EDUCATIONDYNAMICS LLC, a division of Halyard
Educational Partners, LLC a
Claim Number: FA0903001250509
PARTIES
Complainant is EDUCATIONDYNAMICS LLC, a division of
Halyard Educational Partners, LLC a Delaware limited liability company d/b/a
GradSchools.com (“Complainant”),
represented by Lauren A. Brill, of White and Williams LLP, Pennsylvania, USA. Respondent is Castro & Baker, LLP and
CollegeCorner, Inc. (“Respondent”), represented by Steven Rinehart,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <graduateschools.com>,
registered with Network Solutions, Inc., and <graduateschool.com>, registered
with Godaddy.com, Inc.
PANEL
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.
Bruce E. O’Connor as Panelist.
PROCEDURAL HISTORY
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 3, 2009; the National Arbitration Forum received a hard
copy of the Complaint on March 5, 2009.
On March 4, 2009, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <graduateschools.com>
domain name is registered with Network Solutions, Inc. and that the
Respondent Castro is the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the Policy.
On March 5, 2009, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <graduateschool.com>
domain name is registered with Godaddy.com, Inc. and that the Respondent
College Corner is the current registrant of the name. Godaddy.com, Inc. has verified that
Respondent is bound by the Godaddy.com, Inc. registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the Policy.
On March 11, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 31, 2009 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@graduateschools.com and
postmaster@graduateschool.com by e-mail.
On March 31, 2009, the National Arbitration Forum granted Respondent’s
March 27, 2009 Request for Extension of Time to Respond to Amended Complaint
with Complainant’s Consent, setting a deadline of April 6, 2009 by which
Respondent could file a Response to the Complaint.
A timely Response on behalf of Respondent Castro and Respondent College
Corner was received and determined to be complete on April 6, 2009.
On April 10, 2009, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O’Connor as
Panelist.
On April 14, 2009, the National Arbitration Forum received a letter
from Respondent Castro dated April 9, 2009.
On April 20, 2009, the Panel issued an Order to Respondent, requiring
the production of certain documents to the National Arbitration Forum and to
Complainant. Respondent complied with
this Order on April 22, 2009.
On April 22, 2009, the National Arbitration Forum received a letter
from Complainant concerning the April 9, 2009 letter from Respondent Castro.
On April 23, 2009, the National Arbitration Forum received a second
letter from Respondent Castro.
RELIEF SOUGHT
Complainant requests that the domain names at issue be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Additional Information Regarding Respondent
Complainant believes both domain names in
dispute are actually owned by a
company
called GraduateSchool.com which is wholly owned by Shane Gilbert
("Gilbert's company"), and that the Registrants listed for those
domain names are holding the domain names for Gilbert's company. Both domain
names take Internet users to a website operated by Gilbert's company.
Complainant was involved in litigation with Gilbert's company related to the
website. In the lawsuit, Gilbert's company defended the case and Gilbert
admitted, under oath, that Gilbert's company owned both domain names.
Gilbert's company is a
Shane Gilbert is the registered agent for
service of process for GraduateSchool.com.
The Complainant has made numerous attempts
to contact Shane Gilbert of
GraduateSchool.com. Mail sent to the
registered address has been returned or unanswered. The Complainant hired a private investigator
who concluded that the following home address corresponds to Shane Gilbert,
Agent for GraduateSchool.com,
The mailing address listed in WHOIS for
CollegeCorner, Inc. is the same bad
Beach address as that given for
GradSchool.com, Inc. in the California Department of State registry and as that
provided as a contact on the GraduateSchool.com website through January of
2008.
The Trademark
Complainant began using the trademark
GradSchools.com® in commerce in 1995 and filed for trademark protection in
1999. The registration number is 2,566,409. The Trademark Registration Records for the
GradSchools.com® mark list the date of the registration as May 7, 2002.
Complainant is the exclusive owner of the "GradSchools.com"
trademark. Complainant began using the
trademark GradSchools.com in commerce in 1995, while the company was called
Educational Directories Unlimited. The company has used the mark in commerce
since then in connection with its business of providing online marketing and
advertising services to the higher education marketplace.
