Law School Admission Council, Inc. v. Giuseppe Lagioia / DomainForSale
Claim Number: FA2203001990118
Complainant is Law School Admission Council, Inc. (“Complainant”), represented by Wendy K. Marsh of Nyemaster Goode, P.C., Iowa, USA. Respondent is Giuseppe Lagioia / DomainForSale (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lsatprepcourse.com>, registered with DropCatch.com 382 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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2022; the Forum received payment on March 29, 2022.
On March 29, 2022, DropCatch.com 382 LLC confirmed by e-mail to the Forum that the <lsatprepcourse.com> domain name is registered with DropCatch.com 382 LLC and that Respondent is the current registrant of the name. DropCatch.com 382 LLC has verified that Respondent is bound by the DropCatch.com 382 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 March 30, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2022 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@lsatprepcourse.com. Also on March 30, 2022, 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 April 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown 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 made the following contentions.
Complainant is a not-for-profit organization that provides products and services for individuals applying to law school. Complainant asserts rights in the LSAT PREP mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 6,548,410, registered on November 2, 2021). See Compl. Ex. 1. Respondent’s <lsatprepcourse.com> domain name is identical or confusingly similar to Complainant’s LSAT PREP mark, as it incorporates the mark in its entirety, only adding the generic term “course” and the “.com” generic top-level domain (gTLD).
Respondent lacks rights and legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the LSAT PREP mark, nor is Respondent commonly known by the disputed domain name.
Respondent registered and uses the <lsatprepcourse.com> domain name in bad faith. Respondent uses the disputed domain name to redirect users to third-parties and to install malware on unsuspecting users’ devices. Furthermore, Respondent’s use of a privacy service indicates bad faith. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the mark.
Respondent registered the <lsatprepcourse.com> domain name was on February 26, 2022.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States not-for-profit organization that provides products and services for individuals applying to law school.
2. Complainant has established its rights in the LSAT PREP mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 6,548,410, registered on November 2, 2021).
3. Respondent registered the <lsatprepcourse.com> domain name on February 26, 2022.
4. Respondent uses the disputed domain name to redirect internet users to third-party sites and to install malware on unsuspecting users’ devices. Furthermore, Respondent’s use of a privacy service indicates bad faith.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Respondent submits that it has rights in the LSAT PREP mark through its registration of the mark with the USPTO (e.g., Reg. No. 6,548,410, registered on November 2, 2021). See Compl. Ex. 1. Registering a mark with the USPTO is sufficient to establish rights in a mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Therefore, the Panel finds Complainant has sufficiently established rights in the LSAT PREP mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LSAT PREP mark. Complainant argues Respondent’s <lsatprepcourse.com> domain name is identical or confusingly similar to Complainant’s LSAT PREP mark, as it incorporates the mark in its entirety, only adding the generic term “course” and the “.com” gTLD. The mere addition of a generic term and gTLD is not enough to differentiate a disputed domain name from a mark. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel therefore finds the <lsatprepcourse.com> domain name is confusingly similar to Complainant’s LSAT PREP mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
(a) Respondent has chosen to take Complainant’s LSAT PREP mark and to use it in its domain name adding only the generic term “course” to the mark which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <lsatprepcourse.com> domain name on February 26, 2022;
(c) Respondent uses the disputed domain name to redirect internet users to third-party sites, install malware on unsuspecting users’ devices and to adopt the use a privacy service for registration of the domain name which indicates bad faith;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights and legitimate interests in the <lsatprepcourse.com> domain name because Respondent is not authorized to use the LSAT PREP mark, nor is Respondent commonly known by the disputed domain name. Past panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information shows Respondent is known as “Giuseppe Lagioia / DomainForSale” and there is no evidence to suggest Complainant authorized Respondent to use the LSAT PREP mark. See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f)The Panel also finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website attempts to download malware onto users’ devices. Using a disputed domain name to install malware to unknowing users’ devices is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018). In the present case, the Panel refers to screenshots of the resolving website adduced by Complainant, which direct users to download an ad, and the Panel therefore finds Respondent is not using the disputed domain name in compliance with Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <lsatprepcourse.com> domain name in bad faith since the domain name at times redirects users to a variety of third-party websites from which Respondent likely receives a referral fee. Use of a disputed domain name to attract users for commercial benefit is evidence of bad faith under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Here, Complainant submits that the disputed domain name redirects users to a variety of third-party websites. See Compl. Ex. 18. Therefore, the Panel finds bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues Respondent’s attempt to download malware onto users’ devices is evidence of bad faith. Using a domain name to download malware is an indication of bad faith: eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015). Here, Complainant provides screenshots showing users who attempt to reach the resolving website for the disputed domain name are presented with a pop-up prompting them to download a browser extension that is likely malware. See Compl. Exs. 15-17. Therefore, the Panel finds Respondent registered and uses the domain name in bad faith.
Thirdly, Complainant contends Respondent’s use of a privacy service indicates bad faith. The consensus view amongst panels is that use of a privacy service, without more, does not constitute bad faith registration and use: WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith as there are many legitimate reasons for proxy registration services). However, as the Panel agrees that Respondent in the present case has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent had constructive and/or actual knowledge of Complainant’s rights in the LSAT PREP mark based on the fame of the mark. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant’s rights in a mark is evidence of bad faith and may be indicated by the fame of the mark. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). Complainant contends that Respondent must have been aware of Complainant’s marks due to the fame of the marks. The Panel agrees and finds actual knowledge and thus bad faith on the part of Respondent.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lsatprepcourse.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: April 26, 2022
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