Pearson Education Inc., Central Media Group v. Lorna Kang
Claim Number: FA0207000115345
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
Respondent failed to submit a Response.
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.
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.
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.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page