EducationDynamics, LLC v. Adam Marigliano
Claim Number: FA0902001248634
Complainant is EducationDynamics, LLC (“Complainant”),
represented by Catherine E. Maxson, of Davis Wright Tremaine LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <earn-your-degree.com>, registered with 1 & 1 Internet Ag.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 20, 2009.
On February 23, 2009, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <earn-your-degree.com> domain name is registered with 1 & 1 Internet Ag and that the Respondent is the current registrant of the name. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 February 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 19, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on March 19, 2009.
An Additional Submission was received from Complainant on March 24, 2009, which was determined to be timely and complete under the National Arbitration Forum’s Supplemental Rule 7.
On March 27, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. The Complainant
The Complainant has submitted the following summarized contentions.
Rights to a trademark or service mark
The Complainant has common-law rights to the trademark EARNMYDEGREE.COM.
The Complainant’s predecessor registered the domain name <earnmydegree.com> on May 15, 2003. The domain name was put to use by December 31, 2003, for the same business as it is used for today. In 2007 the Complainant (EducationDynamics, LLC) bought the domain name, the EARNMYDEGREE.COM trademark and its associated goodwill.
The website associated with the trademark has since 2008 averaged 1 million unique visitors per month and has in January 2009 surpassed the 2 million mark. 180 colleges and universities advertise on the website and it is one of the top destinations for information about degree programs and institutions on the Internet. The trademark has acquired broad recognition among consumers and providers of educations services.
The Complainant has on January 20, 2009 obtained registration (No. 3,564,594) of the trademark EARNMYDEGREE.COM for “dissemination of advertising for others via an on-line electronic communications network”.
The Respondent’s domain name <earn-your-degree.com> is confusingly similar to the Complainant’s trademark and domain name <earnmydegree.com>. Consumers encountering the contested domain name will naturally assume that there exists an affiliation between the parties as it is essentially identical to the mark of the Complainant. The addition of hyphens and replacement of the possessive pronoun “your” in stead of “my” is not distinguishing enough.
Furthermore, the Respondent is by using the domain name for the same services the Complainant uses its own website, and by using the same blue-grey colour and the same lay-out, exacerbating the similarities and the risk of association.
The Complainant believes that the similarities between the websites are a result of copying on part of the Respondent. The Respondent has on his website featured an article which was a direct copy of an article featured on the website of the Complainant.
To summarize, the similar domain name and the content of the domain name will falsely suggest a legitimate association between the parties which will confuse consumers.
Rights or legitimate interests
The Respondent has not acquired any rights or legitimate interest in the disputed domain name. The disputed domain name was registered on October 10, 2004, at which time the Complainant already started using its EARNMYDEGREE.COM trademark. The Respondent has not used the “Earn-Your-Degree.com” other than in connection with the illegally obtained domain name.
Registration and use in bad faith
Nothing other than bad faith can underlie the Respondent’s registration and use of the disputed domain name. The parties are direct competitors and the Respondent must have known of the Complainant’s trademark when registering the domain name <earn-your-degree.com> as the use of the Complainant’s trademark predated the registration. Further evidence of bad faith is the copying of the article from the website of the Complainant.
B. The Respondent
These summarized arguments were submitted in the Response.
Rights to a trademark or service mark
The Complainant did not hold any applicable trademarks or service marks that would have precluded the Respondent’s use of the disputed domain name at the time of the registration. The trademark held by the Complainant was registered on January 20, 2009.
Because the Complainant had no rights in its purported trademark at the time of the Respondent’s registration, there cannot be a confusing similarity under the ICANN Policy.
Previous Panels have noted that prior to a mark’s formal registration, the Complainant does not enjoy the benefit of any presumption of the exclusive right to use a mark afforded by registrations and must prove that its mark is distinctive (Media West-GSI, Inc., et al. v. Earthcars.com, Inc, D2000-0463 (WIPO June 12, 2000)). The Complainant’s mark is not inherently distinctive as it is not arbitrary, fanciful or suggestive.
