national arbitration forum

 

DECISION

 

Penn Foster, Inc. v. Micheal Newmen / pfAnswers.us

Claim Number: FA1104001383826

 

PARTIES

Complainant is Penn Foster, Inc. (“Complainant”), represented by Seán F. Heneghan, Massachusetts, USA.  Respondent is Micheal Newmen / pfAnswers.us (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pfanswers.us>, registered with ENOM, INC.

 

PANEL

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.

Charles A. Kuechenmeister

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 14, 2011; the Forum received a hard copy of the Complaint on April 18, 2011.

 

On April 14, 2011, ENOM, INC. confirmed by e-mail to the Forum that the <pfanswers.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On April 20, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 10, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for the usTLD Dispute Resolution Policy (the “Rules”).

 

On April 26, 2011 the Forum received an email from Respondent purporting to respond to the Complaint.  The Forum promptly notified Respondent by email that Respondent’s email did not comply with the requirements for a response set forth in the Rules or the Forum’s Supplemental Rules.  The Forum reiterated that a Response was due by May 10, 2011 and notified Respondent that if Respondent considered his email to be his response it would be included in the file and treated as a non-compliant Response.  On April 27, 2011 the Respondent sent another email to the Forum, again purporting to respond to the Complaint but failing to conform to applicable requirements for a response.  

 

On May 16, 2011, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.

 

On May 16, 2011, the Complainant filed an Additional Submission.  It was timely received, complies with the Forum’s Supplemental Rule 7 and was considered by the Panel.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a compliant Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant

 

Complainant has established rights in the mark PENN FOSTER through its registrations of that mark on the Principal Register of the USPTO, including U.S. Registration Nos. 3,452,917, 3,382,965, 3,452,915, 3,469,420 and 3,469,429 (registered in February, June and July 2008, with first use for the most part on December 19, 2005), all primarily for providing programs and courses of instruction on a variety of subjects at the high school, vocational, and college levels via distance learning.  Complainant is also the owner of several international registrations incorporating PENN FOSTER, including in, but not limited to Canada and the European Union.  Complainant has thus established rights in the PENN FOSTER mark for purposes of Policy ¶ 4(a)(i).

 

Complainant has also established clear senior common law trademark rights in PENN FOSTER for the purposes of the usTLD Policy by the continuous use of the mark in commerce since 2005.

 

Respondent’s <pfanswers.us> (the “Domain Name”), registered on August 13, 2010, is confusingly similar to Complainant’s PENN FOSTER mark pursuant to Policy ¶ 4(a)(i).  It contains an abbreviated version of Complainant’s PENN FOSTER mark, namely “PF”, and merely adds the descriptive term “answers” and the country-code top-level domain (“ccTLD”) “.US”.  In the circumstances presented here, the abbreviated version of Complainant’s well-known and registered trademark is entitled to trademark protection to the same degree as the mark itself.

 

The “PF” portion of the Domain Name is an obvious attempt to trade on Complainant’s PENN FOSTER trademark, in light of the fact that Respondent’s website uses the words, “Penn Foster Exam Answers” to describe what Respondent sells there.  Respondent is using the Domain Name to market exam answers to the actual, proprietary examinations created and issued by Complainant.  Furthermore, the source code for Respondent’s PFAnswers.us website includes meta tags that are identical to Complainant’s trade name and registered marks, including: “penn foster,” “penn foster answers,” and “penn foster exam answers” (see Exhibit 25).

 

The addition of a descriptive term such as “answers” to Complainant’s trademark in forming the Domain Name reinforces the confusing similarity between the Domain Name and PENN FOSTER because that term is so closely related to Complainant’s education services.

 

Respondent is currently using the Domain Name in association with a commercial website offering for sale exam answers that are the property of Complainant and in all likelihood were acquired by Respondent by improper means.  Furthermore, the website associated with the Domain Name features the title “Penn Foster Exam Answers” and makes the claim “pfAnswers.us is your top anytime, anywhere site for Penn Foster Exam Answers.”  Respondent’s use of the Domain Name in this manner creates a likelihood of confusion between it and Complainant’s trademark 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 contested domain pursuant to Policy ¶ 4(c)(iii).

 

Respondent is not commonly known by the Domain Name.  The WHOIS information for the subject domain currently lists “Micheal Newman” as the registrant, which is further evidence that Respondent is not commonly known by the subject domain.  In light of Complainant’s established use of its PENN FOSTER mark long before Respondent registered and began use of the Domain Name, Respondent cannot claim to be commonly known by that name.

 

Complainant has no affiliation, association, or business relationship of any kind with Respondent and Complainant has not licensed or authorized Respondent to use the cited trademark in any manner.

 

Respondent lacks rights and legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii) on account of the fact that Respondent offered to sell it to Complainant for $1,000.

