EducationDynamics, LLC v. Adam Marigliano
Claim Number: FA0902001248634
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@earn-your-degree.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
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”.
Confusingly similar
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)).
Confusingly similar
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.
DECISION
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
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