Pearson Education Inc., Central Media
Group v. Lorna Kang
Claim Number: FA0207000115345
PARTIES
Complainant
is Pearson Education Inc., Central Media
Group, Boston, MA, USA (“Complainant”) represented by Melanie Genkin, of Pearson
Education, Inc. Respondent is Lorna Kang, Perak, MALAYSIA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <cresca.com>,
registered with Iholdings.com, Inc.
PANEL
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 15, 2002; the Forum received a hard copy of the
Complaint on July 17, 2002.
On
July 24, 2002, Iholdings.com, Inc. confirmed by e-mail to the Forum that the
domain name <cresca.com> is
registered with Iholdings.com, Inc. and that Respondent is the current
registrant of the name. Iholdings.com,
Inc. has verified that Respondent is bound by the Iholdings.com, Inc.
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”).
On
July 24, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 13,
2002 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@cresca.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 27, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.” 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<cresca.com> domain name is identical to Complainant's CRESCA
mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant has used the CRESCA mark in
commerce since 2000 in relation to web based educational services and
publications. Complainant used <cresca.com>
as a portal website for students to access its educational services. Before its interruption due to an accidental
lapse in the domain name registration and Respondent’s subsequent registration,
Complainant’s website at <cresca.com> received on average 2,532
hits per day and 75,202 hits per month. Complainant also used the CRESCA mark
on 77 college textbooks and on all the access cards used by students to enroll
online via <cresca.com>.
Respondent registered the disputed domain
name on April 8, 2002. Complainant’s
registration for the domain name lapsed on March 31, 2002 and it was informed
that it could not renew the registration until Network Solutions had performed
a bulk purge of expired names.
Complainant was informed that this purge had occurred on April 9, 2002
and attempted to renew the domain name at that time, however, Respondent had
already registered <cresca.com>.
Respondent is using the disputed domain name as a link to divert
Internet users to an online casino located at <gotto.com/treasure/search.html>. Respondent receives compensation for any new
memberships to the online casino that result from the link.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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; and
(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.
Identical and/or Confusingly Similar
Complainant has established rights in the
CRESCA mark through its continuous use of the mark from 2000-2002 in relation
to online educational materials and publications. Respondent’s <cresca.com> domain name is identical
to Complainant’s mark because it incorporates Complainant’s entire mark and
merely adds the generic top-level domain name “.com” to the end. The addition of a generic top-level domain
name such as “.com,” does not create a distinct mark capable of overcoming a
Policy ¶ 4(a)(i) identical analysis. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant); see also Blue
Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to
Complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference").
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response. Therefore it is
presumed that Respondent has no rights or legitimate interests in the disputed
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Furthermore, when Respondent fails to
submit a Response, the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests in respect of the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name).
Respondent is using a domain name that is
identical to Complainant’s mark in order to divert Internet users to an online
casino for Respondent’s commercial gain.
The use of Complainant’s mark to create Internet user confusion and
divert Internet users to unrelated websites is not considered to be a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet traffic is not a legitimate use of the
domain name); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D.
Mass. 2002) (finding that, because Respondent's sole purpose in selecting the
domain names was to cause confusion with Complainant's website and marks, it's
use of the names was not in connection with the offering of goods or services
or any other fair use).
Respondent has not come
forward with any evidence to establish that it is commonly known by any other
name than Lorna King. Without this
evidence, Respondent fails to establish that it is commonly known as CRESCA or
<cresca.com> and therefore has not shown that it has any rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent is not commonly known by the disputed domain name
or using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Based on the fact that Respondent
registered the disputed domain name after Complainant’s registration lapsed, it
can be inferred that Respondent had knowledge of Complainant’s use of the
CRESCA mark and the <cresca.com> domain name in relation to online
education services, and registered <cresca.com> in order to
benefit from the Internet user confusion that would result from the change in
registration. Registration of a domain
name, despite knowledge of Complainant’s rights in the domain name, is evidence
of bad faith registration pursuant to Policy ¶ 4(a)(iii). See
Savage Sys., Inc. v.
Lorna Kang, FA 102480 (Nat. Arb. Forum Dec. 31, 2001) (inferring that
Respondent had knowledge that the <savagearchery.com> domain name
previously belonged to Complainant when Respondent registered said domain name
the very same day Complainant’s registration lapsed); see also Global Media
Group v. Lorna King, FA 104556 (Nat. Arb. Forum Mar. 13, 2002)
(finding that Respondent’s registration of the infringing
<ouimagazine.com> domain name three days after Complainant’s chance to
retain its registration for the domain name lapsed is a factor when considering
bad faith registration and/or use).
Respondent is using the disputed domain
name in order to divert Internet users to an online gambling website. Respondent receives a commission from every
new membership that it generates as a result of this diversion. Therefore, Respondent is benefiting from the
likelihood of confusion created through its use of Complainant’s mark. This type of use is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv). See Mars, Inc. v. Double Down Magazine,
D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv)
where Respondent linked the domain name <marssmusic.com>, which is
identical to Complainant’s mark, to a gambling website); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat.
Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the
domain name to another website <iwin.com>, presumably, Respondent
received a portion of the advertising revenue from the site by directing
Internet traffic to the site, thus using a domain name to attract Internet
users, for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <cresca.com> be transferred from Respondent to
Complainant.
Tyrus R. Atkinson, Jr. , Panelist
Dated: September 10, 2002.
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