services for the LSAT by an individual ("Nate") separate to the Complainant.

 

Contrary to the unsupported assertions in the Complaint that the Domain Name and Respondent's Website "falsely suggest that they are associated with Complainant" there is nothing in the Respondent's Website that 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. As noted in the Response, the Respondent's Website makes no claim, explicit or implicit to be affiliated with the Complainant.  There is 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. The Panel accepts the Respondent's submissions that there is simply no reasonable way to advertise its services as a private LSAT tutor without mentioning "LSAT" on the Respondent's Website and that and no reasonable consumer would interpret the mere reference to LSAT alone as affiliation with the Complainant.

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 Jan. 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.

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 MASTER LSAT or Nate Morris. 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 and there is no "bait and switch" at the Respondent's Website; the Respondent offers services that are asserted to assist customers in "mastering the LSAT".

In summary, it appears that Respondent operates a legitimate business offering LSAT test preparation services and both in the Domain Name 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 Name 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 Name.

 

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 <masterlsat.com> domain name REMAIN WITH Respondent.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: June 12, 2024