Excelsior College v. Super Group, LLC / Jason Morecraft
Claim Number: FA1308001513832
Complainant is Excelsior College (“Complainant”), represented by David P. Miranda of HESLIN ROTHENBERG FARLEY & MESITI P.C., New York, USA. Respondent is Super Group, LLC / Jason Morecraft (“Respondent”), represented by Jason H. Coffman, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cpneworkshop.com>, registered with eNom, Inc.
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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2013; the National Arbitration Forum received payment on August 8, 2013.
On August 9, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <cpneworkshop.com> domain name is registered with eNom, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@cpneworkshop.com. Also on August 20, 2013, 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 September 19, 2013.
A timely Additional Submission was received from Complainant on September 24, 2013; this submission has been considered.
On September 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers 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
Policy ¶ 4(a) (i)
Policy ¶ 4(a) (ii)
Policy ¶ 4(a) (iii)
B. Respondent
Policy ¶ 4(a) (i)
Policy ¶ 4(a) (ii)
Policy ¶ 4(a) (iii)
Laches
Note: Respondent registered the <cpneworkshop.com> domain name on April 21, 2007.
C. Complainant’s Additional Submission
The Panel finds that the Complainant’s registered mark is identical to or confusingly similar to the domain name registered by Respondent. Addition of the word workshop to CPNE (written in lower case as cpne) is not sufficient to make the domain name “different” enough; further, the combination of the mark and the word is not the combination of one rather unspecific work with another; CPNE, even when written as “cpne,” is still a registered mark.
Certainly, Respondent has no rights in the name; it is not known by the name and does not have a license to use the name. Respondent’s unauthorized use of the name to offer services which clearly compete with those offered by Complainant cannot be said to generate rights in the name even under Policy ¶4 (c)(i).
As to “bad faith,” ¶4 (a) (iii), the question is closer. Here, Respondent is offering a bona fide service for the benefit of CPNE test takers. Further, since the domain name was registered only months after issuance of the mark, the registration of the domain name is not as “suspicious” as it would be otherwise.
However, Respondent knew of the use of the “CPNE” name by Complainant for its test/examination. It knew that Complainant had a proprietary interest in “CPNE.” Therefore, its use was neither incidental nor accidental but integral to its business endeavors.
The tipping point, for the Panel, is the large sum requested for surrender of the domain name—$42,000. While Respondent stresses that this was a “settlement offer” in a long running dispute, the amount is large, and is evidence of bad faith. (Admittedly, if the sum were quoted in the context of settlement negotiations over pending litigation, the letter would not be admissible.)
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.
Complainant provides privatized education services under its CPNE mark, namely to provide a standardized test called the Clinical Performance in Nursing Examination. Complainant has registered the CPNE mark with the USPTO (Reg. No. 3,210,451 filed August 26, 2005; registered on February 20, 2007). See Complainant’s Exhibit B. The Panel may agree that Complainant’s USPTO registration satisfies Policy ¶ 4(a) (i)’s requirement of rights in a mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant next argues that Respondent registered the <cpneworkshop.com> domain name, which takes the entire CPNE mark, adds the term “workshop” and the gTLD “.com.” Complainant argues that these additions do not sufficiently distinguish the domain name from the CPNE mark. Adding a gTLD is not relevant to a Policy analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Previous panels have found that generic terms, which provide little distinctive value to a domain name, rarely defeat the confusing similarity of a domain name. See, e.g., Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). The Panel finds that the <cpneworkshop.com> domain name is confusingly similar to the CPNE mark under Policy ¶ 4(a) (i).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii). At that point, the burden shifted to Respondent to show that 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 has shown that Respondent is not commonly known by the <cpneworkshop.com> domain name, but as referred to the WHOIS information is called “Super Group/Jason Morecraft.” Complainant claims that it has not authorized, licensed, or entered into an affiliation so as to allow Respondent to use the CPNE mark in domain names. Respondent has stated, in its own Response, that it is operating its own independent business and is not known by the <cpneworkshop.com> domain name beyond its use of the domain name to promote its services, Respondent is not known by the <cpneworkshop.com> domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant has also shown that Respondent uses the <cpneworkshop.com> domain name to shuttle Internet users to Respondent’s competing website wherein Respondent offers online and live in-person workshops that help consumers pass Complainant’s CPNE examination. Complainant states that in offering its services, Respondent uses the CPNE mark on its website pages without Complainant’s permission. The <cpneworkshop.com> domain name resolves to a website that includes, in relevant part, (1) use of the CPNE trademark to promote Respondent’s study materials for the CPNE examination, namely by noting that its materials are specifically tailored to the CPNE exam; (2) a disclaimer noting that Respondent is not associated “with any college;” (3) testimonials from Respondent’s customers; (4) hyperlinks to enroll into Respondent’s study aid program; and (5) statements explaining and promoting Respondent’s workshop and study book materials. See Complainant’s Ex. B; accord Respondent’s Ex. F. Complainant offers a series of workshops and conferences, and the Panel notices that the conference purports to prepare the Internet user for the CPNE exam, and the description of the workshop services appear to require the student to have already taken “Nursing Theory exams.” See Complainant’s Ex. C. There is nothing bona fide about the use of a confusingly similar domain name to offer services that compete directly with the complainant’s business. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel concludes that Respondent’s use of the <cpneworkshop.com> domain name constitutes a commercial offering that cannot be a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use and that further, the competitive nature of the services provided do not make Respondent’s offering of services bona fide within the meaning of Policy ¶ 4(c)(i).
Respondent requested $45,000 to transfer the domain name to Complainant. The only evidence documenting such a request is Respondent’s evidence of a letter exchanged between the parties’ counsel, asserting that at that time Respondent was willing to sell the domain name for $45,000. See Respondent’s Exhibits D and E. This offer of sale suggests bad faith to the Panel, as noted above. See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”).
Complainant has shown that Respondent is disrupting Complainant’s business under the CPNE mark by offering competing services through the <cpneworkshop.com> domain name. Both parties are offering preparation services to individuals who plan to take the CPNE. See Respondent’s Ex. F; Complainant’s Exs. B – C. In Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), the panel found that the use of a disputed domain name to host a competing website constituted Policy ¶ 4(b)(iii) bad faith commercial disruption. Respondent’s business plan clearly was to compete with Complainant’s business using the CPNE mark in the domain name at issue and, therefore, acted in bad faith. See Policy ¶ 4(b) (iii).
Complainant next has shown that Respondent generates commercial gain by selling workshop services to Internet users who are likely to believe that Complainant is the source or origin of the services promoted through the <cpneworkshop.com> domain name. The content of the <cpneworkshop.com> domain name in Complainant’s Exhibit B and Respondent’s Exhibit F show that the content of the disputed domain name’s resolving website promote Respondent’s workshops, which compete with those of Complainant. It even appears that the Panel could find that Respondent sought to generate a likelihood of confusion through its registration or use of the domain name in order to make a commercial profit, as prohibited by Policy ¶ 4(b) (iv). See, e.g., Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Respondent was certainly well aware of Complainant and the Complainant’s use of CPNE when Respondent registered the <cpneworkshop.com> domain name. Respondent relies upon, and explicitly references, the “CPNE” in promoting its services to test takers. Respondent agrees that it knew of Complainant’s rights in the mark—a “bad faith” in violation of Policy ¶ 4(a) (iii). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cpneworkshop.com> domain name be TRANSFERRED from Respondent to Complainant.
R. GLEN AYERS
R. Glen Ayers, Panelist
Dated: September 26, 2013
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