The words “earn”, “my” and “degree” are constantly encountered in advertisements related to on-line degree programs and similar educational advertising. A brief search o the words “earn” and “degree” gives an abundant number of results. Previous Panels have found that “widespread third party use of a descriptive term precludes any finding of secondary meaning and that search results are a valid method to demonstrate such a fact (National Trust for Historic Preservation v. Barry Preston, D2005-0424 (WIPO Aug. 10, 2005)).
The Respondent does not dispute that the domain names <earn-your-degree.com> and <earnmydegree.com> are facially similar. The domain name <earn-your-degree.com> is however not sufficiently similar.
The Respondent has provided no evidence of consumer surveys, focus group studies, or even substantial anecdotal evidence, showing that consumers have come to associate the domain name <earnmydegree.com> with EducationDynamics, LLC. Therefore, the Panel cannot come to the conclusion that the public had come to identify the trademark with the source rather than the services itself at the time of the registration of the disputed domain name (citing Media West-GSI, Inc., et al. v. Earthcars.com, Inc, D2000-0463 (WIPO June 12, 2000)).
Rights or legitimate interests
The Respondent is an Internet publisher who creates popular websites that rely on advertising to derive an income. The registration of the disputed domain name was due to the words’ “earn” and “degree” descriptiveness of the educational degree-offering resources planned for the website by the Respondent. The Respondent has continually been operating the website since 2004, featuring educational resources that an average consumer might expect to find at a website with the disputed domain name.
It is well settled by several Panels that a domain name comprised of descriptive terms may be used to attract Internet traffic even where the domain name is confusingly similar to the registered mark of a complainant. (citing National Trust for Historic Preservation v. Barry Preston, D2005-0424 (WIPO Aug. 10, 2005)).
Furthermore, the Respondent’s business is commonly known by the domain name while the Respondent has consistently marketed the disputed domain name since 2004 and prominently displays a graphic reading of “Earn-your-degree.com” at the top of the website.
Registration and use in bad faith
The Respondent cannot be considered to have registered or used the disputed domain name in bad faith because the registration was completed before the Complainant had any rights in its purported trademark (see SPB Software House v. SPB Online Serv.,Ltd., FA1067638 (Nat. Arb. Forum Oct. 17, 2007); see also Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001)).
The recent incident between the parties is, while unfortunate, further evidence of the Respondent’s good faith interactions with the Complainant. The Respondent employs third parties to provide relevant content for the website. When the Respondent was approached by the Complainant, the Respondent immediately removed the article. This incident cannot be considered an example of bad faith under the ICANN Policy.
The Respondent has consistently operated in good faith with regard to as well the Complainant as the Internet community as a whole. Further, the Respondent has never offered to sell, rent, or otherwise transfer the domain name registration to the Complainant. The Respondent has had no pattern of preventing the owner of any trade- or service mark from reflecting the mark in a corresponding domain name. Furthermore, the Respondent did not intentionally attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark. Finally, the Respondent has not attempted to hide his identity by providing false contact information or employing the WHOIS privacy service.
Reverse Domain Name Hijacking
Relying on Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, D2005-0309 (WIPO July 19, 2005), the Respondent seeks a Declaration of Reverse Domain Name Hijacking while the Complainant had access to high quality legal advice, while the Complainant makes separate arguments as to both bad faith registration and bad faith use, and while the Complainant has offered no explanation for the significant delay in assertion of its rights. The Complainant has made no contact at all with the Respondent until January 21, 2009, literally the day after the registration of the Complainant’s trademark.
Finally, when conducting a WHOIS search and realizing that the registration of the disputed domain name dates four and a half years back the Complainant “was alerted to the fact that the registration of the domain name was most unlikely to have been undertaken ‘primarily’ for any bad faith purpose directed at the Complainant” (citing Deutsche Welle v. DiamondWare Ltd., D2000-1202 (WIPO Jan. 2, 2001)). The facts of that case are nearly identical to this matter which has cost the Respondent valuable time and substantial legal costs.
