Course Hero, Inc. v. Math Solvers
Claim Number: FA2206001999073
Complainant is Course Hero, Inc. (“Complainant”), represented by Phillip Barengolts of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Math Solvers (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <symbolab.us>, which is registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2022; the Forum received payment on June 3, 2022.
On June 6, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <symbolab.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 7, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@symbolab.us. Also on June 7, 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 July 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the name and mark SYMBOLAB, offers an online math education tool.
Complainant holds a registration for the SYMBOLAB mark, which is on file with the United Kingdom Intellectual Property Office (“UKIPO”) as Registry No. UK00003553369, registered March 19, 2021.
Respondent registered the domain name <symbolab.us> on July 19, 2021.
The domain name is substantively identical and confusingly similar to Complainant’s SYMBOLAB mark.
Respondent is not the owner or beneficiary of a trademark identical to the disputed domain name.
Respondent has not been commonly known by the domain name.
Respondent is not affiliated with or related to Complainant in any way.
Complainant has not licensed or otherwise authorized Respondent to use the SYMBOLAB mark.
Respondent has neither rights to nor legitimate interests in the domain name.
Respondent registered the domain name in order to disrupt Complainant’s business and divert its customers for Respondent’s commercial gain.
Respondent registered the domain name with knowledge of Complainant’s rights in the SYMBOLAB mark.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has rights in the SYMBOLAB trade mark sufficient for purposes of Policy¶4(a)(i) by virtue of its registration of the mark with a national trademark authority, the UKIPO. See, for example, Citigroup Inc. v. Kevin Goodman, FA 1623939 (Forum July 11, 2015):
Complainant’s ownership of UKIPO trademark registrations for the CITI trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <symbolab.us> domain name is substantively identical, and, therefore, confusingly similar to Complainant’s SYMBOLAB trade mark. The domain name incorporates the mark in its entirety, with only the addition of the country code Top Level Domain (“ccTLD”) “.us” (for United States). This alteration of the mark, made in forming the domain name, does not save the domain name from the realm of identity or confusing similarity under the standards of the Policy.
See, for example, Blue Cross and Blue Shield Assoc. v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a gTLD, … or ccTLD) is disregarded under a Policy¶4(a)(i) analysis because domain name syntax requires TLDs.
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks any rights to or legitimate interests in the <symbolab.us> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy¶4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the domain name that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <symbolab.us> domain name. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain name under Policy ¶ 4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a contested domain name, it could not lay claim to rights to or legitimate interests in that domain name under Policy¶4(c)(i). To the same effect, see also Fiberweb Geosynthetics Limited v. Belcanto Investment Group Limited, FA1599564 (Forum February 12, 2015).
We next observe that Complainant asserts, without objection from Respondent, that the <symbolab.us> domain name resolves to a website offering math solving services in competition with the business of Complainant, from the operation of which Respondent realizes financial gain. Such a use does not constitute “a bona fide offering of goods or services” within the meaning of Policy¶4(c)(ii). See, for example, H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017):
A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant further contends that Respondent has not been commonly known by the <symbolab.us> domain name, and, again, Respondent does not dispute this assertion. In the absence of evidence to the contrary, we are left to conclude that Respondent cannot find refuge in the provision of Policy ¶4(c)(iii), which would accept that Respondent has rights to or legitimate interests in its domain name if it were shown that Respondent has been commonly known by that domain name. We note, however, that it would be difficult for Respondent to make such a showing given that it has owned the domain name only since July 19, 2021, and that the pertinent WHOIS record identifies Respondent only as “Math Solvers,” which does not resemble the domain name.
Finally, under this head of the Policy, we are called upon to consider whether Respondent may lay claim to rights to or legitimate interests in the <symbolab.us> domain name on grounds that it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain…,” as provided in Policy¶4(c)(iv). It suffices to say that, because, as spelled out above, the Complaint alleges, without contravention by Respondent, that the domain name resolves to a website offering math solving services in competition with the business of Complainant, from the operation of which website Respondent realizes financial gain. This uncontradicted assertion thus forecloses that approach to a claim of rights to or legitimate interests in the domain name because Respondent’s use of the domain name it is undisputed that Respondent’s employment of the domain name is not “noncommercial” but is instead pursued “for commercial gain.”
The Panel therefore finds that Complainant has adequately satisfied the proof requirements of Policy¶4(a)(ii).
We are persuaded by the evidence that Respondent uses the challenged <symbolab.us> domain name misleadingly to offer to those seeking to do business with Complainant online math solving services in competition with the business of Complainant, thus to acquire financial gain. This scheme undoubtedly disrupts Complainant’s business within the ambit of Policy ¶ 4(b)(iv), and therefore stands as proof of Respondent’s bad faith in both registering and using the domain name. See, for example, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith registration and use of a disputed domain name under Policy ¶ 4(b)(iv), where a respondent used the domain name to resolve to a website at which it passed itself off as a UDRP complainant in order to market online cryptocurrency services in competition with that complainant’s business). See also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum February 16, 2007):
The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the … domain name and Complainant’s … mark in order to profit from the goodwill associated with the mark.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <symbolab.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 12, 2022
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