Shahrad Yazdani v. Domain Deluxe
Claim Number: FA0808001219173
Complainant is Shahrad Yazdani (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <audiolearn.com>, registered with Nameview, Inc.
The undersigned certifies 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.
David E. Sorkin, Carolyn M. Johnson and John J. Upchurch as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 11, 2008.
On August 13, 2008, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <audiolearn.com> domain name is registered with Nameview, Inc. and that the Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 August 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 3, 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 email@example.com by e-mail.
On August 20, 2008, Respondent filed a Request for Extension of Time to Respond to Complaint with Complainant’s Consent in accordance with the National Arbitration Forum’s Supplemental Rule 6. On August 21, 2008, the National Arbitration Forum granted this request extending the deadline by which Respondent could file a Response to the Complaint to September 10, 2008.
A timely Response was received and determined to be complete on September 10, 2008.
On September 15, 2008, Complainant submitted a timely Additional Submission pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On September 19, 2008, Respondent submitted a timely Additional Submission pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On September 23, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David E. Sorkin, Carolyn M. Johnson and John J. Upchurch as the Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Audiolearn is a company founded by Complainant in 1997. It is a company that produces audio study guidebooks for the preparation for such tests as the SAT, MCAT, and PCAT and advanced placement. Respondent has established a website that appears to be only a search site on which companies in competition with Complainant purchase advertisements.
2. Respondent should be considered as having no rights or legitimate interests in respect of the domain name since it is not providing bona fide offerings of goods and services, nor is Respondent in the business of providing learning services. To the contrary, Respondent is clearly intent on trading on Complainant’s name for commercial gain, and is only trading on Complainant’s mark to provide a website for Complainant’s competitors.
3. Respondent is not commonly known by the domain name.
4. By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, and affiliation of Respondent’s website and the location or of a product or service on Respondent’s website.
5. Respondent has misappropriated the name and business concept from Complainant and Complainant is the rightful owner of the intellectual property rights that Respondent is attempting to misappropriate.
6. The disputed domain name, <audiolearn.com>, is identical to the trademark, AudioLearn, in which Complainant has rights.
1. Respondent registered the disputed domain on May 20, 2002, three months before Complainant filed its trademark application for the AUDIOLEARN mark.
2. Other than its allegation of first use in 1997, Complainant proffered no evidence of common law trademark rights to the term “audiolearn” or use of the term that predates registration of the disputed domain name.
3. Complainant presents no evidence of “secondary meaning” of the term “audiolearn” that demonstrates consumers identify the term exclusively, or almost exclusively, with its goods and services.
4. Complainant has no legally protectable interest in a trademark composed of a descriptive term that describes the “characteristics and features” of its goods or services.
5. Respondent has a legitimate interest in the disputed domain, having registered it because it incorporates a descriptive term.
6. Complainant has failed to establish that Respondent registered the disputed domain name in bad faith.
C. Additional Submissions
The Panel reviewed the Additional Submissions, found no exceptional circumstances present to warrant their consideration, and accordingly has declined to consider them.
We find that Complainant has established each of the three elements necessary to obtain an order transferring the disputed domain name <audiolearn.com> from Respondent to Complainant.
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.
Complainant has registered the AUDIOLEARN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,740,489 issued July 22, 2003, filed August 7, 2002, with a claimed date of first use of December 1, 1997) for audio tapes featuring study and test preparation. The <audiolearn.com> domain name was registered May 20, 2002, predating Complainant’s filing of its trademark application for the AUDIOLEARN mark.
Policy ¶ 4(a)(i) does not explicitly require that the Complainant’s trademark rights predate the domain name registration; indeed, its use of present tense suggests otherwise, and a majority of Panels decline to impose such a requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 1.4 (the “consensus view” among panelists is that the trademark need not predate the domain name registration for purposes of ¶ 4(a)(i)); see also Metro-Goldwyn-Mayer Studios Inc. v. World Readable, FA868828 (Nat. Arb. Forum Jan. 31, 2007) (following that “consensus view”). But see O’Reilly Automotive, Inc. v. Lorenzen, FA1220459 (Nat. Arb. Forum Sept. 24, 2008) (rejecting complaint under ¶ 4(a)(i) on ground that trademark rights did not predate domain name registration).
The <audiolearn.com> domain name contains Complainant’s AUDIOLEARN mark in its entirety followed by the generic top-level domain (“gTLD”) “.com.” Typically, the inclusion of a gTLD is considered irrelevant to a Policy ¶ 4(a)(i) analysis. Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
While Respondent contends that the <audiolearn.com> domain name is comprised of common, descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Complainant states that “Respondent[ is] not commonly known by the [disputed] domain name.” Respondent does not contest this in its Response. Hence, the Panel finds that Respondent is not commonly known by the <audiolearn.com> domain name pursuant to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
The disputed domain name resolves to a website that appears only to be a search site on which companies in competition with Complainant purchase advertisements. The Panel finds this directly competitive use of an allegedly identical domain name to be neither 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the 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 or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).
We find that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and Respondent has failed to meet its burden to come forward with concrete evidence that it does have rights or legitimate interests, as its site does not present a bona fide offering that would give rise to rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
states that Respondent has “intentionally attempted to attract, for commercial
gain, Internet users to Respondent’s website by creating a likelihood of
confusion with the Complainant’s mark as to the source, sponsorship, and
affiliation of Respondent’s website and the location or of a product or service
on Respondent’s website.” This is the
language contained in Policy ¶ 4(b)(iv).
Complainant provides no additional argument or evidence. However,
Complainant contends, and Respondent does not deny, that the <audiolearn.com>
domain name resolves to a website displaying advertisements and
“pay-per-click” links, many of which are for direct competitors of
Complainant. Accordingly, the Panel may
find that the <audiolearn.com> domain name was registered and is
being used in bad faith pursuant to Policy ¶ 4(b)(iv). See
Additionally, we could infer bad faith registration based upon Complainant’s prior use of the name and Respondent’s subsequent inactive use of the domain name.
Accordingly, our decision as to bad faith registration rests upon the question of whether the relatively sparse evidence of an inference of bad faith is sufficient to outweigh the evidence offered by Respondent regarding its intentions. This turns on whether we think Respondent was aware of Complainant when it registered the domain name. Complainant presents sparse evidence of use; however, Complainant was using the domain name <audiolearn.net>, and it seems more likely than not that Respondent would have noticed this when deciding whether to register <audiolearn.com>, either by searching for similar domain name registrations, or simply by searching the web for instances of “audiolearn.”
Accordingly, we find that the disputed domain name was registered and used in bad faith in violation of ¶ 4(b)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <audiolearn.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
David E. Sorkin, Panelist
Carolyn M. Johnson, Panelist
Dated: October 2, 2008
National Arbitration Forum
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