Law School Admission Council, Inc. v. Fischel Bensinger
Claim Number: FA2307002054973
Complainant is Law School Admission Council, Inc. (“Complainant”), represented by Wendy K. Marsh of Nyemaster Goode, P.C., Iowa, USA. Respondent is Fischel Bensinger (“Respondent”), represented by Anderson J. Duff of DUFF LAW PLLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lsatbyfisch.com> (“Domain Name”), registered with NetEarth One Inc. d/b/a NetEarth.
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.
Jeffrey J. Neuman and Michael A. Albert as Panelists and Nicholas J.T. Smith, as chair Panelist
Complainant submitted a Complaint to Forum electronically on July 27, 2023; Forum received payment on July 27, 2023.
On July 27, 2023, NetEarth One Inc. d/b/a NetEarth confirmed by e-mail to Forum that the <lsatbyfisch.com> domain name is registered with NetEarth One Inc. d/b/a NetEarth and that Respondent is the current registrant of the name. NetEarth One Inc. d/b/a NetEarth has verified that Respondent is bound by the NetEarth One Inc. d/b/a NetEarth 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 July 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@lsatbyfisch.com. Also on July 27, 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.
A timely Response was received and determined to be complete on August 16, 2023.
On August 25, 2023, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed Jeffrey J. Neuman, Michael A. Albert and Nicholas J.T. Smith as Panelists.
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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
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 <lsatbyfisch.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates the LSAT mark in its entirety and adds the additional elements “by fisch” implying that “fisch” is a member or affiliated with Complainant, and the generic top-level domain (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <lsatbyfisch.com> domain name. 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 unauthorized or counterfeit products.
Respondent registered and uses the <lsatbyfisch.com> domain name 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 or counterfeit versions of Complainant’s products and services.
B. Respondent
Respondent is an individual who offers a class to assist prospective law students prepare for and take the LSAT. Respondent registered the Domain Name, which reflects the name under which he promotes his business (LSAT BY FISCH) in 2008 and has continuously used the Domain Name since 2008 for a website promoting his LSAT test preparation services. Respondent’s services are recognized by local law schools in the New York area and Respondent is known to Complainant, having encouraged his students to purchase test materials from Complainant and having engaged with Complainant directly since 2008.
Respondent has rights or legitimate interests in the Domain Name as he is both commonly known by the Domain Name (as it reflects his trading name) and it is nominative fair use as it describes the services he offers (LSAT test preparation services by Fisch[el Bensinger]). As such, Respondent is using the Domain Name for a bona fide offering of goods or services and has done so for 15 years. Respondent does not pass off as Complainant on the Domain Name’s resolving website (“Respondent’s Website”) and has not attempted to take advantage of Complainant’s LSAT mark.
Respondent did not register or use the Domain Name in bad faith. Respondent does not use the Domain Name to pass itself off as Complainant, provides his contact details on the Respondent’s Website and has been in contact with the Complainant since 2008. The Domain Name does not confuse consumers and Complainant’s actions are a deliberate attempt to prevent Respondent from teaching LSAT courses without paying it a licensing fee, a misuse of its market power.
Finally, Respondent argues that the doctrine of laches precludes the relief sought by Complainant.
Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the domain name <lsatbyfisch.com>, has not established all required elements of its claim, and thus its complaint in respect of <lsatbyfisch.com> must be denied.
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.
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.”).
In light of the Panel’s dispositive finding on the issue of rights or legitimate interests, the Panel declines to address the question of whether the Domain Name is identical or confusingly similar to the Complainant’s LSAT mark.
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.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because Respondent offers and promotes unauthorized and counterfeit services and passes off as being associated with the Complainant at the Respondent’s Website.
The Domain Name was registered on January 3, 2008. The Panel accepts the evidence that Respondent, since 2008, has offered services preparing students for the Law School Admission Test (LSAT) under the name LSAT by Fisch, “Fisch” being an abbreviation of his first name and a nickname. Shortly after the Domain Name was registered the Respondent’s Website contained the following statement:
“Welcome to Lsat by Fisch!
My name is Fischel Bensinger. Thank you for your interest in my prep-course for the June 2008 LSAT.
I have been teaching the LSAT for the last four years. Three of these were spent working for Kaplan, where I gained a reputation as their top LSAT
instructor and tutor.
In early 2007 I received the award for LSAT Teacher of the Year for the entire New York metro region.
I have also scored in the 99th percentile on the actual LSAT multiple times.
I work my students hard. This is part of my secret to guiding them to LSAT success. If you are not prepared to devote a SIGNIFICANT amount of time to LSAT study then this is not the course for you. However, if you do realize how important the LSAT is to your future, and are prepared to do what is necessary to improve your score, I am confident that I am your best option.
Please navigate through the tabs above, and learn more about my course.”
As of the date of the decision the Respondent’s Website contains similar information about Respondent, namely that he teaches a course on the LSAT under the name LSAT BY FISCH.
The content of the Respondent’s Website supports the statements made in the Response that Respondent operates a service independent of Complainant, preparing students to study for the Complainant’s LSAT. The Respondent provides evidence of the Respondent’s reputation in this area including reference by third parties in the New York area. While the Respondent’s Website does not contain an express disclaimer that Respondent is not the Complainant, there is nothing in the Respondent’s Website that would imply to a visitor that Respondent is anything other than what he is, namely an individual offering a LSAT preparation service independent of 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 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 “Fisch” is offering LSAT test preparation services under his own nickname “Fisch”. Complainant asserts that Respondent is providing unauthorized or counterfeit services. The Panel does not accept that Respondent’s services are counterfeit in that they are genuine LSAT preparation services, and to the extent that they 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 LSAT test preparation services under his own nickname. 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 his 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 Name and on the Respondent’s Website uses the term LSAT to describe the services he offers. There is no evidence 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.
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.
Complainant 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 <lsatbyfisch.com> domain name REMAIN WITH Respondent.
Jeffrey J. Neuman and Michael A. Albert as Panelists and Nicholas J.T. Smith, as Chair Panelist
Dated: August 31, 2023
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