EducationDynamics, LLC v.
Claim Number: FA0801001139891
PARTIES
Complainant is EducationDynamics,
LLC (“Complainant”), represented by Sarah K. Duran, of Davis Wright Tremaine
LLP,
Respondent is Texas International Property Associates (“Respondent”), represented by Gary
Wayne Tucker, of Law Office of Gary Wayne Tucker,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <eleaners.com> and <elearnes.com> (the
“Domain Names”), registered with Compana, LLC.
PANEL
The undersigned certify that they have acted independently and
impartially and, to the best of their knowledge, have no known conflict in
serving as Panelists in this proceeding:
Tyrus R. Atkinson, Jr. as Panelist
David E. Sorkin as Panelist
Christopher S. Gibson, Panel Chairman
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“NAF”)
electronically on January 23, 2008; the
NAF received a hard copy of the Complaint on January
24, 2008.
On January 29, 2008, Compana, LLC confirmed by e-mail to the NAF that
the Domain Names, <eleaners.com> and <elearnes.com>,
are registered with Compana, LLC and that
the Respondent is the current registrant.
Compana, LLC has verified that
Respondent is bound by the Compana, LLC
registration agreement and has thereby agreed to resolve domain name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy” or “UDRP”).
On January 31, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 20, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@eleaners.com and
postmaster@elearnes.com by e-mail.
A timely Response was received and determined to be complete on February 20, 2008.
On February 27, 2008, Complainant submitted an Additional Submission. The NAF confirmed to the Panel that this
submission was received after the deadline for submission. On March 3, 2008, the Respondent submitted
its Objection and Reply to Complainant’s Additional Submission.
The Panel has considered these additional filings and determined that
it will reject the Complainant’s Additional Submission, which was received
after the NAF’s deadline and without any good cause for the late filing. See e.g.,
SuNyx Surface Nanotechnologies GmbH v. Primmer, D2002-0968 (WIPO Jan. 20,
2003) (choosing not to consider additional submissions received after the
deadline where they did not set out any new facts or indicate circumstances to justify
the late submission).
On March 3, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the NAF appointed
Tyrus R. Atkinson, Jr. and David E. Sorkin as Panelists, and Christopher S. Gibson as the Panel’s Chairman.
RELIEF SOUGHT
The Complainant requests that the Domain Names be transferred from the Respondent
to Complainant.
PARTIES’ CONTENTIONS
The parties’ respective contentions are summarized below.
A. Complainant
Founded and incorporated in 1999, the Complainant states that its business is to educate prospective students about the field of on-line education and link these prospective students to educational institutions. The Complainant has submitted a sworn declaration of its Chief Marketing Officer and Vice President of Business Development, stating that Complainant’s website at <elearners.com> offers more than 55,000 pages of content where visitors can research and compare more than 2,000 accredited on-line degrees, 6,400 on-line courses, 400 on-line certificates and diploma programs, and more than 5,900 individual campus profiles. The Complainant’s website averages more than 900,000 unique monthly visitors, and Complainant states that, in 2008, it expects to connect more than 7 million prospective students to more than 175 higher education and continuing education providers.
The Complainant has
submitted documentary evidence to show that it owns two
The Complainant registered and began using its <elearners.com> domain name in 1999. The Respondent registered the Domain Names <eleaners.com> on December 15, 2005, and <elearnes.com> on December 20, 2005 – more than six years after Complainant registered its domain name and more than three years after registration of Complainant’s marks.
The Complainant
contends that the Domain Names are confusingly similar to its marks. The Domain Names
differ from the marks by only a single letter: both <elearnes.com> and <eleaners.com>
omit the letter “r.” The Domain Names
thus reflect a common mistyping of the Complainant’s marks and constitute the
deliberate practice known as “typosquatting.”
Complainant alleges that the confusion caused by Respondent’s Domain
Names is exacerbated by the content of the websites to which they resolve: Complainant
has submitted documentary evidence to show that the content is confusingly
similar to the Complainant’s website, as both of Respondent’s sites feature
pictures of young adults who appear to be students in a learning environment,
and both offer resources for “degree online,” “online learning,” “E Learning”
and “Distance Education.” Respondent’s
sites also offer links both to programs that are prominently featured on the
Complainant’s site and to Complainant’s competitors.
