EducationDynamics, LLC v. Global Access c/o domain admin
Claim Number: FA0905001265489
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 <elearner.com>, registered with Fabulous.com Pty Ltd.
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.
Tyrus R. Atkinson, Jr., G. Gervaise Davis III,, and Beatrice Onica Jarka as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
An additional Submission was received from the Complainant on July 6, 2009 and from the Respondent on July 10, 2009.
The Panel has considered these additional filings and determined that they are to be considered as they comply with Supplemental Rules 7.
On July 8, 2009, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., G. Gervaise Davis III, and Dr. Beatrice Onica Jarka as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that:
· In addition, its ELEARNERS and ELEARNERS.COM marks have acquired and enjoy substantial goodwill and a valuable reputation through their long-standing use.
· The <elearners.com> website averages more than 900,000 unique monthly visitors. In 2008, the site connected approximately 7 million prospective students to more than 175 higher education and continuing education providers.
· The disputed domain name <elearner.com> is confusingly similar to EducationDynamics’s marks ELEARNERS and ELEARNERS.COM, and also to EducationDynamics’s domain name <elearners.com>, as it differs only by one letter “s” from the Complainant’s trademarks and domain name,
· Respondent’s registration of the <elearner.com> domain name reflects a common mistyping of EducationDynamics’s marks, and constitutes the deliberate practice known as “typosquatting,”
· The association between Respondent and EducationDynamics is exacerbated by the way in which Respondent uses the <elearner.com> domain name, specifically, the similarities between the website associated with Respondent’s domain name and EducationDynamics’s <elearners.com> website.
· Respondent’s <elearner.com> domain name and contents of the website associated therewith falsely suggest that <elearner.com> is a legitimate website owned or sponsored by EducationDynamics.
· Respondent has no rights or legitimate interests in respect of the disputed domain name.
· Respondent did not register the domain name until after May 28, 2009, long after EducationDynamics started using its trademarks and registered its trademarks.
· Respondent is not known by the name “elearner”;
· The disputed domain name was registered and is being used in bad faith, as it was registered well after EducationDynamics had started using its marks (ten years) and after it had obtained U.S. trademark registrations (approximately seven years). Respondent’s domain name utilizes EducationDynamics’s marks, and Respondent uses that domain name in connection with a commercial website that provides links to EducationDynamics’s competitors and to schools that are EducationDynamics’s customers for its advertising services.
Respondent answers that:
· Complainant has no exclusive rights to use the term “elearners” or “elearner”in connection with information and advertising relative to elearning, as it is a descriptive and generic term
· Respondent’s use of the disputed domain name is bona fide and legitimate,
· Respondent registered the disputed domain name because of its generic/descriptive application and there is no evidence of the actual knowledge of the Respondent in registering and using the disputed domain name.
C. Additional Submissions
By the additional submissions, Complainant rejects the reasoning of
Respondent by affirming strong trademark rights in ELEARNERS and ELEARNERS.COM,
and the proof of all three elements of the Policy. In this sense Complainant
invokes the precedent of the decision No. FA0801001139891 (Nat. Arb. Forum
By the additional submissions, Respondent invokes the improperness of
the additional submissions of Complainant, as they were unsolicited by the
Panel, according to UDRP Rule 12. On the merits, in addition to the already
invoked reasoning by Response, Respondent invokes NAF decisions recently decided
against the complainant in connection with generic/descriptive terms referring
to gradschools.com and graduateschools.com (FA0903001250509, Nat.
Complainant holds United
States trademark registrations for Elearners
(Reg.No. 2,470,525, registered on
Respondent has been using the
disputed domain name since
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, and the Panel
finds, that it has established rights in the ELEARNERS.COM mark under Policy ¶
4(a)(i) via its registration of the mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,537,155 issued
Respondent’s <elearner.com> domain name differs from
Complainant’s ELEARNERS.COM mark by omitting the letter “s.” The Panel finds that the <elearner.com>
is confusingly similar to Complainant’s ELEARNERS.COM mark under Policy
¶ 4(a)(i). See
Respondent contends that the <elearner.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
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
In this sense, Complainant asserts it has not granted Respondent any license to use its ELEARNERS.COM mark. The WHOIS information associated with the disputed domain name lists Respondent as “Global Access c/o domain admin.” Respondent has not submitted any evidence that it is commonly known by the <elearner.com> domain name.