Complainant is in the business of
providing online marketing and
advertising
services to the non-profit and for-profit higher education marketplace. In
connection with such services, it operates a series of online Internet-based
directories through which higher education institutions market and promote
their programs and prospective students research
information regarding such programs. One of Complainant’s online directories,
"GradSchools.com," which is accessible at the URL <gradschools.com>,
focuses on the post graduate higher education marketplace.
Complainant maintains advertising services
contracts with over 1500 educational institutions for listings on the
GradSchools.com online directory ("customers"). Complainant invoices
its customers a minimum of $1,000 per year for a listing on the GradSchools.com
online directory.
The domain names in dispute are associated
with the same website, GraduateSchools.com, found at URL <graduateschools.com> and URL <graduateschool.com>. This website is operated by Shane
Gilbert, through his company GraduateSchool.com ("Gilbert's
company"). Through this website, Gilbert's company purports to provide
services which are similar to those offered by Complainant through
Complainant's GradSchools.com website.
The domain names in dispute are confusingly similar to a domain
name to
which the defendant has rights
Gilbert's company's use of the website
GraduateSchools.com in connection with its Internet-based directory of higher
education institutions began in 2003, seven years after Complainant began using
the trademark in commerce and one year after Complainant’s trademark was
registered. Respondent's use of the two domain names at issue constitute an
intentional attempt to attract, for commercial gain, internet users to Respondent's
website by creating a likelihood of confusion with Complainant’s mark as to the
course, sponsorship, affiliation, or endorsement of Respondent's website and
services.
Gilbert's company designed its website to
be similar to GradSchools.com in order to pass its website off as
Complainant's, EducationDynamics. Both the physical design, each URL directing
users to the website, the format, and the wording contained on the website are
intentionally similar.
Educational institutions were confused by
Gilbert's website. In the later part of 2006,
Gilbert's company began the practice of
charging graduate schools eight hundred fifty dollars ($850) for listings on
respondent's website. Gilbert's company issued bogus "renewal"
invoices to numerous customers of Complainant EducationDynamics for
"renewal" on Gilbert's company's website to listings that such
customers never agreed to purchase in the first place.
Gilbert's company's invoices purported to
provide an "Annual Renewal" of services that
were not
provided and/or not agreed to be provided to the customers. Gilbert's company
even mailed "Second Notice" invoices and called Complainant’s
customers to demand payment. Gilbert's company engaged in such activities for
the purpose of improperly and wrongfully profiting from the listing services
that Complainant’s customers contracted for with Complainant.
Gilbert's company's activities created
actual confusion with Complainant's
customers as
to the origin of the invoices and the differences between Complainant and
Respondent's websites. Confused customers
complained to Complainant that the
customers were
being invoiced for listing services, which they had already purchased from
Complainant. Some confused customers paid the invoices from Respondent mistakenly
believing that such invoices were sent by Complainant for listings on Complainant’s
GradSchools.com® website. Gilbert's company intentionally and wrongfully
exploited the similarity of the name of its online directory,
GraduateSchools.com with Complainant’s GradSchools.com ® directory. Complainant
received numerous messages from confused customers.
The domain names in dispute should be considered as being used in
bad faith
Gilbert's company is using the domain
names (sic) www.GraduateSchools.com
and
www.GraduateSchool.com
in bad faith. Gilbert's company's intention to mislead
is evidenced by the similarities between the domain names of Gilbert's
company's and Complainant’s domain names, the similar content of Gilbert's
company's website and Complainant’s website, and the fact that Gilbert's
company forced Complainant’s customers into believing that Complainant and
Gilbert's company are one and the same.
Gilbert's company engaged in such
activities for the purpose of wrongfully exploiting the similarity of the name
of its online directory, GraduateSchools.com, to
Complainant's
GradSchools.com directory.
Respondent should be considered as having no rights or legitimate
interests with
respect to the domain names that are the subject
of the complaint, for the following
reasons
Complainant has been using its federally
trademarked domain name
GradSchools.com
since 1995. As a result of the duration and extent of use of the
"GradSchools.com" mark by
Complainant, the duration and extent of the advertising and publicity of the
"GradSchools.com " mark by Complainant, and
the geographical extent of the distribution of the "GradSchools.com"
mark, the "GradSchools.com " mark achieved an extensive degree of
distinctiveness and is a famous trademark.
