Penn Foster, Inc. v. WhoisGuard c/o WhoisGuard Protected
Claim Number: FA0909001284542
Complainant is Penn Foster, Inc. (“Complainant”), represented by Eric
J. Uhl, of Fisher & Phillips LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pfanswers.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 17, 2009.
On September 21, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <pfanswers.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 September 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a worldwide leader in education services.
Complainant owns multiple registrations for its PENN FOSTER service mark on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 3,452,917, issued June 24, 2008).
Respondent registered the <pfanswers.com> domain name on September 17, 2008.
For a lengthy period after the disputed domain name was registered, it resolved to Respondent’s commercial website prominently displaying Complainant’s PENN FOSTER mark and offering purported PENN FOSTER examination answers for sale.
After Complainant’s sent a cease-and-desist letter to Respondent, the disputed domain name resolved to Respondent’s commercial website and offering examination answers for sale, but removed Complainant’s PENN FOSTER mark from the website.
Respondent’s <pfanswers.com> domain name is confusingly similar to Complainant’s PENN FOSTER mark.
Respondent does not have any rights to or legitimate interests in the <pfanswers.com> domain name.
Respondent uses the <pfanswers.com> domain name to cause a likelihood of confusion between the disputed domain name and Complainant’s mark, and to benefit commercially from this activity by selling exams and exam answers to Internet users.
Respondent thus registered and uses the subject domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant owns registrations with the USPTO for the PENN FOSTER mark. Complainant has thus established rights in the PENN FOSTER mark for purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007): “Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).” See also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that a complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Complainant argues that Respondent’s <pfanswers.com> domain name is confusingly similar to its PENN FOSTER mark pursuant to Policy ¶ 4(a)(i). Respondent’s domain name contains an abbreviated version of Complainant’s PENN FOSTER mark, and merely adds the descriptive term “answers” and the generic top-level domain (“gTLD”) “.com.” In the circumstances here presented, the abbreviated version of Complainant’s registered mark is entitled to trademark protection to the same degree as the mark itself. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942):
the abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . ..
Also, the addition of a descriptive term such as “answers” to Complainant’s mark in forming the disputed domain name, because that term is so closely related to Complainant’s educational testing services, reinforces the confusing similarity between the domain name and the mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating a complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to that complainant’s mark).
Finally under this head, we conclude that the addition of a gTLD is irrelevant in connection with a confusing similarity analysis under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
Therefore, the Panel finds that Respondent’s <pfanswers.com> domain name is confusingly similar to Complainant’s PENN FOSTER mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the <pfanswers.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights to or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007):
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.
Complainant has established a prima facie case in support of its contentions, while Respondent has failed to submit a response to these proceedings. We are therefore entitled to presume that Respondent lacks any rights to and legitimate interests in the contested domain which are cognizable under the Policy. We will nonetheless examine the record before us to determine if there is in it any basis for concluding that Respondent has any such rights or interests.
We begin by noting that the pertinent WHOIS registration does not provide any evidence that Respondent is commonly known by the <pfanswers.com> domain name. Without evidence to the contrary, therefore, we may comfortably presume that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We also observe that Complainant alleges, and Respondent does not deny, that Respondent uses the <pfanswers.com> domain name for the operation of a commercial website offering exams and exam answers. Respondent’s use of the disputed domain name to divert Internet users creates a likelihood of confusion between the disputed domain name and Complainant’s mark for Respondent’s commercial benefit. This is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the contesteedd domain pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003): “Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s use of the <pfanswers.com> domain name to cause a likelihood of confusion between the disputed domain name and Complainant’s mark to benefit commercially by selling exams and exam answers is evidence of bad faith. We agree. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name there in question is obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion strictly for Respondent’s commercial gain); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent registered a domain confusingly similar to a complainant’s mark and where that domain name was used to host a commercial website that offered services similar to those offered by that complainant under its mark).
In addition, it appears that Respondent registered the <pfanswers.com> domain name with at least constructive knowledge of Complainant’s rights in the PENN FOSTER service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pfanswers.com> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 22, 2009
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