McGraw-Hill School Education Holdings, LLC v. EmerGents / Christopher James
Claim Number: FA1403001548279
Complainant is McGraw-Hill School Education Holdings, LLC (“Complainant”), represented by Karin Segall of Leason Ellis LLP, New York, USA. Respondent is EmerGents / Christopher James (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tabetest.com>, registered with GODADDY.COM, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2014; the National Arbitration Forum received payment on March 12, 2014.
On March 12, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <tabetest.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2014 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@tabetest.com. Also on March 17, 2014, 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 April 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, McGraw-Hill School Education Holdings, LLC, is a leading global provider of educational materials, information, and solutions for the assessment market.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TABE mark (e.g., Reg. No. 1,858,578, registered October 18, 1994).
Respondent’s <tabetest.com> domain name is confusingly similar to Complainant’s TABE mark. Respondent tags the descriptive term “test” along with the generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known under the disputed domain name. Respondent is “Emergents LLC” according to WHOIS. Respondent is using the disputed domain name solely to resolve to a website at <tabetest.com> that offers “PRACTICE TABE TESTS,” promotes its own assessment tests under the TABE mark, and even wholly reproduces one of Complainant’s own tests.
Respondent’s use of a disclaimer does not protect the unauthorized use of the TABE mark.
Respondent has registered and is using the disputed domain name in bad faith.
Respondent registered the disputed domain name with the primary intention of disrupting Complainant’s business. Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to the corresponding website thereby creating a likelihood of confusion with Complainant’s mark.
Respondent registered the <tabetest.com> domain name on April 12, 2002.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for the TABE mark.
Respondent registered the at-issue domain name after Complainant acquired rights in the TABE mark.
Respondent is not authorized to use Complainant’s mark in any capacity.
The <tabetest.com> domain name addresses a website that offers “PRACTICE TABE TESTS,” promotes its own assessment tests under the TABE mark, and wholly reproduces one of Complainant’s own tests.
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 at-issue domain name is confusingly similar to a mark in which the Complainant has trademark rights.
Complainant’s ownership of USPTO trademark registrations for TABE demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
In forming that at-issue domain name Respondent adds the descriptive word “test” to Complainant’s TABE mark and then appends the top-level domain name “.com” thereto. The juxtaposition of a suggestive descriptive term with Complainant’s trademark is inconsequential to the Panel’s Policy ¶ 4(a)(i) confusingly similar analysis. Likewise, adding the necessary top-level domain name, here “.com,” does nothing to distinguish Respondent’s domain name from Complainant’s trademark. Therefore, the Panel concludes that the at-issue <tabetest.com> domain name is confusingly similar to Complainant’s TABE trademark under Policy ¶4(a)(ii). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “EmerGents / Christopher James” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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 uses the <tabetest.com> domain name to address a website that offers “PRACTICE TABE TESTS,” promotes Respondent’s own assessment tests under the TABE mark, and even wholly reproduces one of Complainant’s own tests. Further, Respondent’s website advertises practice materials for those taking Complainant’s TABE test and includes links to materials titled “TABE Test” or “Practice TABE Test.” Respondent’s use of a confusingly similar domain name to provide competing services is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present which show that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent is using the <tabetest.com> domain name to address a website providing copies of Complainant’s TABE tests, as well as Respondent’s own test prep materials to website visitors. Respondent’s competing use of the disputed domain name disrupts Complainant’s business and demonstrates that Respondent has registered and is using the <tabetest.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Furthermore, the use of “test” in the domain name only adds to the confusion between the Complainant’s trademark and the at-issue domain name as it suggests Complainant’s “test” related business. It is apparent from the similarity of the domain name to Complainant’s mark and the nature of Respondent’s <tabetest.com> website that Respondent registered the at-issue domain name precisely to capitalize on its similarity to Complainant’s trademark. Respondent presumably benefits from the confusion since such confusion acts to deliver Internet traffic intended for Complainant to the <tabetest.com> website. Once there, visitors are poised to purchase services from Respondent or otherwise enhance Respondent’s coffers. Moreover, Respondent’s disclaimer does nothing to disarm the initial interest confusion caused by the confusingly similar domain name. See Alibaba Group Holding Limited v. jianliang fei, FA 1364507 (February 7 , 2011) (finding a written disclaimer ineffective to quell initial interest confusion caused by a confusingly similar domain name and that such “disclaimer is further evidence of Respondent’s knowledge that the Disputed Domain Name is confusingly similar to the [mark].) Given the foregoing, the Panel concludes that Respondent uses the <tabetest.com> domain name to intentionally attract Internet users to Respondent’s <tabetest.com> website for commercial gain by creating a likelihood of confusion with Complainant’s mark thereby demonstrating Respondent’s bad faith use and registration under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)(finding that respondent violated Policy ¶ 4(b)(iv) by displaying complainant’s mark on its website and offering identical services as those offered by complainant).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tabetest.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 17, 2014
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