Gilbert's company took the domain names <graduateschools.com> and
<graduateschool.com> in approximately 2002,
with no federal protection, in order to exploit its similarities to Complainant’s
domain name GradSchools.com. Gilbert's company, by using those domain names
with no federal registration, attempted to attract Internet users to its
website by creating confusion with Complainant’s mark, thereby creating
confusion as to the source of services.
Gilbert's company, through the use of
domain names so similar to Complainant’s,
created
actual confusion among Complainant’s customers regarding the origin of invoices
and payment demands.
Gilbert's company's use of the disputed
domain names caused damages to
Complainant and to customers of
Complainant who paid or will pay the invoices from Gilbert's company to
Gilbert's company, rather than to Complainant, mistakenly believing such
invoices were sent by Complainant for listings on Complainant’s GradSchools.com
website.
Gilbert's company was found by a federal
court to be in contempt of an agreement to stop using its website to confuse
Complainant's customers and has been ordered to pay damages to Respondent in
connection with same. Despite the restrictions placed on Gilbert's company,
Gilbert's company still has its website operating to confuse Complainant's
customers.
It is clear that Gilbert's company is
hiding from Complainant. Complainant has been
unable to
find Gilbert's company at the address listed for it in California Department of
State's directory of corporations or at the addresses listed in the WHOIS
database for the domain names at issue. Complainant even hired a private
investigator in an attempt to collect the judgment awarded by the court and to
inform Gilbert's company of the restrictions placed on it by the court.
On or about January 25, 2007, Complainant
filed a Complaint in the United States District Court, Eastern District of
Pennsylvania, docket number 07-00331. In the
Complaint, Complainant asserted six causes of action against Gilbert's company,
GraduateSchool.com, including Trademark Infringement, Unfair Competition, Intentional Interference with Existing Contractual
Relations, Intentional Interference with Prospective Economic Advantage,
Federal Trademark Dilution, and Unfair Trade Practices.
The parties signed a settlement agreement
on or about September 5, 2007 in which
Gilbert's company, GraduateSchool.com,
agreed not to send "Annual Renewal" invoices to potential customers
who had made no previous purchases from Respondent
GraduateSchool.com. The settlement
agreement also required Gilbert's company to send a joint letter, at its own
expense, to the approximately 2000 educational institutions or graduate
programs to which the bogus "Annual Renewal" invoices were sent.
Gilbert's company, GraduateSchool.com,
subsequently violated the settlement agreement by failing to send the required
joint letter to the approximately 2000 graduate programs, which received the
"Annual Renewal" invoices. The Complainant GradSchools.com filed a
Motion to Enter Preliminary Injunction, which GraduateSchool.com never
responded to, despite numerous attempts made by Complainant and the court to
serve GraduateSchool.com with the Motion. On or about September 10, 2008, the
court found Respondent GraduateSchool.com in contempt of the settlement
agreement. The court enjoined Graduateschool.com from violating the settlement
agreement and awarded $9,225.00 in attorney's fees to Complainant.
Complainant has made many attempts to find
or contact Gilbert's company,
GraduateSchool.com, but has been unable to
do so as Gilbert is obviously evading all communication attempts made by
Complainant. Those attempts include calling the telephone number listed as the
contact on Gilbert's website, sending letters to the address on Gilbert's
company's website, conducting and pursuing searches for Shane Gilbert through
databases available on the internet and on Westlaw, and even hiring a private
investigator to determine Shane Gilbert's whereabouts. Despite Shane Gilbert's
failure to acknowledge Complainant correspondence and its attempts to contact
him, the GraduateSchool.com website is still up and running and still claims to
be "the most comprehensive graduate school search engine available".
The Complainant requests that the Panel
issue a decision that the domain names' registrations be transferred to
Complainant.
B. Respondent
Relevant Procedural Background
Complainant has a history of abusing legal and arbitrative proceedings in attempts to further the abusive and anti-competitive goals of its officers. The Panel should be aware that Complainant in this action has previously filed and lost an almost identical domain name dispute against another of Complainant’s competitors, Reflex Publishing d/b/a/ GradSchool.com, in the case of Educational Directories Unlimited v. Reflex Publishing, Inc., FA 142378 (Nat. Arb. Forum Mar. 26, 2003) (declining transfer of the domain <gradschool.com>). Complainant used the same law firm in that dispute over the domain name <gradschool.com> that it is using in this dispute over the domains <graduateschools.com> and <graduateschool.com> (the law firm of White and Williams, LLP), whose counsel is aware of the earlier decision. Allegations were made by the respondent in that case that Complainant was intentionally misrepresenting facts to the panel, which allegations Respondent makes again in this Response.
Educational Directories Unlimited
was purchased by Halyard Capital in 2006.
Educational Directories Unlimited’s trademarks, officers, and intellectual
property were absorbed in the course of this acquisition by the Complainant in
the current controversy, EducationDynamics, LLC. Both Complainant and Respondent to this
action distribute information on
Complainant not only ignored the conclusions of the panel in the Educational Directories Unlimited decision in bringing this action, but also the admonition of the U.S. District Court for the Eastern District of Pennsylvania in a 2007 hearing.
Complainant has previously attempted unsuccessfully to litigate this dispute in U.S. District Court for the Eastern District of Pennsylvania after a failed attempt by Complainant to purchase the Disputed Domains from the Respondent.
Around November 1, 2006, a Mr. Timothy Brown contacted Respondent, identifying himself as an agent of Halyard Capital (Complainant’s parent company), informing Respondent that Mr. Brown was initiating contact for the purpose of trying to acquire Respondent's uniform resource locator (URL) (sic) <graduateschools.com>.
Following its failed attempts to purchase Respondent’s IP, Complainant filed a trademark infringement action under the Lanham Act in the U.S. District Court for the Eastern District of Pennsylvania before the Honorable Thomas Green, Case No. 07-00331, and forced Respondent to travel across the continent to fight it. Complainant then sent an offer to settle the case to Respondent if Respondent would sell the Disputed Domains to Complainant for $75,000. Later this federal case was transferred to the Honorable Judge Juan R. Sanchez.
The judge in this action, Judge Green, warned the Complainant in open court during oral argument on a motion of Complainant for a preliminary injunction that Complainant’s claims were likely baseless, that he was inclined to deny Complainant’s motion for a preliminary injunction, and that he believed Complainant would lose its claims on the merits, even going to so far as to imply by analogy that Complainant’s claims were abusive, telling Complainant on the record, “you can’t stop someone from selling a cup of coffee next to you on the street.”
It was after this admonition/warning of the U.S. District Court, that Complainant’s counsel asked for a moment to confer with his client. Recognizing Judge Green was about to deny Complainant’s motion, and would soon rule on the pleadings against Complainant, Complainant agreed to dismiss the case with prejudice, asking for only token consideration from Respondent. Complainant requested only that: Respondent send letters to its some 2,000 clients informing them that Respondent was not affiliated with Complainant, and to refund any of Complainant’s clients who had paid money to Respondent by mistake, to which Respondent agreed.
After reaching this agreement, Complainant’s case in federal court was dismissed with prejudice. The Docket shows a settlement was reached between the parties on the same day that oral argument took place, and that Complainant’s claims against Respondent were dismissed with prejudice. In the written settlement between Complainant and Respondent, Complainant released all claims against Respondent.
Complainant Released Respondent and Waived its Rights to Bring this
Action in the Settlement Agreement
The Settlement Agreement reached by the parties, and referenced in the Complaint, renders this dispute moot. Respondent entered the Settlement Agreement to prevent further actions by Complainant of this kind.
In arbitrating this action, Complainant presupposes that the Settlement Agreement it executed with Respondent is non-existent or unenforceable. Complainant is essentially asking the Panel to first find as a matter of law that the Settlement Agreement is not binding, then declare what the U.S. District Court and the NAF in prior actions would not, which is that Respondent is infringing Complainant’s trademark and violating the UDRP, then transfer the Disputed Domains to Complainant. The Panel should find that Complainant’s claim for contract unenforceability is not cognizable under the UDRP, in addition to ruling that the Complainant has not carried any portion of its tripartite, cumulative burden under the UDRP.
Complainant submits to the Panel
that the post-dismissal injunction Complainant received in this action ordering
Respondent to perform in accordance with the Settlement Agreement somehow
supports Complainant’s claims for trademark rights, confusing similarity, lack
of legitimate rights on the part of Respondent in the Disputed Domains, and
Respondent bad faith registration and use of the Disputed Domains. The injunction is irrelevant for these
purposes, and shows only that “Respondent is enjoined from violating the
September 5, 2007 Settlement Agreement.”
The injunction was granted by default because Respondent did not respond
to Complainant’s motion for this injunction.
Respondent submits that Complainant procured this injunction through
fraud, by never serving Respondent with the motion via
Respondent also submits that the injunction granted stands for the opposite proposition that Complainant asserts. It stands for the proposition that the Settlement Agreement is enforceable and that the U.S. District Court expects the parties to it to abide by it – which obligation Complainant ignores in bringing this action.
Respondent’s Background
In 2003, Shane Gilbert, an office and principal owner of CollegeCorner, Inc. was interested in starting a commercial Internet enterprise that would supply informational services about various graduate schools to the public, and to that end registered the domain <graduateschool.com> by purchasing it from <buydomains.com>. The Respondent, CollegeCorner, Inc. purchased the assets from the entity formerly known as GraduateSchool.com, Inc.
Respondent launched a website at <graduateschool.com> and began offering free informational services on graduate schools through the website, with the intention that after these informational services became popular, Respondent would start charging for them, which Respondent is doing now for clients who wish to renew their listings with Respondent.
In 2003, Respondent’s services were unique from Complainant’s services and other competitors. Respondent allowed graduate schools to update promotional and statistical information on Respondent’s website instantly, rather than having to submit it for review by administrators. Respondent developed a unique, real-time database which utilized the same format that the U.S. Government’s CIP (classification of instructional programs) database, to facilitate more convenient uploads by graduate schools directly to Respondent’s website. Additionally, Respondent refused to participate in Complainant’s affiliate program.
Several months later, compelled by a desire to expand the reach of its business, Respondent entered into a domain name purchase agreement with the former registrant of the domain <graduateschools.com> (hereinafter the “Purchase Agreement”), whereby Respondent agreed to pay $100,000 for <graduateschools.com> in installments over a number of years.
Respondent has exhibited its services at tradeshows across the country for years beginning in 2003 at NAGAP (National Association of Graduate Admission Professionals) and CGS (Council of Graduate Schools), as well as other national and regional shows. In many of these tradeshows Respondent ran booths alongside Complainant and other competitors. Complainant has waited more than six years to bring this domain name dispute against Respondent.
Pursuant to the Purchase
Agreement, the law offices of Castro & Baker, LLP in
It is not enough for Complainant to establish that it has a present right to a trademark. Complainant must also prove that Respondent has no rights or legitimate interest in the Disputed Domains, which Complainant has not, and cannot, prove. The Disputed Domains were registered in good faith, and are being used in good faith because Respondent is making a legitimate, bona fide commercial use of the domain names.
Furthermore, Respondent did not register the Disputed Domains primarily for the purpose of “selling, renting or other transferring” the Disputed Domains, nor does the Respondent have “a pattern of engaging” in preventing “the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,” nor has Respondent intended to create a likelihood of confusion or disrupt Complainant’s business. In short, Respondent is a good-faith registrant and user of the Disputed Domains.
Respondent submits that, in large part, Complainant has wholly ignored its three-pronged burden of proof under the UDRP. The Complaint is replete with unsubstantiated allegations and intentional misrepresentations, such as the assertion that Respondent “designed its website to be similar to GradSchools.com in order to pass its website off as Complainant’s”, and allegations that Respondent’s invoices “bogus,” simply because they exist and were sent to customers who had already registered and been given a year of free listings.
In approximately 2006, Respondent stopped offering free listing services to its customers on the Disputed Domains who had already registered, and began charging its customers $850 if they wished to renew their graduate program listings with Respondent. Respondent did write or say anything in its correspondence with its 2,000 customers to associate itself with Complainant, and informed all customers who inquired that Respondent was not associated with Complainant. In fact, pursuant to the Settlement Agreement, Respondent took the affirmative step of sending each and every customer a letter informing them of this non-association. All of Respondent’s customers were informed that they would have to begin paying annually for listing services on Respondent’s website is they wished to continue with such services, and were sent an invoice. Many of Respondent’s and Complainant’s customers are identical organizations, and Respondent could just as easily claim that Complainant is impersonating Respondent with Complainant’s invoices – a possibility that seems more likely in light of Complainant’s registration of misspellings of Respondent’s Disputed Domains. Respondent submits that the examples of confusion shown by Complainant are examples of confusion, which the Complainant, and not the Respondent, created with “warning” emails to Respondent’s 2,000 customers informing them they should be confused, and asking them to confirm the confusion. Complainant is intentionally interfering with Respondent’s economic relations in so doing, in addition to Complainant’s other abusive behaviors.
Even a cursory review of the Disputed Domains and the website resolved to by Complainant’s <gradschools.com> domain shows no similarity between them. The websites have different layouts, different colors, different menus, different advertisers, and different functions. Neither Respondent’s website nor its principal identifier show any attempt to imitate Complainant.
Complainant does no more than allege that “the format and the wording contained on the websites are intentionally similar” without providing any examples.
Moreover, Complainant has engaged in other deceptive practices and inequitable conduct. Specifically, in 2005, Complainant registered several domain names, which are misspellings of Respondent's domain name (the “Misspelled Domains”):
(a) <gradauteschools.com>
(b) <gradauteschool.com>
(c) <graduateschols.com>
(d) <graduateschol.com>
These misspellings of Respondent's domain name, redirect users to Complainant’s site, rather than to Respondent's site.
Additionally, Complainant misled the U.S. Patent and Trademark Office (USPTO) in procuring its trademark. In reviewing Complainant’s trademark application for GRADSCHOOLS.COM, the USPTO trademark examiner reviewing Complainant’s application concluded that the mark was descriptive, and initially refused registration. The October 25, 1999 Office Action stated (emphasis added), “The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the subject of applicant’s services . . . .”
To overcome this substantial barrier to registration, Complainant amended its trademark application in April 2000 under Section 2(f) of the Lanham Trademark Act, alleging that gradschools.com had “become distinctive” by reason of “exclusive, extensive and continuous use of such mark in interstate commerce for nearly five years.” The problem with this amendment is it is an intentional misrepresentation. Although Complainant alleged to the USPTO, and in its Complaint, that it first used the mark in July 1995 and first used it in commerce in September 1995, its true first use cannot be prior to the October 13, 1996, the registration date of the domain name <gradschools.com>. Furthermore, the WayBack Machine at <internetarchive.org> shows that Complainant first use of the website was March 28, 1997.
Yet, even the proposed mark merely combines the descriptive terms GRAD SCHOOLS with standard Internet top-level domain. COM. The prefix term GRAD SCHOOLS is descriptive in that it describes the subject of applicant’s services, namely to providing a computer directory of graduate schools. It is well established that the gTLD “.com” is meaningless for the purposes of the UDRP analysis.
Complainant Has No Enforceable Trademark Rights
Complainant has no enforceable
trademark rights against Respondent. As
an introductory matter, Complainant fails to understand that the gTLD “.com”
prepended to its mark GRADSCHOOL.COM is meaningless for the purposes of the
Panel’s UDRP ¶ 4(a)(i) analysis. Complainant therefore comes to NAF with only
the Mark GRADSCHOOL, and seeking to seize domains wholly incorporating the
different terms
Complainant’s Mark is Generic
When a trademark is composed of generic terms, or common words phrases, and the disputed domain is being used “because of its attraction as [a] dictionary word[], and not because of [its] value as [a] trade mark[],” the Respondent has legitimate rights in the domain.
“Grad school” is a common generic term, which is a synonym for “graduate school.” The common terms “graduate school” and “graduate schools” are distinct from Complainant’s mark GRADSCHOOL and subject to extensive third-party use by parties unaffiliated with Complainant. It is self-evident that this term relates to Respondent’s services, and that Respondent is using the term not because of their “value as a [confusingly similar] trademark” but because “of [their] attraction as a dictionary words” or common terms.
Even a registered trademark provides no rights under the Policy, if it is deemed to be descriptive or generic by a panel. Here, the USPTO trademark examiner expressly concluded that “GRAD SCHOOLS is descriptive in that it describes the subject of applicant’s services, namely . . . a computer directory of graduate schools,” and that Complainant’s mark “merely combines the descriptive terms GRAD SCHOOLS with [the] standard Internet top-level domain COM.” (emphasis added). To overcome this substantial barrier to registration, Complainant intentionally misled the USPTO.
The use of a common word domain name related to the descriptive meaning of the domain name and its services constitutes use in connection with a bona fide offering of goods or services, pursuant to ¶ 4(c)(i) of the UDRP.
Because the use of "Gradschools.com" is merely a generic name for Complainant's services, the mark is not entitled to protection. Here, Complainant seeks to prevent the Defendant from using "graduate schools", which essentially along with "gradschools" are only ways of describing a university, which offers study leading to degrees beyond the undergraduate degree. Complainant’s claim to have exclusive control of the terms “graduate school” and “graduate schools” is as ridiculous as it is dishonest.
Extensive Third-party Use
The terms <graduateschools.com> and <graduateschool.com> are subject to the most extensive third-party use demonstrable in the English language.
A Google search online for the term “graduate schools” yields more than 35 million results unaffiliated with Complainant. Google search online for the similar term “graduate school” yields approximately 186 million results unaffiliated with Complainant.
The fact that “graduate school” and “graduate schools” are generic terms subject to substantial third-party use on the Internet, in and of itself, further establishes Respondent’s legitimate interest in the Disputed Domains.
In this case, the weakness of Complainant's mark and the extensive evidence of third-party use overwhelm other considerations.
GRADSCHOOLS.COM is generic and not protectible. Even assuming arguendo that Complainant has demonstrated that GRADSCHOOLS.COM is descriptive rather than generic, Complainant still has not and cannot demonstrate the requisite secondary meaning needed for protection. Secondary meaning is determined by weighing many factors, among them exclusivity of use, which cannot possibly be established by Complainant where there are 35 million instances of non-exclusive use identified by Google for GRADUATE SCHOOLS and 186 million instances of non-exclusive use identified by Google for GRADUATE SCHOOL.
Reverse Domain Name Hijacking
Complainant had no bona fide basis for commencing this proceeding under the UDRP, and is culpable for reverse domain name hijacking under ¶ 15(c) of the UDRP. This is the third-attempt by Complaint to seize its competitors’ domain names after being warned it has no right to do so. By Complainant’s own admission, Complainant generated at least $1.5 million in revenue from the website resolving at <gradschools.com>. Using this revenue, Complainant is attempting to stomp on the rights of the less capitalized Respondent to this action in hopes that Respondent will be unable to muster the resources necessary to defend itself.
Reverse domain name hijacking occurs where, as here, a Complainant knows there is no plausible basis for a complaint.
C. Additional Submissions
In Respondent Castro’s April 9 letter, he states that he is not and has
never been the owner of the domain name <graduateschools.com>
but is only the administrative
contact and an escrow agent to hold that domain name until Respondent
CollegeCorner, Inc had paid the original owner.
He also states that he has no stake in this dispute and is turning over
the domain name at issue to the National Arbitration Forum to do with as it
wishes.
In Respondent’s Response to the Panel’s Order of April 20, Respondent
produced copies of the Settlement Agreement between Complainant and
GraduateSchool.com, of the Motion by Complainant to Enter Injunction against
GraduateSchool.com, Inc. in Civil Action No. 07-0331, and of the Order of the
Court on that Motion.
In Complainant’s April 22 letter, it states its belief that the domain
names at issue are actually controlled by GraduateSchool.com, Inc. and/or Shane
Gilbert, and that the correct Registrants are identified in the Complaint.
In Respondent Castro’s April 23 letter, he again states that he has no
stake in this dispute.
FINDINGS
Parties
Complainant contends that the real owner of
the domain names at issue is Shane Gilbert through his company
GraduateSchools.com. Inc. The affidavit of Mr. Gilbert submitted in
Civil Action No. 07-0331 supports this contention.
Respondent agrees with this contention, but
points out that College Corner has purchased the assets of Graduate
Schools.com, Inc.
Respondent Castro independently says that he
has no interest in the domain name <graduateschools.com>
other than as an escrow agent.
The Panel finds that Respondent is Shane
Gilbert, acting through Mr. Castro, College Corner, and GraduateSchools.com.
Admissibility
The
certification required by ¶ 3(b)(xiv) of the Rules is
the minimum to demonstrate the admissibility of the factual contentions made by
a complainant, and the certification required by ¶ 5(b)(viii) of the Rules
is the minimum to demonstrate the admissibility of the factual contentions made
by a respondent. Without certification, a Panel may
choose not to consider any factual statements, even in the case of pro se parties.
Complainant has provided the required ¶ 3(b)(xiv) certification, and additional documents and
declarations. The Panel finds that the
factual contentions made by Complainant are admissible and will be given weight
as appropriate.
Respondent has provided the required ¶ 5(b)(viii) certification, and additional documents and
declarations. The Panel finds that the
factual contentions made by Respondent are admissible and will be given weight
as appropriate.
DISCUSSION
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.”
Respondent claims that Complainant and Respondent agreed to a settlement in which Respondent was required to send letters to Complainant’s customers to dispel any confusion between the parties’ operations. Respondent claims that in this settlement agreement, Complainant agreed to release Respondent from further legal action.
Complainant contends that Respondent violated the settlement agreement from the lawsuit, and that Respondent was ordered to pay money damages for the failure to send all of the required letters to Complainant’s customers.
The Settlement Agreement regarding Civil Action No. 07-0331 is
dispositive of this case.
First, that agreement is between Complainant and Respondent.
Second, that agreement was based on claims involving Complainant’s
trademark and Respondent’s use of the domain names at issue.
Third, that agreement contains the following mutual releases:
6. GraduateSchool.com, for good and
valuable consideration, as set forth herein,
intending to be legally bound, releases,
remises and forever discharges EDU and all of its past and present officers,
directors, employees, successors, assigns, parents, insurers, attorneys and
agents of and from any liability, actions, causes of action, judgments, awards,
suits, debts, decrees, sums of any damages, accounts, covenants, contracts, in
law or in equity, known or unknown, which it has presently or may have in the
future arising out of the events described in the Action or which could have
been set forth in the Action, or which might have been alleged as the basis of
any action prior to the Settlement Date.
7. EDU, for good and valuable
consideration, as set forth herein, intending to be
legally bound, releases, remises and
forever discharges GraduateSchool.com and all of its past and present officers,
directors, employees, successors, assigns, parents, insurers, attorneys and
agents of and from any liability, actions, causes of action, judgments, awards,
suits, debts, decrees, sums of any damages, accounts, covenants, contracts, in
law or in equity, known or unknown, which it has presently or may have in the
future arising out of the events described in the Action or which could have
been set forth in the Action, or which might have been alleged as the basis for
any action as of the Settlement Date.
The Panel has set forth in detail the extensive contentions made by both Complainant and Respondent in their submissions. Complainant, by its Motion to Enter Injunction, successfully enforced the Settlement Agreement against Respondent, and relies in its Complaint on the Order issued by the Court on that Motion. Respondent, in its Response, seeks to rely on Complainant’s release in the Settlement Agreement.
In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
A dispute, such as the present
one, between parties who each have at least a prima facie case for
rights in the disputed domain names is outside the scope of the Policy … the
present case appears to hinge mostly on a business or civil dispute between the
parties, with possible causes of action for breach of contract or fiduciary
duty. Thus, the majority holds that the subject matter is outside the
scope of the UDRP and dismisses the Complaint.
The Panel finds that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. The mutual release given by Complainant may bar its claim against the domain names in dispute, and the mutual release given by Respondent may bar its attack on the Trademark. These are matters for review by a Court that is well adapted to consider the relevant contentions of the parties. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
In view of this finding, the Panel declines to address the substantive contentions advanced by both parties as to the three elements of ¶ 4(a) of the Policy, or Respondent’s claim of reverse domain name hijacking.
DECISION
The Panel orders that the Complaint be
dismissed.
Bruce E. O’Connor, Panelist
Dated: May 6, 2009
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