C. Additional Submissions
The Complainant further submitted the following, by the Panel considered relevant, arguments as summarized:
To prove the first element of the Policy, a complainant need only show that it has trademark rights in the mark at issue and that the disputed domain name is confusingly similar to this trademark. The Respondent admits to the key facts. It is irrelevant whether the Complainant acquired trademark rights after the domain name registration.
By offering competing services with the Complainant, the Respondent is neither making a bona fide offering of services under its domain name nor is it making fair use of the domain name.
The Respondent has never denied that it knew of the <earnmydegree.com> domain name and/or the website associated therewith before the Respondent registered and/or started using the <earn-your-degree.com> domain name. This contrasts to the facts in National Trust for Historic Preservation v. Barry Preston, D2005-0424 (WIPO Aug. 10, 2005) where the Respondent had submitted a sworn statement attesting to his unawareness of the Complainant or of the mark of the Complainant.
During the 2003-2004 period, in which the parties initiated its businesses, the website of the Complainant averaged 300 000 unique visitors per month. In this case the Respondent is using the disputed domain name in an attempt to trade off the goodwill invested in the Complainant’s trademark.
Competitors such as the Respondent need not use the word “earnmydegree.com” or something confusingly similar thereto, to describe their competing services. The search result from Google® provided by the Respondent only proves this point.
Regarding Reverse Domain Name Hijacking
The Complainant has proven lack of legitimate interest in the disputed domain name and bad faith on part the Respondent. Further, this case bears no similarity to the case cited by the Respondent. With regard to the accusation of delay in assertion of the Complainant’s rights, the Respondent contacted the Complainant in December 2008 at which time the Complainant was made aware of the Respondent. The Complainant promptly sent the submitted cease and desist email. The timing of this email with the USPTO registration is purely coincidental.
FINDINGS AND 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 Panel wishes to begin by emphasizing that the Dispute Resolution Policy purports to resolve only clear cut cases, such as domain name hijacking. It was never meant to be used as an alternative to the regular Courts. It therefore follows that mere contentions and assertions will fail to establish any factual circumstances. The evidence submitted must be of a prima facie nature.
As the Respondent has correctly
noted, prior to a mark’s formal registration, the Complainant cannot enjoy the
rebuttable presumption of an exclusive right to the mark (the Respondent has in
support of this cited Media West-GSI,
Inc., et al. v. Earthcars.com, Inc, D2000-0463 (WIPO June 12, 2000)). Relying
on this case, the Respondent contends that the registration therefore cannot
serve as prima facie evidence of the
Complainant’s right in the trademark EARNMYDEGREE.COM. However, subsequent
decisions have rejected that proposition. The
consensus view developed in these cases is that a registered trademark stands
as prima facie evidence of the right
to the mark, regardless of whether the registration of the domain predates the
registration of the trademark. This view is based on the absence of an explicit
requirement in paragraph 4(a)(i) of the Policy that
such right must predate the domain name registration. See, e.g., Metro-Goldwyn-Mayer Studios
Inc. v. World Readable, FA868828
(Nat. Arb. Forum Jan. 31,
2007); see also Digital Vision,
Ltd. v. Advanced Chemill Sys.,
D2001-0827 (WIPO Sept. 23, 2001) (holding that “The Complainant has
provided the registration documents for its DIGITAL VISION marks, within the
Instead, the dates of the respective registrations may have an importance when reviewing the other elements of the Policy.
The Panel therefore finds, in line with established consensus, that the Complainant has established rights to the mark EARNMYDEGREE.COM and any further enquiry into whether common-law rights has been established is not necessary.
The next question is whether <earn-your-degree.com> is confusingly similar to the trademark EARNMYDEGREE.COM.
The Panel concludes that the addition of hyphens is irrelevant under the Policy 4(a)(i). Further, the alteration of the pronoun cannot be seen otherwise than a change sufficiently minor to establish that the disputed domain name is confusingly similar. See, e.g., Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to the complainant's EASYJET mark and therefore that they are confusingly similar); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark).
