Educational Directories Unlimited v.
Reflex Publishing, Inc.
Claim Number: FA0301000142378
PARTIES
Complainant
is Educational Directories Unlimited,
Chester, PA (“Complainant”) represented by Estella
S. Gold, of White and Williams LLP. Respondent is Reflex Publishing, Inc., Brandon, FL (“Respondent”) represented by
Ari Goldberger, of ESQwire.com.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <gradschool.com>,
registered with Enom, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Sandra
Jo Franklin, Alan L. Limbury and Bruce E. Meyerson as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 23, 2003; the Forum received a hard copy of the
Complaint on January 27, 2003.
On
January 29, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <gradschool.com> is
registered with Enom, Inc. and that the 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
January 30, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 19, 2003 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 postmaster@gradschool.com by
e-mail.
A
timely Response was received and determined to be complete on February 19, 2003.
Complainant
submitted a supplement to its Complaint on February 24, 2003, and Respondent
submitted a supplement to its Response on March 3, 2003.
On March 5, 2003, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Sandra Jo
Franklin, Alan L. Limbury and Bruce E. Meyerson as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS (Including
Additional Submissions)
A. Complainant
Complainant Educational Directories
Unlimited contends that it has established rights in its GRADSCHOOLS.COM mark
through registration with the United States Patent and Trademark Office on May
7, 2002, as well as through continuous and widespread use of the mark
nationally. According to Complainant,
the mark was first used as early as July 1995, and has been used in commerce
since September 1995. Complainant
contends that Respondent’s <gradschool.com> domain name is
confusingly similar to Complainant’s registered GRADSCHOOLS.COM mark. The only difference is the subtraction of
the letter “s” after “school.” Complainant
contends, on information and belief, that there is no evidence of Respondent’s
use of, or demonstrable preparation to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods and services. Complaint states
that Respondent’s Internet publishing business does not relate to the domain
name at issue and as such, Respondent has no interest or rights in the domain
name.
Complainant contends that Respondent, or
persons affiliated with Respondent, has engaged in a pattern of registering
domain names that infringe upon other entities’ marks. According to Complainant, Respondent (as an
individual, business, or other organization) has never been commonly known by
the domain name at issue and has no legitimate non-commercial or fair use of
the domain name. According to
Complainant, the domain name that is the subject of this arbitration was
registered or acquired for a primary purpose of intentionally attempting to
attract, for commercial gain, Internet users to Respondent’s website or other
on-line locations. Complainant claims that Respondent is
benefiting from the amount of Internet traffic it diverts to its website.
Further, according to Complainant, at one
time Respondent was a member of Complainant’s affiliates program, a program
that provides compensation and commission to a domain name holder who directs
Internet users to Complainant’s website.
At first, Respondent automatically forwarded traffic to Complainant for
free. Subsequently, after Respondent
asked to be paid for the traffic forwarded, an affiliate arrangement was
established on or about May 19, 2000.
Thereafter, in or about July 2000, Complainant discontinued the
affiliates program and paid Respondent directly. Complainant discontinued the arrangement the following August.
Finally, upon information and belief,
Complainant asserts that Respondent’s site has been undeveloped since its
inception in or about March 2000, and currently remains undeveloped.
B. Respondent
Respondent Reflex Publishing, Inc contends that Complainant has no enforceable rights under the
Policy. Respondent states that at the time
Respondent registered the disputed domain name, Complainant had not even filed
for a trademark registration. Because
Complainant’s trademark application postdates the domain name registration,
according to Respondent, it provides no enforceable rights under the
Policy. Moreover, Respondent argues that the term “grad school” is a
common generic term used in a descriptive sense by Complainant. Respondent states that the trademark
provides no enforceable rights under the Policy because (1) it is a descriptive
mark, and (2) its application and registration postdate the domain name
registration date.
Respondent claims that it has always used
the site in connection with a bona fide offering of goods and services. Respondent states that not only has it
posted on the site advertising for online college programs and other
school-related businesses, but also that it participated in Complainant’s own
affiliate programs. Presently,
Respondent posts graduate school-related links at the website in connection
with an advertising agreement with Overture.com, Inc.
