American Council on Education and GED Testing Service LLC v. WA
Claim Number: FA1504001614043
Complainant is American Council on Education and GED Testing Service LLC (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Minnesota, USA. Respondent is WA (“Respondent”), Serbia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gedonline.com>, registered with FABULOUS.COM PTY LTD.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 10, 2015; the Forum received payment on April 10, 2015.
On April 14, 2015, FABULOUS.COM PTY LTD. confirmed by e-mail to the Forum that the <gedonline.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.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 April 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2015 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@gedonline.com. Also on April 17, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. The gedonline.com domain name is identical to the GED® Mark in which ACE has trademark rights worldwide.
2. The gedonline.com domain name is identical to the GED Mark.
3. Respondent Has No Rights or Legitimate Interests in the Domain Name.
4. Respondent has no relationship with ACE or GEDTS.
5. Respondent has never been commonly known by the domain name gedonline.com or by the GED® Mark and has never acq uired any trademark rights in the same.
6. Respondent has not used the domain name in good faith and in connection with a bona fide offering of goods or services.
7. Respondent Registered and Used the Domain Name in Bad Faith.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
1. Respondent’s <gedonline.com> domain name is confusingly similar to Complainant’s GED mark.
2. Respondent does not have any rights or legitimate interests in the <gedonline.com> domain name.
3. Respondent registered or used the <gedonline.com> domain name in bad faith.
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 GED® Mark has been used in commerce in connection with educational testing services since at least as early as 1946. In addition, ACE owns and uses the domain names ged.com and gedtestingservice.com in connection with the advertising of its goods and services on the Internet. The ged.com domain name was registered in 1995 and was obtained by ACE in November of 2013. ACE first registered the gedtestingservice.com domain name in 2011 and has continuously maintained the registration for gedtestingservice.com since that time.
The GED® Mark has become a highly valuable asset of Complainants, representing substantial goodwill. The value of this asset has been cultivated as a result of ACE's continuous and exclusive use of the mark for over 60 years, and because of Complainants' efforts to promote the mark through the expenditure of substantial sums and careful control of the public perception of both the nature and quality of the goods and services provided in connection with the mark.
It is well established under the Policy that ACE's registration of a mark with federal authority establishes a prima facie case of ACE's rights. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. dltaairlines.com and deltaaairlines.com c/o Hanna El Hinn, FA548217 (NAF Oct. 12, 2005), citing Janus Int'! Holding Co. v. Rademacher, 02002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."), and Innomed Techs., Inc. v. DRP Servs., FA221 l 71 (NAF Feb. 18, 2004) ("Registration of the NASAL-AIRE mark with the USPTO establishes complainant's rights in the mark").
The GED® Mark has been used in commerce in connection with educational testing services since at least as early as 1946. As noted above, such long-standing and continuous use gives ACE exclusive rights in the GED® Mark. ICANN panels have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, 02004-4030 (WIPO Aug. 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).
Furthermore, the addition of the common or generic term "online" to ACE'S GED® Mark does not negate the confusing similarity between gedonline.com and the GED® Mark under Policy 14(1)(i). In a similar case, a WIPO panel found that the generic term "online" did not distinguish a disputed domain name from a Complainant's trademark. See Educational Testing Service v. Erhan Bayram, WIPO Case No. 02011-0276 (WIPO Apr. 21, 2011) ("The Panel finds that the addition of the generic word "online" does not distinguish the disputed domain names from the Complainant's trademarks."). See also Exxon Mobil Corporation v. mga enterprises limited, FA0907001273445 (NAF Aug. 26, 2009) (finding that the addition of the terms "travel" and "club," which have an obvious relationship to Complainant's [Exxon's] business, to Complainant's mark in the disputed domain name <exxontravelclub.com> create a confusing similarity between the disputed domain name and the registered mark); Homer TLC, Inc. v. Whois Guard, FA6 l 9597 (NAF Feb. 14, 2006) (finding that the addition of common words to Complainant's registered mark did not negate the confusing similarity). Moreover, the addition of a generic top-level domain, such as ".com," is in-elevant in determining similarity of Respondent's gedonline.com domain to ACE's GED® Mark. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc., citing Busy Body, Inc. v. Fitness Outlet Inc., 02000-0127 (WIPO Apr. 22, 2000) ("[t]he addition of the generic top-level domain (gTLD) name '.com' is . . . without legal significance since use of a gTLD is required of domain name registrants"); See also, Thomas B. Hudson v. Ted Machi & Associates, FA133759 (NAF Jan. 21, 2003).