Complainant urges that the Respondent has no rights or legitimate interest in these Domain Names and has registered and is using them in bad faith. Respondent is not commonly known by the names “ELeaners” or “ELearnes.” Further, to the best of Complainant’s knowledge, Respondent has never made any bona fide use of the Domain Names, or any legitimate noncommercial or fair use of them. Respondent does not have any permission, either express or implied, to use or register any domain name that incorporates or is confusingly similar to Complainant’s trademarks.
The Complainant contends, moreover, that the Domain Names incorporate words that are nonsensical. No one could conceivably be seeking information about “eleaners” or “elearnes.” Rather, the only reasonable explanation is that Respondent has sought to capitalize on the Complainant’s own efforts to develop and promote its trademarks. Respondent uses the Domain Names to operate websites that display hyperlinks to third-party websites competing directly with Complainant, presumably for Respondent’s own commercial benefit through click-through fees. The Domain Names and the contents of the websites are likely to divert traffic from the Complainant’s site. This type of use does not give Respondent rights or a legitimate interest in the Domain Names because the use is not a bona fide offering of goods or services. In addition, the Respondent is not making a noncommercial or fair use such as criticism and commentary, parody, or as a fan site. Rather, the Respondent benefits from a commercial purpose, that is, participation in the Google AdSense program.
The Complainant anticipates that Respondent may argue that the links on the websites associated with the Domain Names are generated through the Google AdSense program, over which the Respondent has no control, and thus Respondent cannot be shown to have targeted the Complainant. To this, Complainant responds that other UDRP panels have already considered and rejected this argument.
The Complainant contends that Respondent’s conduct fits squarely within the kind of evidence that Paragraph 4(b)(iv) of the ICANN Policy defines as “bad faith”:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Complainant states that the Respondent has registered Domain Names that are confusingly similar to the Complainant’s marks, and the websites associated with those Domain Names provide links to websites promoting products and services that compete with those offered by the Complainant. Through this improper use of Complainant’s marks, Respondent is creating confusion as to the source, sponsorship, affiliation, or endorsement of its site with the intent to attract Internet users.
Finally, Complainant has submitted evidence to show that Respondent has a history of cybersquatting and typosquatting with regard to other trademarks. In 2007, Respondent was involved in numerous UDRP proceedings as a respondent, most of which resulted in a transfer from Respondent of the disputed domain names. Asserting that a history of typosquatting strengthens the inference of bad faith, Complainant quotes one UDRP decision concerning the Respondent in this case:
Respondent Texas International Property Associates has been taken to task for its business practices in many UDRP decisions. Its practices consistently have been found to constitute bad faith. . . .
B. Respondent
The Respondent requests that the Panel deny the relief requested by
Complainant, contending that the Complainant has failed to meet its burden of
proving each of the three elements required under Paragraph 4(a) of the UDRP
(i.e., that the domain name registered by the respondent is identical or
confusingly similar to a trademark in which complainant has rights; that the respondent
has no rights or legitimate interests in respect of the domain name; and that
the domain name has been registered and is being used in bad faith).
First, the Respondent contends that there is no need for the Panel to
determine “similarity or confusion” when Complainant’s trademark is in wide use
by others and Complainant thus has only a weak claim to its exclusive rights or
to forbid others from using its marks. In
particular, Respondent argues that the bulk of Complainant’s mark is the term
“learners,” which is the plural of the common dictionary “learner” which means
“to gain knowledge or understanding of or skill in by
study, instruction, or experience.”
Combined with the prefix “e,” which means electronic, the word means
electronic learners. Respondent has
submitted evidence of a Google search to show that the term “elearner” is in
use on the Internet by others not associated with the Complainant.
The Respondent asserts that placement on the trademark register does
not absolutely protect trademarks that are on the “weaker end of the spectrum.”
Instead, Complainant lacks exclusive rights to the names at issue in this case because,
whatever the length of time of use, use of part or all of the trademark by
third parties weakens the mark’s overall strength. Moreover, assuming, arguendo, that
Complainant’s trademarks have not been weakened through substantial use by
others, Respondent urges that there is no proof that the Domain Names are
confusingly similar to them. A Google
search for the term “eleaner” has Google asking if the searcher meant “Eleanor”
and a search for “eleaners” has Google asking if the searcher meant “cleaners.” By way of comparison, a search for “genereal
motors” has Google asking if the searcher meant “General Motors.” Thus Google has no problem in differentiating
between the Complainant and the allegedly dissimilar Domain Names. In addition, Respondent contends that Complainant
has provided no proof that anyone has been confused by either of the Domain Names. Instead, the term “eleaners” itself is the
name of a day-spa in
The Respondent also contends that the Complainant has failed to prove
that Respondent has no rights or legitimate interest in the Domain Names. Respondent states that it has used the Domain
Names as a web portal providing users with a search function as well as ads
provided through the Google Adsense program.
