American Council on Education and GED Testing Service LLC v. Steve Remley
Claim Number: FA1707001738534
Complainant is American Council on Education and GED Testing Service LLC (“Complainant”), represented by Patrick J. Gallagher of Cozen O’Connor, Minnesota, USA. Respondent is Steve Remley (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 5, 2017; the Forum received payment on July 5, 2017.
On July 6, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@freegedonlinetest.net, postmaster@freegedonlinetest.org, postmaster@freegedtestonline.net, postmaster@freegedtestonline.org, postmaster@gedonlinediploma.net, postmaster@gedonlinediploma.org, postmaster@gedonlineprograms.com, postmaster@getged.org, postmaster@highschooldiplomaonlineged.com, and postmaster@onlinegedpracticetest.com. Also on July 7, 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 July 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a higher education organization that represents accredited degree-granting institutions in the United States. Complainant uses the GED mark in conjunction with its business practices. GED Testing Service, a former division of Complainant, manages and administers GED testing services. While Complainant owns the GED mark, GED Testing Service holds an executive license to use the GED mark and is also a party in this matter. Complainant registered the GED mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,321,397; registered Feb. 19, 1985). Respondent’s <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com> domains are confusingly similar to Complainant’s GED mark. All of the domains incorporate the GED mark in its entirety, adding various generic top level domains (“gTLDs”) (e.g., “.com”, “.net”, “.org”) and generic terms (e.g., “online,” “test,” “diploma,” “free,” “practice,” “get,” “high school,” “programs”).
Respondent does not have rights or legitimate interests in <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to use the GED mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com> currently resolve to blank pages resulting from a suspension order issued by the federal court on February 24, 2016. Previously, the disputed domain names resolved to fraudulent high school websites offering products in direct competition with Complainant.
Respondent registered and used <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com> in bad faith. Respondent attempted to disrupt Complainant’s business by diverting internet users to websites offering products and services in direct competition with Complainant, presumably for Respondent’s financial gain. Respondent registered the disputed domain names with actual knowledge of Complainant and its rights to the GED mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Previous Court Proceedings
Respondent was party to a federal court proceeding brought on behalf of the Federal Trade Commission (“FTC”). The action was brought under Section 13(b) of the Federal Trade Commission Act (“FTC Act”) to “obtain temporary, preliminary, and permanent injunctive relief, rescission or reformation of contracts, restitution, the refund of monies, paid, disgorgement of ill-gotten monies, and other equitable relief for [Respondent’s] acts or practices in violation of Section 5(a) of the FTC Act, 15 U.S.C. § 45(a).” Effective February 24, 2016, the U.S. District Court of Arizona issued an order suspending and disabling all of Respondent’s registered domain names, including the ten disputed domains in the present case.
Preliminary Issue: Multiple Complainants
In the instant proceeding, there are two Complainants. 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.” The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and will treat them as a single entity in this proceeding and refer to them as “Complainant.”
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com> domain names.
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.”).
Complainant is a higher education organization that represents accredited degree-granting institutions in the United States. Complainant uses the GED mark in conjunction with its business practices. GED Testing Service, a former division of Complainant, manages and administers GED testing services. While Complainant owns the GED mark, GED Testing Service holds an executive license to use the GED mark and is also a party in this matter. Complainant registered the GED mark with USPTO (e.g., Reg. No. 1,321,397, registered Feb. 19, 1985). The consensus among panels is that registrations with USPTO are sufficient to show rights to a mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Therefore, the Panel determines that Complainant’s USPTO registration shows sufficient rights to the GED mark.
Complainant asserts that Respondent’s <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com> domains are confusingly similar to Complainant’s GED mark. All of the domain names incorporate the GED mark in its entirety, adding various gTLDs (e.g., “.com”, “.net”, “.org”) and generic terms (e.g., “online,” “test,” “diploma,” “free,” “practice,” “get,” “high school,” “programs”). Panels have held that “[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.” Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003). Moreover, a confusing similarity exists where a disputed domain name contains the complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain. Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). Hence, the Panel concludes that Respondent’s <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com> are confusingly similar to Complainant’s GED mark.
The Panel finds Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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.”). The Panel finds Complainant has satisfied its burden.
Complainant asserts that Respondent does not have rights or legitimate interests in <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com>. To support its assertion, Complainant shows that Respondent is not commonly known by the disputed domain names. WHOIS information associated with this case identifies Respondent as “Steve Remley.” Panels have concluded that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, when “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name,” the Panel finds that Respondent is not commonly known by <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com>.
Complainant argues it has not authorized or licensed Respondent to use the GED mark in any regard, nor is Respondent affiliated with Complainant. Complainant maintains that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. In support of its argument, Complainant demonstrates that Respondent’s <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com> currently resolve to blank pages resulting from a suspension order issued by the federal court on February 24, 2016. Previously, the disputed domain names resolved to fraudulent high school websites offering products in direct competition with Complainant. The “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel concludes that “capitalizing on the well-known mark[ ] of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010).
The Panel finds Complainant has proved this element.
Complainant argues that Respondent registered and used <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com> in bad faith. Complainant asserts that a pattern of bad faith is present in this instance, evidenced by Respondent’s registration of several domain names. A pattern may be demonstrated through registration of several similar domain names involved in a single dispute. See Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>,<radissonplazahoteltianjin.com>, and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). Here, the Panel notes that 10 domain names are involved in the instant case. Therefore, the Panel agrees that Respondent’s registrations demonstrate a pattern of bad faith under Policy ¶ 4(b)(ii).
The disputed domain names resolved to fraudulent high school websites offering products and services in direct competition with Complainant before being suspended by the U.S. District Court of Arizona. Complainant contends that Respondent attempted to disrupt Complainant’s business by diverting internet users to websites offering products and services in direct competition with Complainant, presumably for Respondent’s financial gain. “Respondent [was] appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.” Panels have found that “this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005). Additionally, Panels have agreed that “[r]espondent’s use of the website to display products similar to [c]omplainant’s, imputes intent to attract Internet users for commercial gain, and [have found] bad faith per Policy ¶ 4(b)(iv).” Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015). Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith under the Policy.
Finally, Complainant contends that Respondent registered the disputed domain names with actual notice of Complainant and its rights to the GED mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant also argues that in light of the fame and notoriety of Complainant's GED mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, where the circumstances indicate that Respondent had actual knowledge of Complainant's GED mark when it registered <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com>, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006). The Panel finds Respondent had actual knowledge of Complainant’s rights in the GED mark.
The Panel finds Complainant has proved this element.
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 <freegedonlinetest.net>, <freegedonlinetest.org>, <freegedtestonline.net>, <freegedtestonline.org>, <gedonlinediploma.net>, <gedonlinediploma.org>, <gedonlineprograms.com>, <getged.org>, <highschooldiplomaonlineged.com>, and <onlinegedpracticetest.com> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 11, 2017
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