Association for Supervision and Curriculum Development d/b/a ASCD v. James Browne
Claim Number: FA1201001424304
Complainant is Association for Supervision and Curriculum Development d/b/a ASCD (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is James Browne (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ascd.com>, registered with Godaddy.com LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 12, 2012; the National Arbitration Forum received payment on January 12, 2012.
On January 13, 2012, Godaddy.com LLC confirmed by e-mail to the National Arbitration Forum that the <ascd.com> domain name is registered with Godaddy.com LLC and that Respondent is the current registrant of the name. Godaddy.com LLC has verified that Respondent is bound by the Godaddy.com LLC 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 January 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2012 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@ascd.com. Also on January 16, 2012, 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 February 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <ascd.com> domain name is identical to Complainant’s ASCD mark.
2. Respondent does not have any rights or legitimate interests in the <ascd.com> domain name.
3. Respondent registered and used the <ascd.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Association for Supervision and Curriculum Development d/b/a ASCD, is the owner of the ASCD mark which is used in connection with the development of programs, products, and services, including books, periodicals, and online and multimedia products, for educators to use in learning, teaching, and leading. Complainant owns registrations through the United States Patent and Trademark Office (“USPTO”) for the ASCD mark (e.g., Reg. No. 1,664,533 registered November 12, 1991).
Respondent, James Browne, registered the <ascd.com> domain name on July 22, 1997. The disputed domain name resolves to a website which displays links to goods and services which compete with Complainant’s offerings.
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 argues that it has rights in the ASCD mark. Complainant has provided the Panel with evidence of its trademark registration of the ASCD mark with the USPTO (e.g., Reg. No. 1,664,533 registered November 12, 1991). In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), and Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006), the panels held that the registration of a mark with a trademark authority gives the registrant rights in its mark. Therefore, the Panel finds that Complainant has rights in the ASCD mark under Policy ¶ 4(a)(i).
Complainant contends that the <ascd.com> domain name is identical to its ASCD mark. Respondent fully incorporates the ASCD mark and simply adds the generic top-level domain (“gTLD”) “.com” to create the disputed domain name. The Panel finds that a disputed domain name is identical to a mark when the only change made is the addition of a gTLD. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). The Panel finds that the <ascd.com> domain name is identical to the ASCD mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Where a complainant has made a prima facie case in support of its allegations against the respondent, the respondent has the burden of disproving these claims. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). If, however, the Respondent does not submit a response to the complaint, the Panel may infer that the respondent lacks rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that this has been supported by evidence amounting to a prima facie case. Because no response has been submitted, the Panel may infer that Respondent does not have rights or legitimate interests in the <ascd.com> domain name. However, the Panel will review the record for information which suggests otherwise.
Complainant argues that Respondent is not commonly known by the <ascd.com> domain name. The WHOIS record demonstrates that the domain name registrant for the <ascd.com> domain name is “James Browne,” a name which the Panel finds does not reflect the <ascd.com> domain name in any way. Additionally, Complainant argues that Respondent is not authorized to use the ASCD mark. Where the information in the record, including the WHOIS record and the complainant’s assertions, does not suggest otherwise, a panel may find that the respondent is not commonly known by a disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). The Panel therefore finds that Respondent is not commonly known by the <ascd.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that the use of the <ascd.com> domain name is not one which provides Respondent with rights or legitimate interests in the disputed domain name. Complainant alleges that the <ascd.com> domain name resolves to a website which displays links to products and services which compete with the educational materials Complainant produces. Complainant argues that these links are listed under headings such as “Curriculum & Instruction” and “K12 Elementary Education.” The display of links promoting goods or services which are similar to those that Complainant offers is not a protected use of a disputed domain name. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). The Panel finds that Respondent’s use of the <ascd.com> domain name to display links to competing goods and services is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the disputed domain name in order to disrupt Complainant’s business under the ASCD mark. Complainant contends that Respondent’s display of links under headings such as “Teacher Resources” and “Leadership Schools” which offer goods and services that compete with Complainant is an attempt to trade off of the goodwill established in Complainant’s ASCD mark. The panels in Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), held that the display of competitive links on a disputed domain name’s resolving website is evidence of bad faith. Therefore, the Panel finds that the <ascd.com> domain name was registered and is being used in bad faith pursuant to Policy ¶ 4(b)(iii) due to its disruption of Complainant’s business.
Complainant asserts that the <ascd.com> domain name was registered and is used in bad faith as Respondent intended to commercially benefit by causing confusion as to the source of the disputed domain name. The <ascd.com> domain name is identical to the ASCD mark and Internet users are likely to think that Complainant is the source of the domain name for this reason. Upon entering the resolving website, Internet users will likely become confused as to whether the disputed domain name is actually affiliated with Complainant considering that the website displays a directory of links promoting Complainant’s competitors. The Panel infers that Respondent is compensated for displaying these links, as well receiving profit for the Internet users who click through the links. Therefore, the Panel finds that the <ascd.com> domain name was registered and is used in bad faith pursuant to Policy ¶ 4(b)(iv) as demonstrated by Respondent’s intention to commercially benefit from Internet users’ mistakes regarding the source of the disputed domain name. See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the ASCD mark. Because Complainant has used its mark for over fifty years and because Complainant’s organization has over 160,000 members in over 145 countries, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights, particularly because the domain name incorporates Complainant’s mark exactly. The Panel therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ascd.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 16, 2012
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