Association for Supervision and Curriculum Development d/b/a ASCD v. Carl Ng
Claim Number: FA1211001469629
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 Carl Ng (“Respondent”), represented by David D. Lin of Lewis & Lin LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <educationalleadership.com> ("the Domain Name"), registered with GoDaddy.com, LLC.
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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2012; the National Arbitration Forum received payment on November 2, 2012.
On November 6, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <educationalleadership.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 November 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@educationalleadership.com. Also on November 9, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on November 29, 2012.
Complainant submitted a timely Additional Submission on December 4, 2012.
Respondent submitted a timely Additional Submission on December 10, 2012.
On December 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The submissions of the Complainant can be summarised as follows:
The Complainant is a publisher in the educational sector founded in 1943. It has over 160,000 members in more than 145 countries. Its flagship publication, published since 1943, is called Educational Leadership and covers trends and issues affecting practicing educators. It has 195,000 paid subscribers with a pass along circulation of 290,000. As recently as 2009 it has been the subject of awards for excellence. It is also available in a digital edition via its website. As a result of continuous use and marketing the EDUCATIONAL LEADERSHIP mark is famous and distinctive. The Complainant has US trade mark registrations for EDUCATIONAL LEADERSHIP for magazines and on line publications. The Domain Name is identical to the Complainant's trade mark incorporating it in its entirety, merely adding the generic top level domain .com.
The Respondent acquired the Domain Name in June 2011, long after Complainant registered its EDUCATIONAL LEADERSHIP mark in the USA. Respondent has used the Domain Name for a web site with content related to educator programs, products and services and a "find a school" widget. The home page lists the Complainant as a resource and links to the Complainant's web site. The footer has a copyright notice in the name of educationalleadership.com.
Respondent has no rights or legitimate interests in the Domain Name. It is not and never has been commonly known by the Domain Name. The Complainant has not authorised the Respondent to use its mark.
The Respondent has used the Domain Name as a platform to divert traffic to a third party advertising affiliate network which is not a bona fide offering of goods and services, nor is it legitimate non commercial or fair use. Diversion of internet traffic using a trade mark to derive click through payments is cybersquatting under the Policy. Customers are likely to be confused that the website and widget are approved of or connected with the Complainant because of the reputation of the Complainant's mark.
Respondent has registered and used the Domain Name in bad faith. Respondent is disrupting the business of the Complainant by diverting Internet traffic meant for the Complainant's site to the Respondent's site. The Respondent is attracting users to the Respondent's competing web site for commercial gain by creating a likelihood of confusion with the Complainant's mark and generating click through fees. The Respondent clearly knew of the Complainant as it listed it as a resource on the Respondent's web site.
Complainant sent a letter demanding the transfer of the Domain Name and disclosure of the Respondent's details which were subject to privacy protection. No response was received.
The Respondent has registered projectgiraffe.com a domain name which is confusingly similar to Giraffe Project, an educational charity with which the Respondent has no relationship. This is a pattern of behaviour which should be considered use and registration in bad faith under the Policy.
B. Respondent
The submissions of the Respondent can be summarised as follows:
The Respondent is a web design and marketing professional focussing on the higher education space. He is co-founder and Chief Operating Officer of Stripes39 an Internet marketing company. He purchased the Domain Name for the purpose of developing it into a web site as a resource for students looking for advanced degrees in the field of Educational Leadership. The web site has been active since 2011.
Educational Leadership is a term describing the relationship between educational leaders, staff and students and includes any individual in a school with a decision making role. Such roles usually require an advanced degree.
The Respondent owns about 45 other domain names in the educational field providing information to visitors and driving leads to on-line schools. The Respondent is paid a fee for leads of prospective students interested in pursuing studies in Educational Leadership. The Domain Name was chosen because of its value as a descriptive phrase and the fact that students would search against this descriptive term.
The website took several months to research with contributions from experts in the field of educational leadership.
The website contains a list of resources. The Respondent included the link to the Complainant as he believed in good faith that the students would be interested in the Complainant's materials. Respondent has indicated he would be willing to remove the link to the Complainant if the Complainant requested this. Prior to registering the Domain Name Respondent was not familiar with the Complainant's magazine, its web site or its trademark rights.
A trade mark is not entitled to protection if it has become generic. A trade mark consisting of descriptive words is entitled to less protection. "Educational Leadership" is generic and descriptive for the "process of enlisting and guiding the talents and energies of teachers, pupils and parents towards achieving common educational aims". It is used for names of university programs, in scholarly articles and by the Complainant on its own website in its generic descriptive sense.
