Assessment Technologies Institute, L.L.C. v. NET study guide
Claim Number: FA0812001239915
Complainant is Assessment Technologies Institute, L.L.C. (“Complainant”),
represented by Lara S. Dickey, of Husch Blackwell Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thenetstudyguide.com>, registered with Godaddy.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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 26, 2008.
On December 26, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thenetstudyguide.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.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 January 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 26, 2009 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on January 26, 2009.
On February 2, 2009, Complainant submitted additional written statements and documents in support of its claims pursuant to the National Arbitration Forum’s Supplemental Rule 7(a). On February 9, 2009, Respondents submitted Additional Submissions under the National Arbitration Forum’s Supplemental Rule 7(c). The submissions are in compliance with Supplemental Rule 7, and were considered by the Panel.
On February 10, 2009, the Panel requested additional submissions from both parties. On February 25, 2009, Complainant submitted its Additional Submissions in response to the Panel’s request; on March 3, 2009 Respondent submitted its Additional Submission in response to the Panel’s request. All submissions were considered.
On February 2, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain name <thenetstudyguide.com> be transferred from Respondent to Complainant.
Complainant Assessment Technologies Institute, L.L.C. of
Complainant contends that it acquired the company Educational Resources Inc., including all right, title and interest in the marks THE NET and THE NET STUDY GUIDE. Complainant contends substantially continuous use of the marks THE NET and THE NET STUDY GUIDE to identify its test and printed materials since 1977, through Complainant or its predecessor in interest Educational Resources Inc. Complainant contends ownership of trademark for THE NET STUDY GUIDE, (USPTO Reg. No. 3,571,292). Complainant provides a copy of the trademark assignment and abstract of title from Educational Resources Inc. to Complainant, recorded August 13, 2008, for the mark THE NET STUDY GUIDE. Complainant contends that it has exclusively produced the NET Nurse Entrance Test since 1977, and that its test is required by a majority of nursing schools throughout the country, resulting in the nursing industry identifying Complainant as the source of THE NET and THE NET STUDY GUIDE. Complainant contends that Respondent’s domain name <thenetstudyguide.com> is identical to Complainant’s trademark THE NET STUDY GUIDE.
Complainant contends that Respondent has no legitimate interest in <thenetstudyguide.com>, because Respondent’s use was not licensed, the Respondent offers a competing product at a domain name identical to Complainant’s mark, the Respondent is not commonly known by THE NET STUDY GUIDE, and Respondent’s use of the mark is purely to divert the Complainant’s customers to its site for commercial gain.
Complainant further contends that Respondent created its own study guide for Complainant’s Nurse Entrance Test, thus the Respondent knew of the Complainant’s use of THE NET and THE NET STUDY GUIDE to identify the Complainant’s test and printed materials for which Respondent prepared a study guide. Complainant further alleges that Respondent’s use of the domain name is not bona fide because it is using Complainant’s mark to sell a product in direct competition with Complainant. Complainant further contends that Respondent is not commonly known by the domain name <thenetstudyguide.com> and the WHOIS search lists the registrant of the domain as “Domains By Proxy, Inc.”
Complainant contends that Respondent registered and is using the domain name in bad faith by intentionally creating a likelihood of confusion with the Complainant to attract customers to its website, and offering to sell the domain name for $180,000. Complainant contends that Respondent had actual or constructive notice of Complainant’s mark because Respondent is selling a competing study guide for Complainant’s The Net Nurse Entrance Test. Complainant further contends that it contacted Respondent to seek the transfer of the domain name to Complainant, to which Respondent initially agreed, but several months later, after failing to transfer the domain, made a demand for $180,000 payment. Complainant contends that the demand of $180,000 is in excess of Respondent’s out of pocket costs and is further evidence of Respondent’s bad faith.
Respondent contends that Complainant does not exist as a legal entity, and does not possess lawful rights to the marks claimed in this proceeding. Respondent contends that Complainant was voluntarily dissolved with the Washington Secretary of State’s Office on March 3, 2008. Thus, it does not exist as a legal entity and is not entitled to any rights to the marks. Respondent further contends that THE NET STUDY GUIDE is not entitled to trademark protection because it is generic, and even if found to be descriptive, there is insufficient proof to establish secondary meaning.
The creator and founder of the Respondent, Dr. Nancy Lydia Kimmell, began tutoring students for Complainant’s Net Nursing Entrance test in 2004. On behalf of Respondent, Dr. Kimmell created a tutorial for the Net Nursing Entrance test to which she obtained a copyright registration in June 2006, which she called “The Net Study Guide.” On April 17, 2006, Dr. Kimmell registered the domain <thenetstudyguide.com> on behalf of Respondent to offer her study guide materials for the purpose of taking Complainant’s examination. Respondent contends that on February 23, 2007, it first learned of Complainant’s objections regarding the domain name. On October 31, 2007, Respondent received a cease and desist letter from Complainant’s counsel. Respondent contends that in January 2008, Respondent removed all references to “The Net Study Guide” from the text of its website. The parties negotiated a resolution of the matter and Respondent agreed to cease the use of the domain name and transition to a new website beginning in January 2008. Complainant gave Respondent 12 months to facilitate transition of the website. In October of 2008, the Respondent notified Complainant that it would not transfer the domain name unless it was provided with $180,000.
