Pearson plc v. Savvy Investments, LLC Privacy ID# 995949
Claim Number: FA1904001838495
Complainant is Pearson PLC (“Complainant”), represented by Patrick J. Gallagher of Cozen O'Connor, Minnesota, USA. Respondent is Savvy Investments, LLC Privacy ID# 995949 (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pearsonassessment.com>, registered with Sea Wasp, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 11, 2019; the Forum received payment on April 11, 2019.
On April 12, 2019, Sea Wasp, LLC confirmed by e-mail to the Forum that the <pearsonassessment.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 April 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2019 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@pearsonassessment.com. Also on April 25, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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
Complainant contends as follows:
Complainant is a British-based multinational publishing and education company operating since 1897.
Complainant has rights in the PEARSON mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <pearsonassessment.com> domain name is confusingly similar to Complainant’s PEARSON mark because it wholly incorporates the PEARSON mark with the addition of the descriptive term “assessment” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <pearsonassessment.com> domain name. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use the at-issue domain name. Respondent does not use the domain name in connection with a bona fide offering of goods and services because Respondent engages in attraction for commercial gain by using the resolving website to host competing hyperlinks in a pay-per-click scheme.
Respondent registered and is using the <pearsonassessment.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith registrations. Respondent uses Complainant’s PEARSON mark to divert visitors to an inactive website and then to competitors’ websites for commercial gain. Respondent had actual and constructive knowledge of Complainant’s rights in the PEARSON mark at the time of registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the PEARSON mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the PEARSON trademark.
Respondent uses the <pearsonassessment.com> domain name to address a website offering pay-per-click links to third parties including Complainant’s competitors.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for PEARSON demonstrates its rights in a mark for the purposes of Policy ¶ 4(a)(i). 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.”).
Respondent’s <pearsonassessment.com> domain name contains Complainant’s PEARSON trademark followed by the suggestive term “assessment” and the top-level domain name “.com.” The differences between Complainant’s trademark and Respondent’s domain name are insufficient to distinguish one from the other for the purposes of Policy ¶ 4 (a)(i). Therefore, the Panel finds that Respondent’s <pearsonassessment.com> domain name is confusingly similar to Complainant’s PEARSON trademark. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at-issue domain name.
The WHOIS information for the at-issue domain name discloses “Savvy Investments, LLC” as the domain name’s registrant. There is nothing in the record that otherwise suggests Respondent is commonly known by the <pearsonassessment.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also, Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s confusingly similar domain name addresses a webpage offering pay-per-click links to third parties, some of whom are Complainant’s competition. Such use of the at-issue domain name shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”)
Given the forgoing, Complainant conclusively demonstrates Respondent’s lack of rights and lack of interests in the <pearsonassessment.com> domain name.
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Complainant shows that Respondent is tied to, or perhaps the alter ego of, a party that is the recipient of multiple adverse UDRP decisions. Further, nothing in the record contains evidence, or even allegations, to the contrary, Respondent’s pattern of abusive domain name registrations evidences bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”)
Next and as mentioned above concerning rights and legitimate interests, Respondent uses the at-issue domain name to address a website containing hyperlinks to third parties and that some of these third parties are Complainant’s competitors. Using the confusingly similar <pearsonassessment.com> domain name in this manner indicates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Additionally, Respondent engages in a form of typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark, or as here into an official domain name of the trademark holder, and then uses the resulting string in a domain name hoping that internet users will either: 1) inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark or official domain name; and/or 2) in viewing the domain name will confuse the domain name with its target trademark or official domain name. Here, in creating the at-issue <pearsonassessment.com> domain name, Respondent misspells <pearsonassessments.com>, one of Complainant’s official domain names, by simply removing an “s.” Typosquatting indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <pearsonassessment.com> domain name knowing that Complainant had trademark rights in the PEARSON mark. Respondent’s prior knowledge of Complainant’s trademark is evident from the notoriety of Complainant’s trademark and Respondent’s incorporation of Complainant’s entire mark as well as a term suggesting Complainant’s “assessment” related business into the <pearsonassessment.com> domain name. Moreover and as also mentioned above, the domain name is a misspelling of Complainant’s <pearsonassessments.com> domain name. Respondent’s knowledge of Complainant's trademark before registering the at-issue domain name further indicates that Respondent registered and used <pearsonassessment.com> in bad faith. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pearsonassessment.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 19, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page