In particular, pay-per-click advertising is not some illicit underground
business, but is provided through Google and Yahoo, which view the same as a
legitimate offering providing businesses with access to prospective
customers. Respondent refers to a recent
Panel decision, which stated that pay-per-click sites are not bona fide offering under the Policy “if
the said domain name is confusingly similar to a well known trademark.” Respondent reasons that common sense dictates
that Complainant’s weak mark is not, by any means, well known. Moreover, the links in question are provided
pursuant to Google’s terms and are triggered by search requests entered by
computer users. Respondent has no
control over what terms advertisers bid on at Google and what terms appear on
its website. In any event, even if Complainant’s claims were true, which they
are not, UDRP panels have recognized that the domain name holder is not
responsible for the potentially offending content where they have contracts
with third parties, such as Google or Yahoo, that control that content. Respondent urges that it may fairly use
descriptive, generic, or geographic terms or acronyms as commercial domain names,
regardless of whether they are federally-registered trademarks. Indeed, common acronyms, surnames, and
generic terms are legitimately subject to registration as domain names on a
“first-come, first-served basis.” The
fact that advertising revenues may be generated by Respondent’s activity
demonstrates a legitimate interest. Respondent
refers to one UDRP decision which stated that “as long as the domain names have
been registered because of their attraction as dictionary words, and not
because of their value as trademarks, this business model is permitted under
the Policy.”
The Respondent also contends that for Complainant to prevail on its
claim of bad faith, it must prove that the Domain Names were both registered
and are being used in bad faith. Respondent
states that there is no discussion whatsoever in the Complaint that Respondent
was aware of Complainant or Complainant’s trade name at the time the Domain Names
was registered, and Respondent had no
knowledge of Complainant at that time.
Absent such knowledge, there can be no bad faith registration. Respondent quotes another UDRP Panel, “[i]f
the registrant is unaware of the existence of the trade mark owner, how can he
sensibly be regarded as having any bad faith intentions directed at the
complainant?”
In relation to bad faith issues, Respondent cites to UDRP decisions
which find that pay-per-click websites are not in and of themselves unlawful or
illegitimate, and urges that the Complainant has provided little evidence that
Respondent selected the Domain Names for a free-ride on Complainant’s marks. Unless a trademark is targeted by a domain
name, pay-per-click revenue does not constitute evidence of bad faith
registration or use. Respondent claims
that it had no actual knowledge of Complainant’s business and Panels have
recognized that mere registration without actual knowledge does not impute a
finding of bad faith.
Respondent acknowledges that it has been involved in a number of UDRP
decisions, but indicates that in a substantial number of those, Respondent
consented to the transfer and did not argue the points. All but two of the Panels in those decisions
did not do any traditional analysis and thus there were no findings of bad
faith. In addition, Respondent has
prevailed in three decisions and prevailed on one domain name in a four-domain
decision and on one domain name in a two-domain decision. Respondent also states that it prevailed in a
jury trial after a previous WIPO Panel ordered transfer of a disputed domain
name. Respondent states that it is the
registrant of thousands of domain names, which consist of electronically
registered generic words. Registering
such terms to which no other party can claim exclusive use is a legitimate
business and done in good faith. Finally,
Respondent states that it did not register the Domain Names to sell them to the
Complainant or any other party, nor has there been any such allegation by
Complainant.
FINDINGS
1.
The
Complainant is well-known within its field of on-line educational services,
with incontestable trademark registrations for the ELEARNERS and ELEARNERS.COM marks. The Complainant’s website receives
approximately 900,000 visitors per month and allows users to access information
and services about on-line education and academic programs.
2.
The Complainant
operates through the domain name <elearners.com>, which was registered
more than six years prior to the Domain Names in dispute.
3.
The Domain
Names at issue in this case are slight misspellings of Complainant’s trademarks:
both <elearnes.com>
and <eleaners.com> omit the
single letter “r.”
4.
