Connections Education LLC f/k/a Connections Academy, LLC v. Domain Name Proxy, LLC
Claim Number: FA1102001371594
Complainant is Connections Education LLC f/k/a Connections Academy, LLC (“Complainant”), represented by Adam Sikich of Dunner Law PLLC, Washington D.C., USA. Respondent is Domain Name Proxy, LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oregonconnectionsacademy.com>, registered with Basic Fusion, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2011; the National Arbitration Forum received payment on February 7, 2011.
On February 9, 2011, Basic Fusion, Inc. confirmed by e-mail to the National Arbitration Forum that the <oregonconnectionsacademy.com> domain name is registered with Basic Fusion, Inc. and that Respondent is the current registrant of the name. Basic Fusion, Inc. has verified that Respondent is bound by the Basic Fusion, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oregonconnectionsacademy.com. Also on February 9, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
1. Respondent’s <oregonconnectionsacademy.com> domain name is confusingly similar to Complainant’s CONNECTIONS ACADEMY mark.
2. Respondent does not have any rights or legitimate interests in the <oregonconnectionsacademy.com> domain name.
3. Respondent registered and used the <oregonconnectionsacademy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Connections Education LLC f/k/a Connections Academy, LLC, is a K-12 distance learning provider in the United States. Complainant owns the CONNECTIONS ACADEMY mark and has used its mark since 2001 in connection with the operation and management of distance education schools. Complainant has also used its mark in connection with an online school in Oregon, named “Oregon Connections Academy,” since 2005. Complainant holds a trademark registration for its CONNECTIONS ACADEMY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,776,687 issued October 21, 2003).
Respondent registered the <oregonconnectionsacademy.com> domain name on October 14, 2005. The disputed domain name resolves to a directory website featuring third-party links, some of which directly compete with the online educational services Complainant offers.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 maintains that it has established rights in its CONNECTIONS ACADEMY mark. Previous panels have held that a complainant can establish rights in a mark through federal trademark registration. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Complainant holds a registered trademark for its CHURCHILL mark with the USPTO (e.g., Reg. No. 2,776,687 issued October 21, 2003). Therefore, the Panel finds that Complainant has demonstrated its rights in the CONNECTIONS ACADEMY mark via trademark registration pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <oregonconnectionsacademy.com> domain name is confusingly similar to its CONNECTIONS ACADEMY mark. The disputed domain name wholly incorporates Complainant’s mark and merely deletes the spaces between the words of the mark, and adds the geographic term “oregon” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that deleting a space between words of a mark and affixing a gTLD do not preclude a finding of confusing similarity to Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The Panel also determines that the inclusion of a geographic term, which here, references one of Complainant’s schools in Oregon, fails to properly distinguish this disputed domain name from Complainant’s mark. See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s CONNECTIONS ACADEMY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant asserts that Respondent has no rights or legitimate interests in the <oregonconnectionsacademy.com> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) found that once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. Here, Complainant has made a prima facie showing. Respondent’s failure to submit a response to the Complaint is evidence that it lacks rights and legitimate interests under Policy ¶ 4(a)(ii) and the Panel may assume as much. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <oregonconnectionsacademy.com> domain name. The WHOIS information identifies Respondent as “Domain Name Proxy, LLC,” which is not similar to the disputed domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use the CONNECTIONS ACADEMY mark within the domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) as there is no information in the record that would indicate otherwise. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The disputed domain name resolves to a directory website which hosts third-party links, some of which provide various online educational services similar to those Complainant provides. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the <oregonconnectionsacademy.com> domain name to operate a website which directs Internet users to Complainant’s competitors in the field of distance learning education is not 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant contends that Respondent’s use of the <oregonconnectionsacademy.com> domain name disrupts its business of providing distance learning education. Respondent’s resolving website features third-party links which compete with Complainant by offering similar online educational services and products. Internet users intending to utilize Complainant’s services and programs may find Respondent’s website because of the confusingly similar disputed domain name and end up utilizing similar services from a competitor as a result. The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business, which is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel infers that Respondent collects click-through fees from the previously mentioned third-party links. Internet users looking online for information about Complainant and its educational programs may find Respondent’s website instead due to Respondent’s use of Complainant’s CONNECTIONS ACADEMY mark within the disputed domain name. Users may be misled as to Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving website, and third-party links. Respondent tries to capitalize off this likelihood of confusion through the receipt of click-through fees. The Panel finds that such use of the disputed domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oregonconnectionsacademy.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 22, 2011
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