 

Respondent registered and is using the Domain Name in bad faith under Sections 4(b)(i)(iii) and (iv) of the usDRP.  Respondent was well aware of Complainant’s federally protected trademark because PENN FOSTER was in use long before Respondent’s registration of the Domain name on August 13, 2010.  Moreover, when registering the Domain Name, Respondent was clearly aware of the existence of Complainant and its trademark rights, given that Respondent is using the PENN FOSTER mark prominently on his website.  The fact that Respondent has been using <pfanswers.us> to market his services that, at the very least, overlap with Complainant’s education services, is more evidence that not only did Respondent know of Complainant’s rights in PENN FOSTER, but knowingly and willfully took advantage of the trademark.

 

Respondent offered to sell the Domain Name to Complainant for $1000, a sum well in excess of his out-of-pocket costs directly related to it.

 

Respondent’s use of the Domain Name to sell answers to the actual, proprietary examinations created and issued to its students by Complainant disrupts the business of Complainant.

 

Persons accessing the <pfanswers.us> web site will likely become confused as to Complainant’s sponsorship of the Domain Name and resolving web site, and Respondent attempts to profit from that confusion.

 

B.        Respondent failed to submit a compliant Response in this proceeding.  The emails he sent to the Forum purportedly in response to the Complaint state generally that the letters PF in his Domain Name stand for “paddin’ free,” not Penn Foster; he does not have any trademarks using PENN FOSTER.  He also states that he posted on his web site a disclaimer of any affiliation or relationship between himself and Complainant.

 

C.  Complainant’s Additional Submission

 

Respondent has failed to file a compliant Response.

 

While Respondent’s emails state that the PF in the Domain name mean “paddin’ free,” he stated in an earlier email to Complainant (Exhibit 24 to the Complaint) that those initials stood for PIKE FISHER.  He is not being truthful.

 

Since the Complaint was filed, Respondent has been attempting to scrub his website of any references to PENN FOSTER, but this is not sufficient to prevent the Panel from finding bad faith based upon his pre-filing conduct.

 

The purported disclaimer posted on Respondent’s web site is insufficient to cure his improper use of the Domain Name.

 

Respondent does not deny any of Complainant’s substantive allegations regarding his use of the Domain Name to sell answers to Complainant’s proprietary examinations.

 

FINDINGS AND DISCUSSION

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 will decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 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; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

The Panel makes the findings and determinations set forth below with respect to the Domain Name at issue between the parties.

 

Identical and/or Confusingly Similar

Complainant has clearly established its rights in its PENN FOSTER mark in connection with the provision of online education services.  Its federal trademark registrations, Registration Nos. 3,452,917, 3,382,965, 3,452,915, 3,469,420 and 3,469,429 (Registered in February, June and July 2008, with first use for the most part on December 19, 2005), satisfy the requirement of Policy ¶ 4(a)(i).  See 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); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to UDRP ¶ 4(a)(i)).  Complainant’s registration of the PENN FOSTER mark in Canada, No. TMA 727700, registered 3 November 2008 (See, Complaint Exhibit 4), the country of Respondent’s address, further supports this finding.  These registrations are sufficient evidence of Complainant’s rights in the PENN FOSTER mark under Policy ¶ 4(a)(i).

As to the matter of confusing similarity, Complainant does not use the initials PF to identify itself or its services.  See, Complaint Exhibit 2.  It uses only its full name, PENN FOSTER, for these purposes.  The Domain Name, <pfanswers.us>, uses only the initials PF—that is the only direct link to or association with Complainant’s mark in the Domain Name.  Complainant asserts that these initials are clearly meant by Respondent to be associated with Complainant’s name and services.  That is supported by the content of Respondent’s web site at  <pfanswers.us> (See, Complaint Exhibit 11), which prominently displays the name PENN FOSTER, and makes unmistakably clear that Respondent is selling answers to PENN FOSTER examinations at that site. 

While this is evidence that Respondent intended by the Domain Name to inform internet users of the availability of answers to PENN FOSTER examinations at his web site, in order to resolve the issue of confusing similarity the Panel must still evaluate the Domain Name as a whole to determine whether it, by itself and without reference to the content of the resolving web site, is confusingly similar to Complainant’s mark.  Policy ¶ 4(a)(i).  Where a disputed domain name contains an abbreviation of a mark, e.g., the letters PF in the Domain Name as a purported abbreviation of Complainant’s PENN FOSTER mark, panels have been split on decisions of confusing similarity.  The Panel in ISL Mktg. AG v. Chung, D2000-0034 (WIPO Apr. 3, 2000) found that although one could argue that “wc” is an abbreviation for WORLD CUP, it is not likely the meaning that most people would give to those letters.