The
Respondent is using the Domain Names for websites that include content,
advertisements and links to third-party websites, many of which are in direct
competition with the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Complainant must
first demonstrate that it has rights in its trademarks ELEARNERS and
ELEARNERS.COM. Complainant has demonstrated that it does have such rights,
not only through the evidence of U.S. federal trademark registrations for these
marks, but also through evidence that the Complainant – within its field of
on-line educational services – has become well-known as a result of the
continuous use and promotion of its marks.
The Panel finds that the Complainant’s registration and use of its trademarks
establishes rights in them pursuant to the Policy, Paragraph 4(a)(i). See
Innomed Techs., Inc. v. DRP Servs., FA221171 (Nat. Arb. Forum Feb. 18,
2004) (holding that registration of the NASAL-AIRE mark with the USPTO
establishes Complainant’s rights in the mark); see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum
May 24, 2006) (complainant’s registration of the AMERIDREAM mark with the USPTO
established rights in the mark pursuant to Policy ¶ 4(a)(i)).
With respect to the issue of whether the
Domain Names are “identical or confusingly similar” to Complainant’s marks, the
Panel observes that each of the Domain Names involves is a slight misspelling
of Complainant’s marks, ELEARNERS and ELEARNERS.COM. Both of the Domain Names <elearnes.com> and <eleaners.com>
– which standing by themselves are nonsensical
words – differ from the Complainant’s trademarks by omitting the single letter
“r.” Such intentional misspelling
of the marks of another constitutes a situation in which the disputed Domain Names
are confusingly similar to Complainant’s marks.
This is not the first case against this Respondent in which this
intentional misspelling has been found. See
Countrywide Fin. Corp. v.
Respondent has contended that this Panel does
not need to reach the issue of “identical or confusingly similar” because the
Complainant’s trademark rights are weak and the Domain Names are comprised of
common, descriptive terms, particularly when dissected into the elements “e”
and “learners.” However, as noted above,
the Panel finds that the Complainant has strong trademark rights within its
field of on-line educational services.
In addition, the Complainant’s trademarks should be considered as a
whole, not by parsing the various elements comprising the marks. See
David Hall Rare Coins v.
Finally, the addition
of the top-level domain “.com” does not affect a domain name for the purpose
determining whether it is identical or confusingly similar. See Rollerblade, Inc. v. McCrady, D2000-0420 (WIPO June 25,
2000).
Complainant has
established the requirements of Policy, Paragraph 4(a)(i) and prevails on this
issue.
As noted above, the Complainant must prove that the Respondent has no
rights or legitimate interests in respect of the Domain Names. Once the Complainant establishes a prima
facie case against the Respondent on this element, the burden is on the
Respondent to provide concrete evidence of its right or legitimate interests
under ¶ 4(c) of the
Policy. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”).
The Policy ¶ 4(c) lists three circumstances that can
demonstrate a registrant’s rights or legitimate interest in a disputed domain
name:
(i)
before
any notice to you of the dispute, your use of, or demonstrable preparations to
use, the domain name or a name corresponding to the domain name in connection
with a bona fide offering of goods or services;
(ii)
you (as
an individual, business or other organization) have been commonly known by the
domain name, even if you have acquired no trademark or service mark rights;
(iii)
you are
making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark.
In respect of Policy ¶ 4(c)(ii), the Complainant confirms that Respondent is not authorized to use its ELEARNERS and ELEARNERS.COM marks in any way, and that there is no evidence that Respondent is commonly known by the Domain Names. The Respondent does not dispute these assertions. Moreover, Respondent’s WHOIS information confirms that the Respondent is known as “Texas International Property Associates.” The Panel finds that Respondent is not commonly known by either of the <eleaners.com> and <elearnes.com> Domain Names. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Given the WHOIS domain name registration information, Respondent is not commonly known by the <awvacations.com> domain name.”). There is also no claim by the Respondent that it has been making legitimate noncommercial or fair use of the Domain Names under ¶ 4(c)(iii).
More pertinent to the issues in this case, the Complainant contends that the Respondent
has not made any bona fide offering
of goods or services in connection with the Domain Names, and thus has no
legitimate rights or interests in them.
The Complainant argues that the only reasonable explanation for the
Respondent registering nonsensical words, which are very similar to the
Complainant’s trademarks (omitting only a single letter), is that Respondent
has sought to capitalize on the Complainant’s trademarks. The Respondent uses the Domain Names to
operate websites that display hyperlinks to third-party websites competing
directly with Complainant, which the Respondent acknowledges is for it’s own
commercial benefit through click-through fees.
