Pearson Education, Inc. and Pearson plc v. song thao nguyen
Claim Number: FA1701001714217
Complainant is Pearson Education, Inc. and Pearson plc (“Complainant”), represented by Patrick J. Gallagher of Norton Rose Fulbright US LLP, Minnesota, USA. Respondent is song thao nguyen (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mymathlab-pearsons.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 25, 2017; the Forum received payment on January 25, 2017.
On January 26, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mymathlab-pearsons.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 January 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 2017 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@mymathlab-pearsons.com. Also on January 26, 2017, 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 February 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant, Pearson plc, is a multinational publishing and education company. Complainant Pearson Education, Inc., is a wholly-owned subsidiary of Complainant Pearson plc, whose products and services include education publishing and assessment services to schools, corporations, and students. Complainant has rights to the MYMATHLAB and PEARSON marks based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) and other agencies worldwide (e.g., Reg. No. 2,554,037, registered Mar. 26, 2002; Reg. No. 2,694,359, registered Mar. 11, 2003; respectively). Respondent’s <mymathlab-pearsons.com> is identical or confusingly similar to Complainant’s MYMATHLAB and PEARSON marks, as the disputed domain name contains both marks in their entirety, separated by a hyphen, and merely adding the letter “s” to the end of the PEARSON mark and appending the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <mymathlab-pearsons.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent received authorization, permission, or license from Complainants to use the MYMATHLAB or PEARSON marks. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website which purports to offer information regarding Complainant, Pearson Education, Inc.’s MYMATHLAB program and other math tools. The resolving website is being used in an affiliate advertising program to earn advertising fees and potentially diverts Internet users to competing goods and services.
Respondent has registered and used the <mymathlab-pearsons.com> domain name in bad faith. Respondent is using the disputed domain name and resolving website to link Internet users to competitors of Complainants for commercial gain. Also, Respondent had actual knowledge of Complainants and their rights in the marks at the time Respondent registered and used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Pearson plc, is a multinational publishing and education company. Complainant, Pearson Education, Inc., is a wholly-owned subsidiary of Complainant Pearson plc, whose products and services include education publishing and assessment services to schools, corporations, and students. Complainant, Pearson plc, has rights to the PEARSON mark and Complainant, Pearson Education, Inc., has rights to the MYMATHLAB mark based upon multiple registrations with the USPTO and other agencies worldwide (e.g., Reg. No. 2,554,037, registered Mar. 26, 2002; Reg. No. 2,694,359, registered Mar. 11, 2003; respectively). Respondent’s <mymathlab-pearsons.com> is identical or confusingly similar to the MYMATHLAB and PEARSON marks.
Respondent, song thao nguyen, created the <mymathlab-pearsons.com> domain name on May 27, 2016.
Respondent has no rights or legitimate interests in the <mymathlab-pearsons.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent received authorization, permission, or license from Complainants to use the MYMATHLAB or PEARSON marks. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website which purports to offer information regarding Complainant, Pearson Education, Inc.’s MYMATHLAB program and other math tools. The resolving website is being used in an affiliate advertising program to earn advertising fees and potentially diverts Internet users to competing goods and services.
Respondent has registered and used the <mymathlab-pearsons.com> domain name in bad faith. Respondent is using the disputed domain name and resolving website to link Internet users to competitors of Complainants for commercial gain. Also, Respondent had actual knowledge of Complainants and their rights in the marks at the time Respondent registered and used the disputed domain name.
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(f), 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 (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.”).
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Complainant Pearson plc, and Complainant Pearson Education, Inc. Complainant Pearson Education, Inc. is a wholly-owned subsidiary of Complainant Pearson plc. The <mymathlab-pearsons.com> domain name is comprised of two marks: PEARSON, which is registered to Complainant Pearson plc; and MYMATHLAB, which is registered to Complainant Pearson Education, Inc. Thus, both Complainants have standing to contest the disputed domain name.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that there is a sufficient nexus or link between Complainants to treat them as a single entity in this proceeding. Complainants will be collectively referred to as “Complainant.”
Complainant has rights in the MYMATHLAB and PEARSON marks under Policy ¶ 4(a)(i) based upon registration of the marks with the USPTO and authorities worldwide. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <mymathlab-pearsons.com> domain name is confusingly similar to Complainant’s MYMATHLAB and PEARSON marks under Policy ¶ 4(a)(i) as the disputed domain name contains both marks in their entirety, separated by a hyphen, and adding a letter “s” and the gTLD “.com.” A disputed domain name consisting of a combination of a complainant’s marks and a gTLD is not distinguishable from the marks in a Policy ¶ 4(a)(i) analysis for confusing similarity. See Textron Innovations Inc. v. Sheng Liang / Sarawina, FA 1622906 (Forum July 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) where Respondent’s <greenleetextron.com> domain name merely combined Complainant’s TEXTRON and GREENLEE marks and added the “.com” generic top-level domain suffix.). Hyphens are irrelevant in a Policy ¶ 4(a)(i) analysis. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Finally, the addition of a single letter “s” to a mark does not distinguish a domain name from a mark. See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”).
Respondent has no rights or legitimate interests in the <mymathlab-pearsons.com> domain name. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use the MYMATHLAB or PEARSON marks. The WHOIS information lists the registrant as “song thao nguyen.”See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (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).
Respondent has failed to use the <mymathlab-pearsons.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. The domain name resolves to a webpage which purports to offer information regarding Complainant’s MYMATHLAB program and uses the Amazon Services LLC Associates Program to commercially benefit from potentially diverting Internet users to competing sites. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Respondent’s use of <mymathlab-pearsons.com> to resolve to a website which links Internet users to products which compete with those offered by Complainant is evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA 1598657 (Forum February 20, 2015) (Respondent “seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”).
Respondent had actual knowledge of Complainant's rights in the MYMATHLAB and PEARSON marks; therefore, Respondent registered the <mymathlab-pearsons.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <mymathlab-pearsons.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 9, 2017
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