High Scope Educational Research Foundation v. die gaosheng / zhengzhou xieshou education consulting
Claim Number: FA1301001481688
Complainant is High Scope Educational Research Foundation (“Complainant”), represented by Elizabeth Brock of Harness, Dickey & Pierce PLC, Michigan, USA. Respondent is die gaosheng / zhengzhou xieshou education consulting (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <highscopechina.com>, registered with HiChina Zhicheng Technology Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2013; the National Arbitration Forum received payment on January 23, 2013. The Complaint was submitted in both Chinese and English.
On January 23, 2013, HiChina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <highscopechina.com> domain name is registered with HiChina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Ltd. has verified that Respondent is bound by the HiChina Zhicheng Technology Ltd. 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 31, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 20, 2013 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@highscopechina.com. Also on January 31, 2013, the Chinese language 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <highscopechina.com> domain name, the domain name at issue, is confusingly similar to Complainant’s HIGH SCOPE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, High Scope Educational Research Foundation, is a nonprofit organization focused on research, development, training, and publishing in the field of early childhood education. Complainant operates international institutes and education centers in China, Canada, Chile, Indonesia, South Korea, Mexico, the Netherlands, Portugal, South Africa, and the United Kingdom. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HIGH SCOPE mark (e.g., Reg. No. 1,461,879, registered October 20, 1987). Complainant also owns trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) for the HIGH SCOPE mark (Reg. No. 8,024,566, registered March 7, 2011). The “highscope” portion of Respondent’s offending domain name, <highscopechina.com>, is identical to Complainant’s HIGH SCOPE mark. Moreover, the addition of the geographic indicator “China” and the generic top-level domain (“gTLD”) “.com” does not negate the finding that the domain name is identical to Complainant’s HIGH SCOPE mark. Respondent’s current website, which is blocked by anti-virus software as an “attack page,” attempts to distribute malware or other malicious software to Internet users. The offending domain name originally resolved to a website in which Respondent attempted to pass itself off as Complainant and purported to offer the same child development and educational goods and services as Complainant. Respondent attempted to pass itself off as Complainant by using the HIGH SCOPE marks in the offending domain name and identifying itself as Complainant in English and Chinese on the associated website. Respondent registered the offending domain name with constructive and actual knowledge of Complainant’s rights in the HIGH SCOPE marks. Respondent registered the <highscopechina.com> domain name on November 30, 2011.
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.
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.”).
Complainant, High Scope Educational Research Foundation, is a nonprofit organization focused on research, development, training, and publishing in the field of early childhood education. Complainant operates international institutes and education centers in China, Canada, Chile, Indonesia, South Korea, Mexico, the Netherlands, Portugal, South Africa, and the United Kingdom. Complainant is the owner of trademark registrations with the USPTO for the HIGH SCOPE mark (e.g., Reg. No. 1,461,879, registered October 20, 1987). Complainant also owns trademark registrations with China’s SAIC for the HIGH SCOPE mark (Reg. No. 8,024,566, registered March 7, 2011). Complainant’s registration of the HIGH SCOPE mark with the USPTO and SAIC sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”). Consequently, Complainant has demonstrated its rights in the HIGH SCOPE mark under Policy ¶ 4(a)(i).
The addition of the geographic indicator “China” does not negate the finding that the domain name is identical to Complainant’s HIGH SCOPE mark. The addition of a geographic term does not eliminate confusing similarity under Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Additionally, the Panel notes that Respondent removes the space between “HIGH” and “SCOPE” in Complainant’s mark. Respondent adds the gTLD “.com” to the disputed domain name. In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel held that the elimination of spaces between terms and the addition of a gTLD did not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Thus, Respondent’s <highscopechina.com> domain name is confusingly similar to Complainant’s HIGH SCOPE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 interests 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 contends that Respondent has never traded under and is not known by the offending domain name. Respondent registered the domain name under “die gaosheng / zhengzhou xieshou education consulting.” Respondent has no connection or affiliation with Complainant and Complainant has not granted Respondent a license or consent, express or implied, to use the HIGH SCOPE marks in a domain name or in any other manner. There is no evidence in the record or WHOIS information that Respondent is commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s current website, which is blocked by anti-virus software as an “attack page,” attempts to distribute malware or other malicious software to Internet users. Respondent’s <highscopechina.com> domain name resolves to a web page that states “Reported Attack Page!” and “URL Blocked.” See Complainant’s Exhibit 16. In Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009), the panel determined that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Accordingly, the Panel finds that Respondent’s use of the domain name to distribute malware is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The offending domain name originally resolved to a website in which Respondent attempted to pass itself off as Complainant. The website appeared to offer the same child development and educational goods and services as Complainant. After Complainant contacted Respondent, Respondent modified the website located at the disputed domain name to remove the HIGH SCOPE marks. Accordingly, Respondent attempted to pass itself off as Complainant and the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Although Complainant does not argue any of the typical Policy ¶ 4(b) factors, the Panel may look beyond ¶ 4(b) to the totality of the circumstances when analyzing bad faith. The Panel finds that the examples of bad faith in Paragraph 4(b) are intended to be illustrative, not exclusive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Respondent previously attempted to pass itself off as Complainant by using the HIGH SCOPE marks in the offending domain name and identifying itself as Complainant in English and Chinese on the associated website. Respondent previously identified itself as “HIGHSSCOPE CHILDREN’S MUSIC DEVELOPMENT CENTER” on the banner at the top of the original home page. Additionally, Respondent’s original website purported to offer the same child development and educational goods and services as Complainant. Since Respondent attempted to pass itself off as Complainant, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Respondent registered the offending domain name with constructive and actual knowledge of Complainant’s rights in the HIGH SCOPE marks. Respondent had constructive knowledge based upon Complainant’s registrations in the United States, China, and throughout the world for the HIGH SCOPE mark. Respondent’s actual knowledge is demonstrated by its use of the HIGH SCOPE marks for the same goods and services. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to Respondent’s use of the domain name for the same goods and services, the Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
Respondent’s current website, which is blocked by anti-virus software as an “attack page,” attempts to distribute malware or other malicious software to Internet users. Respondent’s <highscopechina.com> domain name resolves to a web page that states “Reported Attack Page!” and “URL Blocked”. Respondent’s use of the disputed domain name to attempt to place malicious software on Internet users’ computers is further evidence of bad faith under Policy ¶ 4(a)(iii). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <highscopechina.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 4, 2013
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