Complainant asserts that Respondent is using the <elearner.com> domain name to resolve to a parking website that display links to third-party
websites which are in direct competition to the advertisements and links posted
by Complainant. These allegations are not contested by Respondent. Complainant
further asserts that Respondent receives click-through fees for the
advertisements listed on the resolving websites. The
Panel finds this use is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Fox
News Network, LLC v. Reid, D2002-1085 (WIPO
Respondent argues that
Complainant does not have an “exclusive right to provide advertising for online
courses” as the disputed domain name is comprised of generic
terms and of common use and
therefore, Complainant does not have an exclusive monopoly on these terms on
the Internet. Complainant holds trademarks for “dissemination of advertising for others via an on-line electronic
communications network”, trademarks which have acquired and enjoy
substantial goodwill and a valuable reputation through their long-standing
use. Complainant is using these
trademarks in order to advertise on line education provided by others.
Complainant is not itself a provider of these on-line education services. As
found by other Panels, Complainant is
well-known within this field of on-line educational services, with
incontestable trademark registrations for the ELEARNERS and ELEARNERS.COM
marks. Complainant’s website receives
approximately 900,000 visitors per month and allows users to access information
and services about on-line education and academic programs. See also EducationDynamics,
The Panel takes into consideration the request of Respondent to decide this case on its own merits, but it cannot ignore the findings of other Panels in connection with the strong rights of Complainant in the trademarks ELEARNERS and ELEARNERS.COM, especially when Respondent is providing exactly the same kind of services as Complainant – advertising on-line education for others, using Complainant’s trademarks.
Therefore the Panel considers that Respondent has failed to present arguments and evidence to show its rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is using the disputed domain name to resolve to a website that directly competes with Complainant’s website by advertising third-party eLearning opportunities. As said before these assertions are not contradicted by Respondent.
According to Complainant, the website that resolves from the <elearner.com> domain name displays advertisements and links to websites in direct competition with Complainant. Complainant contends that Respondent receives pay-per-click fees for these links and advertisements. Also these assertions are not contradicted by Respondent.
Moreover, the association between Respondent and Complainant is exacerbated, according to Complainant, by the way in which Respondent uses the <elearner.com> domain name, specifically, the similarities between the website associated with Respondent’s domain name and Complainant’s <elearners.com> website. None of these assertions were denied by Respondent, which concentrated its reasoning on the descriptive character of the Complainant’s trademarks.These circumstances require the Panel to find that Respondent has registered and has been using the disputed domain name in order to take advantage of the inherent confusion between the <elearner.com> domain name and Complainant’s ELEARNERS.COM mark for Respondent’s own financial gain.
Therefore, the Panel concludes that
Respondent registered and used the disputed domain name in bad faith under
Policy ¶ 4(b)(iv).
See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <elearner.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica Jarka, Chair
Tyrus R. Atkinson, Jr., Panelist
DISSENT OF MINORITY PANELIST
I respectfully disagree with the result of the Majority in this case, while I do not disagree with their finding that Complainant owns several registered trademarks substantially identical to the domain name at issue. However, I find no evidence whatsoever that the domain was registered in bad faith, since Complainant provided not even a scintilla of evidence to that effect other than that “Respondent must have known of Complainant’s rights” when it acquired the domain in May 2009. That is not evidence but speculation. The subject domain has apparently existed for many years in the hands of other owners prior to Respondent acquiring it. I am not aware of any legal principle under the UDRP which makes it bad faith to register an existing domain name in order to use it, nor did Complainant cite such law.
