American Council on Education et al. v. BMS solutions
Claim Number: FA1404001552755
Complainant: American Council on Education of Washington, District of Columbia, United States of America.
GED Testing Service LLC of Bloomington, Minnesota, United States of America.
Respondent: alex goldberg of riverdale, New York, US.
BMS solutions of riverdale, United States of America.
REGISTRIES and REGISTRARS
Registries: GURU Registry; TIPS Registry
Registrars: Name.com, 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 Examiner in this proceeding.
Antonina Pakharenko-Anderson, as Examiner.
Complainant submitted: April 4, 2014
Commencement: April 7, 2014
Response Date: April 13, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Procedural findings:
This complaint and findings relate to two domains <ged.guru> and <ged.tips>. There are two Complainants against two Respondents involved in this proceeding. No domain names are dismissed from this complaint.
Findings of Fact:
The complaint at hand refers to the registration of the domain names <ged.guru> and <ged.tips> registered by alex glodberg, NY and alexander E Goldberg of BMS solutions, which will be further referred collectively as “Respondents” as, most likely, the registrars have affiliation ties, if not one and the same entity.
Complainant, American Council on Education (ACE), is the owner of all trademark rights in the marks GED, GED & Design, and GED TESTING SERVICE, among others, for various goods and services related to educational testing. Complainant also owns trademark registrations in over 35 countries and has used the GED mark to identify its goods and services related to high school equivalency testing for over 70 years. Co-Complainant, GED Testing Service LLC (GEDTS), a joint venture between ACE and NCS Pearson, Inc., administers the GED® testing program and manages the portfolio of GED marks under exclusive license from ACE.
According to the Complainant, the domains <ged.guru> and <ged.tips> are identical to the Complainant’s registered trademark “GED”. Evidence of use for the trademark has been presented to and validated by the TMC.
Complainant’s domain name, <ged.com>, registered on Aug. 11, 1995, is used to promote Complainant’s goods and services. Respondents registered the disputed domain names on Feb. 2, 2014 <ged.guru> and Feb. 28, 2014 <ged.tips> despite having received notification that the domain names match a mark registered with the Trademark Clearinghouse, and is using the domain name to PPC links.
Based on the foregoing, the Complainant elaborates on the arguments to demonstrate that the Registrant has no legitimate right or interest to the domain name, and that the domain was registered and is being used in bad faith.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
Identical or confusingly similar (URS 1.2.6.1.)
The Examiner finds that the domain names <ged.guru> and <ged.tips> fully incorporate the Complainant’s GED mark which is the core element of a series of the GED marks held by the American Council of Education. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus neither “.guru” nor “.tips” is of no consequence here.
Thus, the Examiner finds that the domain names <ged.guru> and <ged.tips> are identical to the Complainant’s GED mark under URS 1.2.6.1. (i).
No rights or legitimate interests
The Examiner determines that the Respondents are not commonly known by the GED name as the WHOIS records for the domain names <ged.guru> and <ged.tips> list “alex goldberg” and “alexander E Goldberg of BMS solutions” as the registrants of the domain names.
It is contemplated from the Complaint that Respondents have no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s GED mark in a domain name or otherwise.
The Respondents are individuals, which may be associated with the BMS Solutions, being the company domiciled in NY, U.S.A., and not in any way affiliated to the Complainants. He registered the disputed domain name <ged.guru> on February 2, 2014 and the domain name <ged.tips> on February 28, 2014 after receiving notification by the TMCH that the domain name identically matches the Complainant’s Trademark. Until recently, the domain names were linked to the websites used for the pay-per-click links with sponsored links to the goods and services competing with the Complainants’ business and overlapping with the services for which the GED mark is registered and actually used.
At the same time, the Respondents content that the “ged” name is the simple abbreviation and refers to the generic nature of the name as leverage.
In light of that the Examiner must note that it is generally recognized that the distinctiveness is not the unchangeable factor and it may be significantly increased through the long and intensive use of the sign by the trademark holder. As a general rule, it can be said that a descriptive term is distinctive for the goods concerned if it has acquired a secondary meaning, that is, if those to whom it is addressed have come to recognize it as indicating that the goods for which it is used are from a particular trade source.
As found by the Examiner during its ex officio verification of the Complainant’s contentions, the GED marks have acquired a secondary meaning and are associated with the Complainant’s business, and a lot of internet publications prove that.
At the same time, the Respondents mentioned in the Response that “We thought it would be a good blog name, which we would try to monetize for the writers”.
The Examiner treats that Respondents’ contention as the deliberate deception as initially meaningless marks, like initialisms or coined words, may not be the favorites of the marketing people, since they require heavy advertising investment to become known to consumers.
In light of that the Examiner does not admit the legitimate interest argument of the Respondents to use a trademark that belongs to a third party and of which the Respondents were aware, since having been registered with the Trademark Clearinghouse it was made known to them when they were obtaining the registration of the domain names <ged.guru> and <ged.tips>. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.2.
Bad faith registration and use
The domain names <ged.guru> and <ged.tips> were registered and are being used in bad faith.
The Examiner determines that by providing “payperclick” links to other third party sites to generate “payperclick” revenue from internet traffic that visits webpages to which domain names <ged.guru> and <ged.tips> resolve the Respondents have intentionally attempted to attract for commercial gain Internet users to Registrant’s web site, by creating the likelihood of confusion with the complainant’s mark as to the source, sponsorship or affiliation taking due note of the fact that the Complainant’s GED mark is in use over the Internet since 1995 and before that the GED mark was used in real word for a considerable period of time and the Complainant’s domain name <ged.com> resolves to the popular website.
Thus, the Examiner finds such behavior to evidence Respondents’ bad faith registration and use under URS 1.2.6.3.
The Examiner finds that the complaint was neither abusive nor contained material falsehoods.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<ged.guru> and <ged.tips>
Antonina Pakharenko-Anderson, Examiner
Dated: April 22, 2014
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