C. Additional Submissions
Pursuant to the National Arbitration Forum’s Supplemental Rule 7(a) Complainant submitted an Additional Submission dated February 2, 2009. Complainant contends that it was a valid Delaware Limited Liability Company at the time of the assignment of the marks and that Assessment Technologies Institute, LLC, a Washington Limited Liability Company was merged into the Delaware LLC on February 29, 2008. The assignment of the marks THE NET STUDY GUIDE and THE NET NURSE ENTRANCE TEST was made to Complainant in August 2008. Complainant further contends that the USPTO has recognized the required distinctiveness of Complainant’s mark by allowing Complainant’s application for the mark THE NET STUDY GUIDE on the principal register under Section 2(f), (registration of the mark issued on February 10, 2009). Complainant contends that Respondent’s papers confirm Respondent’s actual knowledge of Complainant’s marks, noting that Respondent’s April 19, 2006 email acknowledges that there are many “people who want to become nurses but first must pass the nursing entrance test or (NET),” and to help these students prepare and pass the test, Respondent’s “questions closely resemble those on the NET.” Complainant contends that Respondent’s use is not a fair use because use of Complainant’s mark is not necessary to describe Respondent’s product. Complainant notes that Respondent admits it removed all references to Complainant’s mark on its website in January 2008. Complainant contends that Respondent’s demand for $180,000 for transfer of the domain is bad faith, noting that Respondent submitted proof of payment of only $395 for web designing services, and $1,400 for 10 years of web hosting.
Respondent submits an Additional Submission
dated February 9, 2009, contending that Complainant
initially asserted rights to the mark based upon its Washington Company, which
was dissolved, and that its reference to the
On February 10, 2009 the Panel sought Additional Submissions from both parties to address the issue of registration of THE NET STUDY GUIDE mark to Complainant. Complainant submitted its Additional Submission dated February 25, 2009, contending that the registration of Complainant’s trademark THE NET STUDY GUIDE on the principal register of the USPTO meets Complainant’s burden of proof that Complainant has enforceable trademark rights in the mark, and that Respondent’s domain name is identical to Complainant’s mark. Complainant further contends that the registration of the mark establishes that Complainant acquired sufficient trademark rights in THE NET STUDY GUIDE prior to Respondent’s use, and prior to Complainant’s filing of the Complaint. Complainant contends that the registration of the marks provides a presumption in favor of Complainant, that Respondent had no legitimate or bona fide rights to use Complainant’s mark in its domain name, and that Respondent’s use of the domain is in bad faith. Complainant contends that Respondent purposely acquired the domain name in a deliberate and misleading attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark, as to source, sponsorship, affiliation or endorsement of the website or product, and there is a legal presumption of bad faith because Respondent was actually, or constructively aware of Complainant’s marks.
On March 3, 2009, Respondent submitted an Additional Submission
in response to the Panel’s request contending that a registered trademark was
issued to the defunct Washington LLC, but the present Complainant is a
The Panel determines that Complainant has established that the domain name <thenetstudyguide.com>, registered by the Respondent, is identical, or confusingly similar to a trademark in which the Complainant has established rights; Complainant has met its burden in establishing that the Respondent has no rights or legitimate interests in the domain name, and that the domain name has been registered, and is being used in bad faith, thus, the domain name shall be transferred to the 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 contends that the disputed <thenetstudyguide.com> domain name is identical to Complainant’s THE NET STUDY GUIDE mark. Complainant has submitted sufficient proof to establish that the trademark rights of its predecessor-in-interest have been assigned to Complainant, and that Complainant is the owner of the trademark for THE NET STUDY GUIDE, registered with the USPTO, Reg. No. 3,571,292. The omission of spaces between the words of the mark and the addition of a generic top-level domain, such as “.com,” is irrelevant under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark). Therefore, Respondent’s <thenetstudyguide.com> domain name is identical to Complainant’s alleged THE NET STUDY GUIDE mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the disputed domain name is comprised of common, generic or descriptive terms and as such cannot be found to be identical to Complainant’s mark, the USPTO has determined the mark is registerable and issued a trademark registration to Complainant. 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)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”).
Complainant met its burden submitting proof that Respondent is not commonly known by the disputed domain name and lacks any license to use Complainant’s mark. The WHOIS information lists Respondent as “Domain by Proxy” and Respondent admits that it has removed all reference to the name from its website, with the exception of its domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007).
Respondent’s use of the disputed domain name to sell directly competing and potentially infringing products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Complainant asserts that Respondent had actual
and/or constructive notice of Complainant and its rights in the mark prior to
registration of the domain name.
Complainant contends that Respondent’s knowledge of the mark was a necessary
prerequisite to creating a competing study guide related to Complainant’s NET Nurse Entrance Test. Respondent admits to this knowledge and the Panel finds
Respondent registered and used the disputed domain name in bad faith under
Policy ¶ 4(a)(iii).
See Bluegreen Corp.
v. eGo, FA 128793
(Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which
the respondent acquired the disputed domain names indicated that the respondent
was well aware that the domain names incorporated marks in which the
complainant had rights); see also Yahoo! Inc. v.
Complainant asserts that Respondent intentionally created a likelihood of confusion as to Complainant’s source, endorsement, affiliation, or sponsorship of the disputed domain name and resolving website. Complainant contends that Respondent uses the allegedly identical disputed domain name to market competing products, is likely to attract Internet users for commercial gain via the disputed domain name, and Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Complainant argues that Respondent offered to sell the disputed domain name to Complainant for $180,000, and that such amount is excessive as compared to out-of-pocket registration costs. Respondent admits to demanding this amount, further supporting Respondent’s bad faith under Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of out-of-pocket costs); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thenetstudyguide.com> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: March 20, 2009
National Arbitration Forum