Similarly, Complainant complains that Respondent’s use of the domain is to attract viewers to a website that directs them to educational institutions, for which it earns a fee. Contrary to the stated conclusion of the Majority which finds this use improper, this is exactly what Complainant uses its own website and domain for, by its own admission on its web page under its Legal Notices section, http://www.elearners.com/help/legal.asp, where it describes itself as “eLearners.com, a part of the Student Prospecting Division of EducationDynamics, LLC.” In other words, Complainant uses its domain <elearners.com> to help its institutional advertisers find students who come to the site looking for information. How this differs legally from what Respondent uses its domain name for is beyond me. Neither use is contrary to the UDRP and the many, many cases under it, nor does it form a legal basis for ruling here against Respondent.
In the final
analysis, however, the domain should not
be transferred to Complainant, simply because Complainant’s registered
trademarks have become so hopelessly generic and descriptive that they no
longer serve to uniquely distinguish the services of Complainant. In fact, it would seem almost incredible that
that USPTO ever issued the registrations on these marks which were already
generic and descriptive at the time they were issued. As another Forum panel recently held, in a case involving this same Complainant,
“When a trademark is composed of generic terms, or common words phrases,
and the disputed domain is being used “because of its attraction as [a]
dictionary word, and not because of [its] value as [a] trade mark,” the
Respondent has legitimate rights in the domain. . . . The use of a common word
domain name related to the descriptive meaning of the domain name and its
services constitutes use in connection with a bona fide offering of goods or
services, pursuant to ¶ 4(c)(i) of the UDRP.” Nat.
Arb. Forum, decision FA0903001250509,
The U.S. Courts of Appeal have ruled similarly in numerous cases, such as a well known decision where the Ninth Circuit held “. . . a holder of a trademark must be denied protection if the mark becomes generic and is an expression that does not relate exclusively to a trademark owner's property. New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 306 (9th Cir. 1992). This case has been cited and followed dozens of times since it came down.
This principle is so strong that there are legions of U.S. cases of otherwise well established trademarks becoming so descriptive and generic as to result in the unenforceability of the mark, since it no longer, if it ever did, exclusively describes the services or goods of the owner of the mark. The examples of the terms “cellophane,” “elevator,” “aspirin,” and many other marks illustrate this rule of law which the Majority of this Panel is ignoring by its decision. See, “An Overview of Trademark Law,” http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#6 where the author explains:
can also be lost through genericity. Sometimes, trademarks that are originally
distinctive can become generic over time, thereby losing its trademark
protection. Kellogg Co.
v. National Biscuit Co., 305
One may also read of numerous other examples in the entry on “Genericized Trademarks” in the well known Wikipedia at http://en.wikipedia.org/wiki/Genericized_trademark, which cites many other examples and cases.
Suffice it to say, this Dissenting Panelist feels it is poor public policy as well as contrary to the fundamental purpose of the UDRP to protect generic or descriptive trademarks, which has the effect of taking such terms out of the public use, or at least making it difficult for the public to use the English language from which these words are taken.
An example of the absurdity of this practice, here, is found when one uses the Google® search engine to search for the term “elearner.” This results in 76,100 hits, only a few of which have anything to do with Complainant or its website, while the tens of thousands of other hits refer to and use the common and generic terms “elearner,” “elearning,” or terms like “elearning methodology,” which illustrates far more effectively than this Panelist can, that the whole concept of “elearning” is a technical English term and description of a new method of learning that belongs to the public at large and not to some domain name owner who seeks to arrogate ownership of a descriptive or generic English word to itself.
EducationDynamics LLC (Complainant here) does not own the word “elearner”or “elearners,” the public does and any decision like that of the Majority here, which so finds, is simply and regrettably wrong. I have, therefore, respectfully dissented here in some detail so that other Panels in the future do not make what this Panelist sincerely believes is an error of law.
G. Gervaise Davis III, Panelist
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