Moreover, not only is the Infringing Domain Name identical or confusingly similar to Complainant ACE's GED® Marks, but Respondent operates a website at the Infringing Domain Name that purportedly offers to direct visitors to "Free GED Classes Online," "Free GED Testing," "GED Practice," "GED Diploma Online," "GED Online Testing," "GED Testing," "GED Schooling," and "Online Schooling" and uses Complainant ACE's GED® Marks numerous times in order to create a purported affiliation with Complainants and Complainants' GED® test, when no such affiliation exists.
In this case, the gedonline.com domain name is identical to and incorporates in its entirety the GED® Mark. The domain name differs from the GED® Mark only by the addition of the generic term "online," and the top-level domain, ".com." These minor differences are insufficient to distinguish the gedonline.com domain name from the GED® Mark.
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.”).
Because ACE has made a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests in the Domain Name. See, e.g., Tejon Ranchcorp and Tejon Ranch Co. v. J & L Enterprises, FA524749 (NAF Sept. 20, 2005), citing Do The Hustle, LLC v. Tropic Web, 02000-0624 (WIPO Aug. 21, 2000) (where complainant has asserted that respondent has no rights or legitimate interests with respect to domain name, respondent must come forward with concrete evidence rebutting this assertion because this information is "uniquely within the knowledge and control of the respondent."), and
G.D. Searle v. Martin Mktg., FA118277 (NAF Oct. 1, 2002) ("Because Complainant's Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent").
Moreover, Respondent must show it has rights or legitimate interests in respect of the domain name at issue by "concrete evidence." See Kate Spade, LLC v. Darmstadter Designs, No. 02001-1384 (WIPO Jan. 3, 2002) citing UDRP Policy 4(c). "Concrete evidence" requires more than personal assertions; it requires documents or third-party declarations in support of such assertions. Id. A failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interest. Id.
From the evidence discussed below, it is clear that Respondent has no rights or legitimate interest in the gedonline.com domain name.
Respondent has no relationship, affiliation, connection, endorsement or association with ACE or GEDTS. Respondent has never requested or received any authorization, permission or license from ACE or GEDTS to use the GED® Mark in any way.
There is no evidence in the WHOIS information to suggest that Respondent is known by the gedonline.com domain name. Indeed, given ACE's long-time and extensive world-wide rights in the GED® Mark in connection with educational testing services and related goods and services, Respondent could not have rights in the GED® Mark unless ACE granted them. However, that has not occurred.
The website currently resolves to a parked page containing sponsored links to other commercial sites that advertise services or education products that compete with those offered by Complainants under the GED® Marks, presumably for compensation in the form of "click tlll'ough" payments. Moreover, the website contains a heading that states "GEDOnline.com: The Leading GED Online Site on the Net." Specifically, Respondent's bad faith intent is to capitalize on Complainant ACE's GED® Marks by luring consumers looking for Complainants' genuine GED® test and credential, then diverting them to others' websites that offer competing and sometimes fraudulent services using hyperlinks labeled "Free GED Classes Online," "Free GED Testing," "GED Practice," "GED Diploma Online," "GED Online Testing," "GED Testing," "GED Schooling," and "Online Schooling." This use of the domain name to attract potential customers to a website with sponsored listings poses a substantial risk of diverting traffic from Complainants' websites, which offer its genuine educational goods and services. See Jerry Damson, Inc. v. Tex. Intl Prop. Assocs., FA 916991 (NAF Apr. 10, 2007) (concluding that the use of a contested domain name to operate a portal with hyperlinks to various third-party web sites, some of which may be in competition with the business of a complainant, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy).