Respondent argues that it did not
register, and has not used, the disputed domain in bad faith. Because Respondent registered the domain
name on April 17, 1998, a year before Complainant filed for its trademark,
Respondent claims that it could not have had knowledge of a non-existent
trademark at the time it registered the domain name. Thus, Respondent contends that it is impossible for Complainant to
meet its burden of proving bad faith registration of the domain name.
Respondent asserts that Complainant has
not offered a “scintilla” of evidence that the domain name was acquired primarily
for the purpose of selling, renting or transferring it to Complainant, to
prevent Complainant from reflecting its trademark in a domain name, or to
disrupt Complainant’s business or attract customers seeking to purchase its
products.
Moreover, Respondent asks the
Panel to declare that Complainant has abused this administrative proceeding and
engaged in Reverse Domain Name Hijacking because it knew that Respondent
registered the disputed domain in good faith prior to Complainant filing an
application to register its generic term mark, and because of Complainant’s
misrepresentation of material facts, including its omission of the fact that it
invited Respondent to participate in its affiliate programs.
FINDINGS
Respondent registered the domain name at
issue in April 1998. In June 1999
Complainant, using a similar domain name, GRADSCHOOLS.COM,
invited Respondent to be a part of Complainant’s “affiliate” program. The parties maintained a business
relationship at least through July 2000; the following month, Complainant
terminated its affiliate program.
Complainant filed its trademark application for GRADSCHOOLS.COM in April 1999;
Complainant’s trademark was registered on May 7, 2002, approximately eight
months before it filed the Complaint in this matter.
DISCUSSION
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.
Because
we have concluded that Respondent has rights or legitimate interests in the
disputed domain name, we need not decide whether Complainant has itself
established sufficient rights in a trademark.
We note, however, that Complainant, at the time it brought this
Complaint, was the owner of a registered trademark and Respondent has conceded
that the <gradschool.com> domain name is confusingly similar to
Complainant’s mark.
Respondent
has established a legitimate interest in the domain name by offering
education-related services at the site, by selling advertising, and by
diverting Internet traffic to education-related entities, such as Complainant. Indeed, Complainant itself had a business
relationship with Respondent, as Respondent was part of its “Affiliate”
program. In a letter to Respondent dated June 30, 1999, Complainant
acknowledged without protest Respondent's registration of the domain name and
sought jointly to exploit it by paying for click-through traffic to
Complainant’s site generated by Respondent.
Complainant’s willingness and interest in working with Respondent
clearly reflected an understanding that the disputed domain name was similar to
Complainant’s then-existing website. In
this respect, this case is like PROM
Software, Inc. v. Reflex Publishing, Inc., No. D2001-1154 (WIPO Mar. 4,
2002), where the panel found that correspondence between the parties, initiated
by the Complainant, revealed that the Complainant was aware “that it had no
entitlement to the domain name.”
So
long as Complainant paid Respondent for redirecting traffic to Complainant's
site, Complainant treated Respondent as having a legitimate interest in the domain
name, which did not depend on any permission to use a trademark. Respondent’s
interest in the domain name did not cease to be legitimate merely because
Complainant terminated the arrangement and Respondent ceased redirecting
traffic to Complainant. Thus, this case is unlike The Sports Authority Michigan, Inc. v. Internet Hosting, No.
FA12456 (Nat. Arb. Forum Nov. 4, 2002), in which on a record that contained no
response from the Respondent, the panel found that the complaining party had
never licensed the Respondent to use its mark.
Having
found that Respondent has legitimate rights and interests in the domain name,
it is unnecessary to address the issue of bad faith.
The Panel also declines to accept
Respondent’s invitation to make a finding of reverse domain name hijacking.
DECISION
For
the foregoing reasons, the relief sought by Complainant is hereby denied.
Sandra Jo Franklin, Alan L. Limbury and
Bruce E. Meyerson, Panelists
Dated: March 26, 2003