Penn Foster, Inc. v A Kalinchuk / Email Me If you wanna buy / this domain / Penn Foster Exam Answers / Jaden Galloway / PFANSWER, PRIVATE REGISTARTION / Pf Answer PF ANSWER / Pf Helps
Claim Number: FA1104001383827
Complainant is Penn Foster, Inc. (“Complainant”), represented by Seán F. Heneghan, Massachusetts, USA. Respondent is A Kalinchuk / Email Me If you wanna buy / this domain / Penn Foster Exam Answers / Jaden Galloway / PFANSWER, PRIVATE REGISTARTION / Pf Answer PF ANSWER / Pf Helps (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <pf-answers.com>, <pfanswers.biz>, <pfexamanswers.com>, and <pfanswers.net>, registered with ENOM, INC.
The domain name at issue is <pfanswer.info>, registered with GoDaddy.com Inc. (R171-LRMS).
The domain name at issue is <pfhelper.com>, registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 14, 2011; the National Arbitration Forum received payment on April 18, 2011.
On April 18, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <pf-answers.com>, <pfanswers.biz>, <pfexamanswers.com>, and <pfanswers.net> domain names are registered with ENOM, INC. and that Respondent is the current registrant of the names. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 April 15, 2011, GoDaddy.com Inc. (R171-LRMS) confirmed by e-mail to the National Arbitration Forum that the <pfanswer.info> domain name is registered with GoDaddy.com Inc. (R171-LRMS) and that Respondent is the current registrant of the name. GoDaddy.com Inc. (R171-LRMS) has verified that Respondent is bound by the GoDaddy.com Inc. (R171-LRMS) 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 April 14, MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <pfhelper.com> domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a/ INTERNET NAMES WORLDWIDE 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 April 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 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@pf-answers.com, postmaster@pfanswers.biz, postmaster@pfanswers.net, postmaster@pfexamanswers.com, postmaster@pfanswer.info, and postmaster@pfhelper.com. Also on April 26, 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 May 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
On May 24, 2011, Complainant filed a timely Additional Submission containing several exhibits, which were all considered by the Panel.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pf-answers.com>, <pfanswers.biz>, <pfanswers.net>, <pfexamanswers.com>, <pfanswer.info>, and <pfhelper.com> domain names are confusingly similar to Complainant’s PENN FOSTER mark.
2. Respondent does not have any rights or legitimate interests in the <pf-answers.com>, <pfanswers.biz>, <pfanswers.net>, <pfexamanswers.com>, <pfanswer.info>, and <pfhelper.com> domain names.
3. Respondent registered and used the <pf-answers.com>, <pfanswers.biz>, <pfanswers.net>, <pfexamanswers.com>, <pfanswer.info>, and <pfhelper.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Penn Foster, Inc., is a leader in online education and provides career-focused degrees and vocational programs. Complainant owns the PENN FOSTER mark and has used the mark in connection with its education and exam services since 2005. Complainant holds a trademark registration for the PENN FOSTER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,452,917 issued June 24, 2008).
Respondent registered the <pf-answers.com> domain name on June 29, 2010, the <pfanswers.biz> and <pfanswers.net> domain names on June 15, 2010, the <pfexamanswers.com> domain name on August 27, 2010, the <pfanswer.info> domain name July 13, 2010, and the <pfhelper.com> domain name on July 7, 2010. The disputed domain names resolve to commercial websites offering exam answers to the actual exams created by Complainant.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed.
The Panel finds that Complainant has demonstrated its rights in the PENN FOSTER mark through registration with a trademark authority under 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”)
Respondent’s disputed domain names are confusingly similar to Complainant’s PENN FOSTER mark. The disputed domain names all incorporate the abbreviation of Complainant’s mark “PF” and differ from the mark by adding the words “answers,” “exam answers,” and “helper,” descriptive of Complainant’s business. Respondent also includes a hyphen, and adds one of the generic top-level domains (“gTLDs”) “.com,” “.biz,” “.net,” and “.info” to each domain name in dispute. The Panel finds that the abbreviation of a mark does not adequately distinguish the disputed domain name from Complainant’s mark. 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). The Panel also finds that the use of a hyphen does not factor into a determination of confusing similarity. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”) Finally, the Panel finds that the addition of descriptive words, which describe Complainant’s business of providing education and related examinations, and the addition of gTLDs does not remove the disputed domain names from the realm of confusing similarity. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel concludes that the disputed domain names are confusingly similar to Complainant’s PENN FOSTER mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain names. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated “It is well established 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 presented a prima facie case in support of its claims. Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). 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 look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the disputed domain names. The registration information found in the WHOIS information does not contain any similarities with the disputed domain names. Complainant also states that Respondent is not licensed or otherwise authorized to use the PENN FOSTER mark within the disputed domain names and that Respondent has no affiliation or business association with Complainant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent’s disputed domain names resolve to commercial websites which offer for sale exam answers that are the property of Complainant and, Complainant alleges, likely acquired by improper means. The resolving websites also contain Complainant’s PENN FOSTER mark. The Panel finds that Complainant’s use of the confusingly similar disputed domain names to profit off the use of content and material belonging to Complainant 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 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 Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
Complainant asserts that Respondent attempted to sell the disputed domain names. After Complainant contacted Respondent, Respondent offered to sell the domain names for $1,000. The Panel finds that Respondent’s willingness to dispose of the disputed domain names indicates a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant claims that Respondent sent an email offering to sell all of the disputed domain names for $1,000. Complainant accepted the offer, but ultimately rejected the proposal when Respondent would not enter into a formal agreement or identify itself. The Panel finds that Respondent’s attempt to sell the disputed domain names is illustrative of bad faith use and registration 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 Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Respondent uses the disputed domain names to operate websites which sell the answers to Complainant’s exam materials. Complainant claims that this information is property of Complainant and was likely acquired by improper means. Internet users intending to purchase Complainant’s exam aids and test preparation materials may find Respondent’s website and purchase exam answers from Respondent instead. The Panel finds that such registration and use disrupts Complainant’s business in online education services and is evidence of bad faith under 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 Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent’s resolving websites offer for sale the exam answers to tests created and issued by Complainant to its students. The resolving websites also contain Complainant’s PENN FOSTER mark. The similarity in material and content and the use of Complainant’s mark create a strong likelihood of confusion among Internet users as to Complainant’s sponsorship of, or affiliation with, these websites. Respondent attempts to profit from this confusion through the sale of exam answers. The Panel finds that this constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
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 <pf-answers.com>, <pfanswers.biz>, <pfanswers.net>, <pfexamanswers.com>, <pfanswer.info>, and <pfhelper.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 25, 2011
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