In this case, Complainant contends that the PF in <pfanswers.us> stands for its PENN FOSTER mark and further asserts that Respondent’s use of the descriptive term “answers,” which implicates Complainant’s education services, in immediate juxtaposition with those initials is sufficient to render it confusingly similar to Complainant’s mark because it is likely to confuse Complainant’s customers and potential customers into believing that there is some affiliation, connection, sponsorship, approval or association between the Respondent and Complainant when in fact none exists..  From the evidence in this case, including the prominence of Complainant’s PENN FOSTER mark in Respondent’s web site, it appears that Complainant is a major presence in the field of distance-learning.  The Panel concludes from this that the use of the letters PF in conjunction with the descriptive term “answers” does render the Domain Name confusingly similar to Complainant’s PENN FOSTER mark, for precisely the reason that Complainant asserts.  It creates a substantial likelihood of confusion as to Complainant’s sponsorship of, affiliation with, or endorsement of the web site.  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); Penn Foster, Inc. v. WhoisGuard c/o WhoisGuard Protected, FA 1284542 (Nat. Arb. Forum Oct. 22, 2009) (Respondent’s <pfanswers.com> domain name was confusingly similar to Complainant’s PENN FOSTER mark because Respondent’s domain name contained an abbreviated version of Complainant’s PENN FOSTER mark).  Also relevant in this regard is the fact that internet users would be likely to assume that PENN FOSTER or someone acting on its behalf would be the only entity in lawful possession of answers to PENN FOSTER examinations.  It would not be reasonable to expect that a third party not affiliated with PENN FOSTER would have access to this information.

The Domain Name, of course, also includes the country-code top-level domain (“ccTLD”) “.us.”  It is well settled that the addition of a ccTLD to a domain name is insufficient to distinguish an otherwise confusingly similar name.  See, Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a UDRP ¶ 4(a)(i) analysis).

Based upon the foregoing, the Panel finds that the Domain Name is confusingly similar to the PENN FOSTER mark for the purposes of Policy ¶4(a)(i), and that Complainant has substantial and demonstrated rights in that mark.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interest in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show it does have rights or legitimate interest.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

            Complainant asserts, and the WHOIS information confirms, that the registrant of the Domain Name is “Micheal Newmen,” a person whose name is other than the Domain Name.  Complainant further asserts that Respondent has no trademark or service mark rights in the Domain Name, the mark PENN FOSTER or any variation thereof, and is not making a legitimate noncommercial or fair use of the Domain Name.  Further, Complainant has not authorized or licensed Respondent to use its PENN FOSTER mark or any variation thereof in the Domain Name or in any other way.  Complainant also provides evidence that Respondent offered to sell the Domain Name to Complainant for $1,000.  On these facts it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name.  It is thus incumbent upon Respondent to demonstrate that he does.

            Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interest in the Domain Name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interest in the Domain Name under Policy ¶ 4(c).  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).  Respondent here has utterly failed to present any evidence that he has rights or legitimate interest in the Domain Name, and there is no evidence in the record that he does. 

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name within the meaning of Policy ¶ 4(c)(ii).

 

Registration and Use in Bad Faith

Respondent offered to sell the Domain Name to Complainant for $1,000, a sum far in excess of Respondent’s out-of-pocket costs directly related to it.  This is evidence of bad faith under Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).

Additionally, the evidence is clear that Respondent uses the Domain Name for a website offering to sell answers to Complainant’s exams.  Presumably, along with the answers Respondent is also selling the questions as well.  As Complainant makes clear, this is proprietary information of Complainant, and Complainant has not authorized Respondent to sell it.  Respondent’s doing so is evidence of bad faith in two respects.  First, internet users interested in Complainant’s educational testing products and services may purchase answers from Respondent’s website instead of making the purchase from Complainant.  This constitutes a disruption of Complainant’s competing business within the meaning of Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under UDRP ¶ 4(b)(iii)).

            Secondly, Respondent is profiting from the confusion created by the Domain Name to sell proprietary information belonging to Complainant without Complainant’s permission or authorization, in effect selling stolen or at least misappropriated property to persons who might mistakenly believe they are acquiring it from its rightful owner.  This is also evidence of bad faith registration and use of the Domain Name. 

            Further, Respondent is attempting to pass itself off as Complainant utilizing Complainant’s PENN FOSTER mark and stating that “pfAnswers.us is your top anytime, anywhere site for Penn Foster Exam Answers.”  From this the Panel finds that Respondent is attempting to pass itself off as Complainant, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).

            Finally, Respondent’s placement of a disclaimer on its resolving website does not mitigate a finding of bad faith registration and use under Policy ¶ 4(a)(iii).  See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).

            Based upon the foregoing, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that the relief shall be GRANTED.

 

Accordingly, it is Ordered that the <pfanswers.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Charles A. Kuechenmeister, Panelist

Dated:  May 27, 2011

 

 

 

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