For example, the "GED Testing" hyperlink at the website associated with the Infringing Domain Name diverts visitors to search engine results displaying various fraudulent "diploma mill" websites in addition to some websites offering generic education information. Respondent's use of the GED® Marks in the Infringing Domain Name and elsewhere on its website (particularly in the form of the heading that states "GEDOnline.com") creates the impression that it is somehow sponsored by or related to Complainants, when of course it is not. Respondent's use of the GED® Marks in hyperlinks to divert Internet traffic from Complainants to fraudulent and unrelated businesses damages Complainants' reputations and threatens the goodwill they have built among consumers. As such, this is a blatant form of cybersquatting.
It is more likely than not Respondent receives compensation every time one of the links for these sponsored advertisements is clicked upon by an Internet user. ICANN panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO Oct. 6, 2000) (finding that "[I]t is enough that commercial gain is being sought for someone" for a use to be commercial). In this instance, Respondent's use of the gedonline.com domain name is commercial activity, in part, because the various companies or entities linked to the web site through these sponsored listings benefit from subsequent interest and purchases. See id.
Moreover, Respondent's use cannot be characterized as fair use. See id. (Finding that Respondent's use "could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainants until they found that instead they were in a directory which would do the Complainants potential harm"). See also State Farm Mutual Auto. Insur. Co. v. Pompilio, FA 1092410 (NAF Nov. 20, 2007) ("As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.")
Respondent's use of the domain name is not legitimate because it diverts ACE or GEDTS's consumers and potential consumers to Respondent's website and then to others' websites that offer competing and sometimes fraudulent services using hyperlinks containing the GED® Mark. See id. (Finding that Respondent's domain name which linked visitors to a directory of regional competitors was not a legitimate use.) See also American Council on Education and GED Testing Service LLC v. Geigo, Inc., WIPO Case No. D2013-1371 (WIPO Oct. 10, 2013) ("The attraction of visitors to a website by the unauthorized incorporation of another's trademark, in which the website operator does not have rights, cannot form the basis of a bonafide offering of goods or services, especially when the links appearing on the website relate to the Complainant and/or its competitors."); Homer, TLC Inc. v. Kang, FA573872 (NAF Nov. 22, 2005) ("Respondent's use of 'a' domain name that is identical to Complainant's mark to divert Internet users to third-party websites for Respondent's own commercial gain does not constitute a bona fide offering . . . or a legitimate noncommercial or fair use . . . ."). Such use of ACE's trademark is clearly confusing and deceptive to consumers. As such, Respondent's website at gedonline.com is not used or maintained in good faith and in connection with a bona fide offering of goods or services.
There are at least two pieces of evidence that show Respondent had knowledge of ACE or GEDTS's trademark rights, yet proceeded to register and use the gedonline.com domain name in bad faith: (1) Respondent used ACE's trademark in its domain name and on its website to divert visitors to competitors offering similar goods and services; and (2) Respondent is more likely than not to have had knowledge of ACE's trademark rights at the time Respondent registered and began using the gedonline.com domain name in light of ACE's numerous U.S. and international trademark applications and registrations for the GED Mark.
