Pearson Education Limited and Pearson plc v. Hong young jin
Claim Number: FA1611001704957
Complainant is Pearson Education Limited and Pearson plc (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Minnesota, USA. Respondent is Hong young jin (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pteacademic.com>, registered with BigRock Solutions Ltd..
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically November 29, 2016; the Forum received payment November 29, 2016.
On November 30, 2016, BigRock Solutions Ltd. confirmed by e-mail to the Forum that the <pteacademic.com> domain name is registered with BigRock Solutions Ltd. and that Respondent is the current registrant of the name. BigRock Solutions Ltd. verified that Respondent is bound by the BigRock Solutions Ltd. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2016, 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@pteacademic.com. Also on December 1, 2016, 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 December 27, 2016, , pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson, to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant is a British based multinational publishing and education company. In connection with its education and publishing business Complainant has rights in the PEARSON TEST OF ENGLISH and PTE marks based on registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. Nos. 4,040,236, registered Oct. 18, 2011, and 3,781,377, registered Apr. 27, 2010, respectively). Respondent’s domain name <pteacademic.com> is identical to the PTE marks as the addition of the generic term “academic” and the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the PTE marks.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been commonly known by the disputed domain name or the PTE mark and has not acquired any rights in any marks associated with the domain name. Respondent’s use of the domain name, to resolve to a parked page containing sponsored and commercial links, which compete with Complainant’s business, is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s bad faith is evident from being a party to previous adverse UDRP proceedings. Respondent’s bad faith is also demonstrated by Respondent’s creating a likelihood of confusion by registering a confusingly similar domain name that uses Complainant’s own mark to advertise in competition with Complainant. Respondent also had constructive knowledge of Complainant’s rights in the PTE marks at the time of registration.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent created the disputed domain name July 8, 2015.
Complainant has rights to and legitimate interests in the mark contained within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or domain name.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name containing in its entirety Complainant’s protected mark and did so 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 Complainant to 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.
Given 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(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant has rights as claimed in the PEARSON TEST OF ENGLISH and PTE marks based on registration of the marks with the USPTO (e.g. Reg. Nos. 4,040,236, registered Oct. 18, 2011, and 3,781,377, registered Apr. 27, 2010, respectively). See Compl., at Attached Ex. B & C. This Panel finds that a complainant’s registration of marks with the USPTO is sufficient to demonstrate rights in a registered mark. See AOL LLC v. Interrante, FA 681239 (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)”).
Complainant next claims that Respondent’s domain name is identical to the PTE marks. Respondent’s domain name, <pteacademic.com>, includes the entire PTE mark and merely adds the generic term “academic” and the gTLD “.com.” Addition of the gTLD “.com” and generic terms to a mark in a domain name is not sufficient to overcome a finding of confusing similarity. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel finds that Respondent’s domain name is confusingly similar to the PTE marks for purposes of satisfying Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant asserts that Respondent has never been commonly known by the disputed domain name or the PTE mark and has not acquired any rights in any marks associated with the domain name. WHOIS information associated with the disputed domain name identifies Respondent as, “Hong young jin,” which does not have commonality with the disputed domain name. See Compl., at Attached Ex. A. Panels have looked to WHOIS information when determining that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel finds that Respondent is not known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also asserts that Respondent’s use of the disputed domain name has not been in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Respondent’s domain name resolves to a website displaying various related links with titles such as, “Pte Academic,” “English Test TOEFL,” and “Practice Exam Test.” See Compl., at Attached Ex. F. Clicking on one of these related links resolves to a page listing advertisements for websites such as, <amazon.com>, <jobsitestud.com>, and <bestdeals.today>. See Id. Additionally, the domain name displays a messaging noting that the domain name is for sale. See Id. Using a domain name to display advertisements for competitors of a Complainant or to attempt to sell a confusingly similar domain name is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). The Panel finds that Respondent has not used the domain name within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant urges that Respondent registered and is using the disputed domain name in bad faith. Complainant first argues that Respondent demonstrated a pattern of bad faith registrations, which can be used to make an inference of bad faith in the current proceeding. Respondent appears to have been a respondent in Raise Labs, Inc. v. Hong Young Jin, FA 1685247 (Forum Sept. 1, 2016) where the panel found Respondent to be a serial cybersquatter. Evidence of prior UDRP proceedings may lead to a finding of a pattern of bad faith registrations. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum November 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). This Panel finds that Respondent demonstrates a pattern of bad faith registrations such that support finding that Respondent registered, used and offered to sell the domain name at issue here in bad faith.
Complainant next argues that Respondent is confusing and attracting Internet users for commercial gain. As stated previously, Respondent’s domain name resolves to a website hosting links and advertisements related to Complainant’s education business and PTE marks. See Compl., at Attached Ex. F. Attempting to use a disputed domain name to profit from an Internet user’s mistaken associations with a complainant demonstrates bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The Panel finds that Respondent demonstrated bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that its trademark worldwide registrations for the PTE marks existed before the registration of the disputed domain name. Complainant argues that Respondent knew and/or had constructive knowledge of Complainant's rights in the mark. While constructive notice is not sufficient to support a bad faith finding, this Panel finds that given the fame of Complainant's mark and Respondent’s use of it that Respondent had actual knowledge of the mark and Complainant's rights in it before registering the disputed domain name. Thus, this Panel holds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used Complainant’s protected mark in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pteacademic.com> domain name be TRANSFERRED from Respondent to Complainant
Hon. Carolyn Marks Johnson, Panelist
Dated: January 9, 2017
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