Respondent submits, however, that it may use the trademark of another,
when the mark is weak, descriptive or generic notwithstanding that the
trademark is registered with the USPTO.
The Panel, however,
agrees with other Panels that have previously considered the Respondent’s
contentions on these issues. First, as
stated in Associated Bank Corp. v. Texas International Property Association,
D2007-0334 (WIPO June 28, 2007), “questions of trademark invalidity,
including questions of whether a mark is generic or highly descriptive and
hence not susceptible of legal exclusivity as a valid federal trademark, are
simply not within the purview of a UDRP proceeding and are best left for either
court adjudication or inter-partes adjudication before appropriate governmental
bodies having requisite jurisdiction and competence to handle such issues.”
See also Countrywide Fin. Corp. v.
The Panel therefore finds
that Respondent is without rights to or legitimate interests in the Domain Names
and, in particular, that Respondent’s use of the Domain Names for these websites
is not a bona fide offering of goods
or services pursuant to Policy, Paragraph 4(c)(i). See
Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (respondent’s
use of a domain name that was confusingly similar to the complainant’s mark to
display links to the complainant’s competitors did not constitute a bona fide offering of goods and services
pursuant to Policy, Paragraph 4(c)(i)); see
also Expedia Inc. v. Compaid,
FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (respondent’s use of the
<expediate.com> domain name to redirect Internet users to a website
featuring links to travel services that competed with the complainant was not a
bona fide offering of goods and
services or a noncommercial or fair use pursuant to the Policy).
The Complainant
prevails under Policy, Paragraph 4(a)(ii).
The Complainant has argued that Respondent’s conduct fits squarely within the kind of evidence that Paragraph 4(b)(iv) of the ICANN Policy defines as “bad faith”:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In short, Complainant contends that the Respondent has registered the Domain Names, which are confusingly similar to Complainant’s marks, and that the websites associated with the Domain Names provide links to sites in competition with the Complainant. Through this improper use of Complainant’s marks, Respondent is creating confusion with the intent to attract Internet users. The Complainant has also submitted evidence to show that Respondent has a history of cybersquatting and typosquatting with regard to other trademarks.
The Policy recognizes that the Respondent’s pattern of conduct can amount to bad faith. This Respondent has established a particular pattern of conduct that involves misspelling of the trademarks of third-parties. As stated in Countrywide Financial Corporation v. Texas International Property Associates, FA 1075750 (Nat. Arb. Forum Nov. 2, 2007):
In the majority of
the cases Respondent typosquatted the domain names to be misspellings of
another’s mark. See JELD-WEN, Inc. v.
The Panel in the instant case finds that Respondent is using the confusingly similar Domain Names to operate websites that offer links to Complainant’s competitors. Such use is an improper disruption of Complainant’s business and therefore amounts to registration and use in bad faith, pursuant to Policy, Paragraph 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to the Policy where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Respondent’s use of the Domain Names also amounts to diversion of Internet traffic for commercial gain by click-through fees in violation of the Policy. See Allianz of Am Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use where respondent was diverting Internet users searching for the Complainant to its own website and likely profiting from click-through fees).
Finally, in response to the Respondent’s contention that it was unaware of the Complainant and its trade name or trademarks at the time the Domain Names were registered, the Panel remains unconvinced. The Panel considers that, in light of the evidence of Respondent’s intentional registration of domain names that are identical or confusingly similar to other trademarks, the Panel cannot accord much weight at all to the Respondent’s self-serving statement on this point. The Respondent here has made no showing that it makes any efforts to avoid registering and using domain names that are identical or confusingly similar to trademarks held by others. Quite to the contrary, the evidence shows that the Respondent has registered many domain names, other than the Complainant’s, that are identical or confusingly similar to other trademarks. This pattern is evidence that the Respondent has actually targeted trademarks for the domain names it registers.
Accordingly, the Panel finds that the Respondent registered and is using the Domain Names in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eleaners.com>
and <elearnes.com> Domain Names be TRANSFERRED from
Respondent to Complainant.
|
Christopher Gibson |
|
|
Tyrus R. Atkinson, Jr. |
David E. Sorkin |
Dated: March 18, 2008
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