Pearson Education, Inc. and Pearson PLC v. Book Dog Books, LLC / Textbooksrus.com
Claim Number: FA1708001746270
Complainant is Pearson Education, Inc. and Pearson PLC (“Complainant”), represented by Patrick Gallagher of Cozen O'Connor, Minnesota, USA. Respondent is Book Dog Books, LLC / Textbooksrus.com (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pearsn.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 25, 2017; the Forum received payment on August 25, 2017.
On August 28, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pearsn.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 August 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 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@pearsn.com. Also on August 28, 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 September 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a multinational publishing and education company that uses its PEARSON mark to promote its business.
The PEARSON trademark is registered with the United States Patent and Trademark Office (“USPTO”) under Registry No. 2,694,359, registered March 11, 2003.
Respondent registered the <pearsn.com> domain name on May 15, 2008.
The domain name is confusingly similar to Complainant’s PEARSON mark.
Respondent has not been commonly known by the <pearsn.com> domain name.
Complainant has not licensed or otherwise authorized Respondent to use its PEARSON mark in any fashion.
Respondent is not using the domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, the domain name redirects Internet users to Respondent’s competing website.
Respondent does not have rights to or legitimate interests in the domain name.
Prior UDRP decisions against Respondent establish Respondent’s pattern of bad faith registrations of domain names, which constitutes evidence of its bad faith registration of the domain name in the present case.
Respondent’s use of the domain name disrupts the business of Complainant.
Respondent is attempting to benefit commercially from the goodwill of the PEARSON mark by creating confusion among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with the domain name.
Respondent knew of Complainant’s rights in the PEARSON mark at the time of its registration of the domain name.
Respondent has registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the PEARSON trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration of a mark with the USPTO was sufficient to establish a UDRP complainant’s rights in that mark).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <pearsn.com> domain name is confusingly similar to Complainant’s PEARSON mark. The domain name contains the mark in its entirety, save for elimination of the “o” and the addition of the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save the result from the realm of confusing similarity under the standards of the Policy. See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum November 15, 2006) (finding that a respondent’s <hacrs.com> domain name was confusingly similar to a UDRP complainant’s HACRES mark notwithstanding that the domain name omitted the letter “e” from the mark and added the generic top-level domain “.com”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence of record). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <pearsn.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use its PEARSON mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Book Dog Books, LLC,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a domain name where a UDRP complainant had not authorized that respondent to include its mark in a domain name registration). See also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that a respondent was not commonly known by the <chevron-europe.com> domain name within the meaning of Policy ¶ 4(c)(ii), where the relevant WHOIS information named “Fred Wallace” as registrant of that domain name).
We next observe that Complainant alleges, without objection from Respondent, that Respondent uses the <pearsn.com> domain name to redirect Internet users to Respondent’s competing website, thereby seeking to achieve commercial gain. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name by the terms of those provisions of the Policy. See, for example, Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum August 21, 2017):
Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <pearsn.com> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum December 28, 2005):
Respondent is appropriating Complainant’s mark [in a domain name] to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent employs the challenged <pearsn.com> domain name, which we have found to be confusingly similar to Complainant’s PEARSON trademark, to attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv) this too shows Respondent’s bad faith in registering and using the domain name. See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum April 26, 2015) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website that competed with a UDRP complainant’s business was evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the PEARSON mark when it registered the contested <pearsn.com> domain name. This independently supports a finding of Respondent’s bad faith in registering the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in the UNIVISION mark when it registered the domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain name <pearsn.com> be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 3, 2017
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