Respondent is using the gedonline.com domain name, which is identical to the GED® Mark, to direct Internet users to a website with links that direct visitors to third-pmiy websites offering and selling goods and services that directly compete with ACE and GEDTS. Such use is
concrete evidence of bad faith registration and use. See, e.g., Homer TLC, Inc. v. Unitedeurope Consulting, FA I I IOI 03 (NAF Feb. 8, 2008) ("Respondent's use of the disputed domain name to advertise links to third-party competitors is evidence of registration and use in bad faith under Policy ,i4(b)(iii)"), and S. Exposure v. S. Exposure, Inc., FA94864 (NAF July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant's business). Respondent registered and is using the gedonline.com domain name in bad faith for commercial gain and to profit from the resulting consumer confusion that the gedonline.com domain name is somehow connected with Complainants. Such registration and use of the Infringing Domain Name is in and of itself a form of opportunistic bad faith. See, e.g., Scania CV AB (Pub!) v. Unaci, Inc., WIPO Case No. 02005-0585 (WIPO July 29, 2005) (holding that use of famous mark by someone with no connection to mark owner "suggests opportunistic bad faith"); Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0l 63 (WIPO May 1, 2000), (holding that "blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith").
Respondent has situated itself as a competitor of Complainants by using a reproduction of Complainant ACE's well-known GED® trademark in order to create confusion and attract Internet users to its web site, all for commercial gain. The authorities hold that such conduct alone is conclusive of bad faith. Alltel Corp. v. Unasi, Inc., FA0508000532259 (NAF Sept. 22, 2005); Sara's City Workout, Inc. v. LaPorte Holdings, FA0508000535102 (NAF Sept. 22, 2005); Hillary Rodham Clinton v. Michele Dinola, FA0502000414641 (NAF Mar. 18, 2005); Identigene, Inc. v. Genetest Labs., 02000-1100 (WIPO Nov. 30, 2000); Luck 's Music Library v. Stellar Artist Mgmt., FA95650 (NAF Oct. 30, 2000). Given that Respondent has profited from the click-through traffic generated at the Infringing Domain Name, Respondent is acting in bad faith. See also Hilton Group pie v. Forum LLC, WIPO Case No. 02005-0244 (WIPO Apr. 22, 2005) (holding that the bad faith prong is satisfied where a respondent "used the Complainant's well known trademark . . . to attract users to Respondent's website thereby linking and redirecting the said users to other competing . . . websites").
In addition, Respondent is found to have had actual knowledge of Complainants' rights in the GED® Mark pursuant to multiple federal U.S. trademark registrations for the GED® Mark. "There is a legal presumption of bad faith when [Respondent] reasonably should have been aware of Complainant's trademarks, actually or constructively." See Digi Int'! v. DD! Sys., FA124506 (NAF Oct. 24, 2002); see also Thomas B. Hudson v. Ted Machi & Associates, Claim No. FA133759 (NAF Jan. 21, 2003) ("Respondent must be held to be on constructive notice of Complainant's service mark . . . ."); Assante Holdings, Inc. v. Kevin Baker, Claim No. FA109384 (NAF May 20, 2002) ("Respondent was on notice as to Complainant's rights in its PERSONAL CFO mark when it registered the disputed domain name because Complainant's mark is on the Principal Register of the United States Patent and Trademark Office. Registration of the disputed domain name despite this notice is evidence of bad faith registration.").
Any use by Respondent of the GED® Mark, even as a domain name, is an infringement of Complainants' long-held rights under trademark law. As the panelist in C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux pointedly noted, a potential domain name registrant:
would be well-advised to heed the oft-repeated admonition, such as that of Scott W. Pink, in his treatise, The Internet & E-Commerce Legal Handbook (2001), where at page 110, he states: 'Once you have decided on the TLDs and ccTLDs, you will want to select the second level of the domain, the words that signify your unique address. In doing so, you should first conduct both a domain name search to make sure the particular domain is available as well as a trademark search to make sure your choice of a domain name does not potentially infringe on another person or entity's trademark rights. C-Line Products, Inc. v. Ra/co Consulting c!o Robert Lebeaux, Claim No. FA! 87608 (NAF Oct. 20, 2003) (emphasis supplied).
Respondent knew of Complainants' rights in the GED® Mark. Respondent's registration and infringing use of the gedonline.com domain name, despite having such knowledge, is in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gedonline.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 1, 2015
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