Before receiving notice of the dispute the Respondent was using the Domain Name in connection with a bona fide offering of information regarding the field of educational leadership. Respondent is making a legitimate fair use of the Domain Name without intending to misleadingly divert customers or tarnish the Complainant's mark. This is legitimate use. The website bears a clear relationship to the descriptive phrase "educational leadership". There is no obvious imitation of the Complainant or its services. There is no use of the Complainant's logos. Complainant has not shown Internet users will be confused.
Complainant has not shown that the Respondent registered and used the Domain Name with bad faith intent to profit from The Complainant's trade marks. The use is good faith use of a descriptive term. There is no evidence that the Respondent intended to transfer the Domain Name to the Complainant for profit or to prevent the Complainant from reflecting its mark in a corresponding domain name. The Respondent has put effort into development of its own site. Respondent does not compete with the Complainant. The Complainant is a membership based organisation of educators and the Respondent caters to prospective students. There is no evidence that the Respondent registered the name to disrupt the Complainant's business. Complainant has not asserted that its business has actually been disrupted or there have been any instances of confusion. The Respondent's web site is not a magazine or connected to one.
The project giraffe domain name has never been used or monetised. Respondent had no knowledge of the Giraffe Project, an obscure charity in Kenya. Respondent has well over 100 domain names and has never been involved in a UDRP dispute other than these proceedings.
C. Additional Submissions
Additional submissions of the Complainant as far as not already covered above can be summarised as follows:
The Respondent is publishing the same content as the Complainant's on-line magazine using the same mark. The channels of trade and readers are identical, both potential and actual leaders in education. The Complainant has prior rights. The Respondent was aware of the Complainant and had actual and constructive notice of its rights.
EDUCATIONAL LEADERSHIP has acquired distinctiveness. The fact that it is associated with school policies or study programs does not diminish the longstanding trade mark rights in the phrase for magazines. Genericness is whether members of the relevant public primarily use the designation to refer to the goods in question. There is no clear category of goods for which members of the public use EDUCATIONAL LEADERSHIP. It may describe a quality found in various educational programs or materials, but it is not generic, and certainly not generic, for magazines. The Respondent has not rebutted the presumption of the validity of the Complainant's valid uncontestable trade mark rights.
Respondent's assertions that he has a legitimate interest because he is providing information about educational opportunities is contradicted by his admission that the purpose of his domain names is to create revenue by driving traffic to on-line courses and schools. Respondent changed the content of the web site after it received the Complainant's cease and desist letter of July 2012. Before that it was a very basic website and nothing suggested it was to provide information about on-line degree opportunities. There were no opportunities for interaction and no contact information on the site. All searches lead to the same limited number of schools some of which do not offer the degrees inputted into search fields. The site also contained a description of the Complainant which does not provide on-line degree opportunities. The content was designed to trade off the established goodwill of the Complainant. Content was removed after the cease and desist letter was received and content designed to create the impression of a legitimate web site was added. However the true purpose of the web site is to obtain revenue through sponsored searches.
It is false that the Respondent offered to remove content relating to the Complainant, the Respondent has not responded to the Complainant until the Response in this proceeding.
Respondent admits to being a domain name investor. The Respondent is monetising the Domain Name using the Complainant's goodwill. The site is a commercial advertising facade designed to drive traffic to affiliated for profit on-line schools and not to provide information about courses. Search results for relevant programs are mixed and sometimes lead to schools not offering the courses of interest. The link to the Complainant's web site deceives web users and manipulates search engines to associate the Respondent's web site with the Complainant's mark.
The Respondent used a privacy service and did not respond to communications from the Complainant.
Additional submissions of the Respondent as far as not already covered above can be summarised as follows:
Domain Name investing is a legitimate use of a domain name where the name is generic or descriptive and the site is consistent with the normal meaning of that term. The Complainant's magazine is not famous. There is no requirement to do trade mark searches before using a descriptive phrase.
The only significant addition to the web site after the Complainant's letter is the inclusion of a video of an elementary school principal. The content was always fulsome and thorough.
The Complainant is a publisher in the educational sector founded in 1943. Its flagship publication, published since 1943, is called Educational Leadership and covers trends and issues affecting practicing educators. The Complainant has US trade mark registrations for EDUCATIONAL LEADERSHIP for magazines and on line publications.
The Respondent acquired the Domain Name in June 2011. Respondent has used the Domain Name for a web site with content related to educator programs, products and services and a "find a school" widget. The home page lists the Complainant as a resource and links to the Complainant's web site.
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."
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.