Complainant has not, as noted by the Respondent, obtained a registration of its trademark before January 2009. The Complainant is therefore left with the alternative of providing evidence of established secondary meaning in order to satisfy the second and third element of the Policy.
The mere existence of competing businesses offering goods and services from similar domain names is not enough to establish the lack of a legitimate interest or use in bad faith. Further, the question is intimately linked to the establishment of bad faith.
A number of Panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant. See, e.g., Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., D2004-0843 (WIPO Dec. 14, 2004); see also T. Rowe Price Assoc., Inc. v. J A Rich, D2001-1044 (WIPO Nov. 24, 2001); see also Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 30, 2001); see also EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enter., Inc., D2000-0047 (WIPO Mar. 29, 2000).
However, it is clear, that the respondent must use the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 30, 2001). It is firmly settled that a bona fide offering of goods and services under paragraph 4(c)(i) is not possible when evidence otherwise suggest bad faith registration and use of the domain name. See, e.g., First Am. Funds, Inc. v. Ult.Search, Inc, D2000-1840 (WIPO May 1, 2001) (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii).). The featuring of a copied article on the Respondent’s website is indicative of bad faith; however, the Panel finds that this was overcome by the reasonable explanation and the immediate removal of the article and that this is not sufficient evidence to establish use in bad faith.
The Complainant has asserted that the website of the Complainant averaged 300,000 unique visitors per month during the 2003-2004 period. The Complainant has not, however, submitted any evidence to this fact, or to the fact that the domain name and subsequent trademark of the Complainant was associated by the consumer to the source, namely the predecessor of the Complainant. See, e.g., Amsec Enter., L.C. v. McCall D2001-0083 (WIPO, Apr. 3, 2001) (holding that relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the Complainant’s products).
The Respondent on the other hand has provided a reasonable explanation for the registration of the domain name in 2004. It is not for the Respondent to show that he was unaware of any unestablished secondary meaning. Furthermore, the business conducted at the website is in line with the descriptive nature of the domain name. The Panel therefore finds that the Respondent did not register the website in bad faith and that he has a legitimate business interest in the domain name. See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the respondent registered the disputed domain name for a legitimate business purpose prior to complainant’s application for registration of the mark and the complainant has not proven any earlier use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (“As the domain name was registered well before the trademarks and as it was clearly used for a legitimate purpose before the registration of the trademarks and a fortiori, before notification of the dispute, it is clear that Respondent has rights and legitimate interests in the domain name.”).
In view of the above, the Panel finds that the Complainant has failed to establish both the second and third element of the Policy.
Reverse Domain Hijacking
Although the Complainant has failed to satisfy its burden under the Policy, the Panel does not find that the Complainant has engaged in reverse domain hijacking.
The Respondent relies on the case Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, D2005-0309 (WIPO July 19, 2005). The Panel however finds the circumstances to be quite different here. Instead it is well established as the dissenting Panelist in the case notes:
Mere failure of a complaint clearly falls short of that standard as can be seen from the decision of the three-member panel in Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services, D2002-0545 (WIPO Aug. 6, 2002). There have been cases, such as Goldline International, Inc v. Gold Line, D2000-1151 (WIPO, Jan. 4, 2001) and Deutsche Welle v. DiamondWare Limited, D2000-1202 (WIPO Jan. 2, 2001) where persisting in a complaint long after it was or should have been clear to the complainant that the complaint was hopeless, have been held to fall within paragraph 15(e). Those cases do not mean that the very high bar set by the language of paragraph 15(e) has been lowered to include every complaint that is misconceived since each case has to be decided on its own facts.
It is for the Respondent to show knowledge on the part of the Complainant of the Respondent’s rights or legitimate interest in the domain name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge. See Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002). Mere assertions on part of the Respondent will not suffice.
The Complainant has prevailed on the first element of the Policy. Under these circumstances, it is only natural for the Complainant to defend its trademark rights, albeit failing the other elements. See, e.g., Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy). The request for a Declaration of Reverse Domain Name Hijacking is consequently denied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Jonas Gulliksson, Panelist
Dated: April 10, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum