Edfinancial Services, LLC v. Above.com Domain Privacy
Claim Number: FA1310001524576
Complainant is Edfinancial Services, LLC (“Complainant”), represented by Martha B. Allard of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <edfinancil.com>, registered with Above.com, Pty. 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2013; the National Arbitration Forum received payment on October 15, 2013.
On October 16, 2013, Above.com, Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <edfinancil.com> domain name is registered with Above.com, Pty. Ltd. and that Respondent is the current registrant of the name. Above.com, Pty. Ltd. has verified that Respondent is bound by the Above.com, Pty. 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 October 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@edfinancil.com. Also on October 21, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions.
1. Policy ¶ 4(a)(i)
a. Complainant, Edfinancial Services, LLC, is a leading provider of student educational loan servicing and higher education services related to financial aid.
b. Complainant owns rights in the EDFINANCIAL mark because it registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,456,998 registered July 1, 2008). See Complainant’s Exhibit B.
c. The <edfinancil.com> domain name is confusingly similar to Complainant’s EDFINANCIAL mark because the domain name fully incorporates the mark and merely adds the generic top-level domain (“gTLD”) “.com” and omits the letter “a.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain name.
b. Respondent’s use of the disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) because the disputed domain name resolves to a website “featuring links to various third party websites, including direct competitors of Complainant,” and Respondent presumably receives click-through fees in exchange for hosting these links.
c. Complainant previously owned the <edfinancil.com> domain name and inadvertently allowed its registration of the domain name to lapse, which is further evidence that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).
3. Policy ¶ 4(a)(iii)
a. Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv) because the disputed domain name is confusing to Internet users and is being used to host links to third-party websites for Respondent’s commercial benefit.
b. Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii), because Respondent registered the <edfinancil.com> domain name after Complainant inadvertently allowed its own registration of the domain name to lapse.
c. Respondent registered the disputed domain name with notice of Complainant and its rights in the EDFINANCIAL mark.
d. Because the disputed domain name is a common misspelling of Complainant’s EDFINANCIAL mark, Respondent has engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a leading provider of student educational loan servicing and higher education services related to financial aid.
2. Complainant owns rights in the EDFINANCIAL trademark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,456,998 registered July 1, 2008).
3. Respondent registered the <edfinancil.com> domain name on April 9, 2009.
4. The disputed domain name resolves to a website featuring links to third party websites including direct competitors of Complainant.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant states that it is a leading provider of student educational loan servicing and higher education services related to financial aid. Complainant asserts that it owns rights in the EDFINANCIAL mark because it registered the mark with the USPTO (Reg. No. 3,456,998 registered July 1, 2008). See Complainant’s Exhibit B. The Panel notes that previous panels have held that a complainant that has registered a mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). Previous panels have also held that the Policy does not require a complainant to register its mark in the respondent’s home country in order to establish its rights in the mark. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Therefore, the Panel determines that the evidence that Complainant registered the EDFINANCIAL mark with the USPTO sufficiently establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i) even though Respondent appears to reside in Australia.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EDFINANCIAL mark. Complainant alleges that the <edfinancil.com> domain name is confusingly similar to Complainant’s EDFINANCIAL mark because the domain name fully incorporates the mark and merely adds the gTLD “.com” and omits the letter “a.” The Panel notes that it is typically held that for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i), the domain name’s gTLD is irrelevant. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel next notes that previous panels have held that a disputed domain name is confusingly similar to a complainant’s mark where the domain name fully incorporates the mark but omits a single letter found in the mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel holds that as in Pfizer, supra, the <edfinancil.com> domain name simply omits a single letter, “a,” from Complainant’s mark. Accordingly, the Panel holds that the disputed domain name is confusingly similar to Complainant’s EDFINANCIAL mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s EDFINANCIAL trademark and to use it in its domain name, making only a slight spelling alteration;
(b) Respondent has then caused the disputed domain name to resolve to a website featuring links to third party websites including direct competitors of Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant alleges that Respondent is not commonly known by the disputed domain name. The Panel notes that it has previously been held that a respondent is not commonly known by a disputed domain name where there is no evidence in record, including the WHOIS information, to suggest otherwise. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel observes that here, the WHOIS information identifies “Above.com Domain Privacy” as the registrant of the <edfinancil.com> domain name. The Panel also determines that nothing else in the record suggests that Respondent is commonly known as <edfinancil.com>. Accordingly, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii);
(e) Complainant next alleges that Respondent’s use of the disputed domain name is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the disputed domain name resolves to a website “featuring links to various third party websites, including direct competitors of Complainant,” and Respondent presumably receives click-through fees in exchange for hosting these links. The Panel notes that Complainant’s attorney and authorized representative has certified that this information is to the best of the Complainant’s knowledge complete and accurate and the Panel accepts Complainant’s contentions on that basis. The Panel further notes that previous panels have held that the use of a disputed domain name to promote click-through links is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See, e.g., Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, as the Panel accepts Complainant’s contention that the disputed domain name is being used to operate a pay-per-click website, the Panel holds hold that this use is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii);
(f) Complainant alleges that it previously owned the <edfinancil.com> domain name and inadvertently allowed its registration of the domain name to lapse, and that this is further evidence that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). Specifically, Complainant states that Respondent registered the disputed domain name on April 9, 2009, “a little over a year after Complainant’s rights to the domain name inadvertently lapsed.” See Complaint at 8; see also Edfinancial Services LLC v. Texas Int’l Prop. Ass. - NA NA, FA 1111923 (Nat. Arb. Forum January 29, 2008) (ordering the transfer of the <edfinancil.com> domain name from a third party to Complainant). The Panel notes that in RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003), the panel stated, “[the] [c]omplainant’s prior registration of the domain name, coupled with [the] [r]espondent’s failure to respond to this dispute, is evidence that [the] [r]espondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).” The Panel adopts the reasoning from RH-Interactive Jobfinance, supra, and holds that Complainant’s previous ownership of the disputed <edfinancil.com> domain name coupled with Respondent’s failure to submit a Response are further evidence that Respondent lacks rights or legitimate interests in the domain name under Policy 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv) because the disputed domain name is confusing to Internet users and is being used to host links to third-party websites for Respondent’s commercial benefit. Complainant alleges that some of the third-party websites promoted by the disputed domain name offer financial services that directly compete with those offered by Complainant under its EDFINANCIAL mark. As noted above, Complainant’s attorney and authorized representative has certified that this information is to the best of Complainant’s knowledge complete and accurate and the Panel accepts Complainant’s contentions on that basis. The Panel notes that it has previously been held that the use of a confusingly similar domain name to host click-through links to third parties that are unrelated or related to the complainant’s business demonstrates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name was confusingly similar to complainant’s mark and resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). In the instant proceeding, the Panel determines that the <edfinancil.com> domain name is confusingly similar to Complainant’s EDFINANCIAL mark for the reasons discussed above. Thus, as the Panel accepts Complainant’s contention that the domain name hosts click-through links to third parties, some of which are direct competitors of Complainant, the Panel holds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant next alleges that it previously owned the <edfinancil.com> domain name and that Respondent only registered the disputed domain name after Complainant inadvertently allowed its registration of the domain name to lapse. Specifically, Complainant states that Respondent registered the disputed domain name on April 9, 2009, “a little over a year after Complainant’s rights to the domain name inadvertently lapsed.” See Complaint at 8; see also Edfinancial Services LLC v. Texas Int’l Prop. Ass. - NA NA, FA 1111923 (Nat. Arb. Forum January 29, 2008) (ordering the transfer of the <edfinancil.com> domain name from a third party to Complainant). The Panel notes that in InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000), the panel stated, “where the domain name has been previously used by the [c]omplainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.” The Panel similarly reasons that in the absence of a Response, Respondent’s registration of the <edfinancil.com> domain name that was previously held by Complainant indicates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant next alleges that Respondent registered the disputed domain name with knowledge of its EDFINANCIAL mark, which tends to show that Respondent acted in bad faith under Policy ¶ 4(a)(iii). Complainant argues that Respondent’s knowledge can be inferred based on the notoriety of the EDFINANCIAL mark. The Panel notes that previous panels have held that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) where it registers an infringing domain name with actual knowledge of the complainant’s mark. See, e.g., 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). Previous panels have inferred that a respondent had actual knowledge indicating bad faith where the at-issue mark was very well-known at the time of registration. See, e.g., Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity). Accordingly, as the Panel accepts that Complainant’s mark is sufficiently well-known to justify the application of the principle in Nintendo of Am., supra, and in all the circumstances the Panel infers that Respondent registered the <edfinancil.com> domain name with actual notice of Complainant and its rights in the EDFINANCIAL mark, which is further evidence that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Fourthly, Complainant alleges that because the <edfinancil.com> domain name is a common misspelling of Complainant’s EDFINANCIAL mark, Respondent has engaged in typosquatting, which further evidences Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). It has previously been held that typosquatting evidences a respondent’s bad faith under the Policy because it deliberately diverts Internet users who misspell the complainant’s mark. Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use…”). In the instant proceedings, the Panel concludes that Respondent’s registration of the <edfinancil.com> domain name constitutes typosquatting, since the domain name misspells “financial” as “financil” and differs from Complainant’s EDFINANCIAL mark by a single letter. Accordingly, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the EDFINANCIAL mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <edfinancil.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 15, 2013
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