Identical and/or Confusingly Similar
The Complainant has US registered trade marks for EDUCATIONAL LEADERSHIP. A trade mark registration with the USPTO is sufficient for the Complainant to establish rights in EDUCATIONAL LEADERSHIP as a trade mark under the Policy. (See Trip Network Inc. v Alviera FA 914943 (Nat. Arb.Forum Mar 27, 2007) determining that the complainant's trade mark registrations with the USPTO were adequate to establish its rights in the mark pursuant to the Policy).
Apart from the .com suffix which is not taken into account for the purposes of the Policy, the Domain Name is identical to the Complainant’s EDUCATIONAL LEADERSHIP registered trade mark with the possible exception of the removal of the space between the two words of the mark which would be necessary to register it as a domain name. The Panellist finds that the Domain Name is identical for the purposes of the Policy to the Complainant’s registered trade mark EDUCATIONAL LEADERSHIP and, as such, satisfies para 4(a) (i) of the Policy. (See Hannover Ruckversicherungs-AG v Ryu, FA 102724 (Nat. Arb. Forum Jan 7, 2001) finding that hannoverre.com was identical to HANNOVER RE "as spaces are impermissible in domain names and a generic top-level domain such as .com or .net is required in domain names")
This portion of the Policy only considers whether the Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to the Complainant's mark. (See Precious Puppies of Florida Inc. v kc, FA 1028247 (Nat Arb. Forum Aug 10, 2007) examining Respondent's generic terms arguments only under Policy 4(a)(ii) and 4(a) (iii) and not under Policy 4 (a) (i); see also Vitello v Castello, FA 159460 (Nat. Arb. Forum July 1, 2003 finding that the respondent's disputed domain name was identical to complainant's mark under Policy 4(a) (i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy 4(a)(ii) and 4(a)(iii).
Rights or Legitimate Interests
The Complainant has indicated that it has not endorsed the Respondent in any way and the Respondent’s business has no connection with the Complainant. The Respondent does not appear to have been commonly known by a name equivalent to the Domain Name prior to its registration. Respondent is using the Domain Name to drive traffic to <collegedegrees.com> advertising affiliate network which is not connected with the Complainant and receives a fee for each referral. The Respondent claims that he is merely using a generic or descriptive term and had never heard of the Complainant's flagship magazine even though it has been published since 1943 and he claims to be a specialist in the higher education field. He also listed the Complainant as a resource on his web site demonstrating that he was aware of the Complainant and the resources it offers. On the balance of probabilities, taking into account the evidence the Panel finds it hard to believe that the Respondent was not aware of the secondary meaning of the term EDUCATIONAL LEADERSHIP. Use of a domain name which is identical to a longstanding trade mark of a complainant with secondary meaning in the same field of activity in question when the user is "focusing" on that field of activity as a specialism is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techs., LLC v. Timewinds Group Inc., FA 949608 (Nat. Arb. Forum May 18, 2007); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services). As such the Respondent does not appear to have any rights or legitimate interest in the Domain Name. The Complainant has satisfied para 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.”
The Domain Name has been used to promote third party services not connected with the Complainant for the Respondent's commercial gain. The site features EDUCATIONAL LEADERSHIP the Complainant's mark prominently at the top of the site without further explanation. The Panel's view on the evidence is that the site is misleading and the content increases the likelihood of confusion (from the use of an identical domain name to the Complainant's longstanding trade mark with secondary meaning in relation to services in the same field) that the site is associated with the Complainant. The Panel has found as a matter of fact that due to the listing of the Complainant on the Respondent's web site the Respondent was aware of the Complainant and its resources. As a specialist in the field on the balance of probabilities it is likely that the Respondent was aware of the Complainant's EDUCATIONAL LEADERSHIP mark and the confusion that would be caused by use of the Domain Name in the manner in which it has been used and that it would drive traffic which would increase profit. In the view of the Panel this conduct constitutes bad faith under the Policy. 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 My Space, Inc v. Myspace Bot, FA 672161(Nat. Arb. Forum May 19, 2006)(holding that respondent registered and used the myspacebot.com domain name in bad faith by diverting Internet users seeking the complainant's web site to its own website for commercial gain because the respondent likely profited from the diversion scheme). As such it appears that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or the products or services on its web site.
As such the Complainant has proven that the Respondent has registered and used the Domain Name in bad faith under Paragraphs 4(b)(iv) of the Policy.
It is unnecessary, therefore for the Panel to consider the issues raised regarding the projectgiraffe.com name or the allegation that the Respondent's activities disrupt the Complainant's business as a competitor.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <educationalleadership.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December, 20, 2012
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