American Council on Education and GED Testing Service LLC v. Anthony Williams
Claim Number: FA1712001760954
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 Anthony Williams (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geddiploma.org>, registered with Uniregistrar Corp.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2017; the Forum received payment on December 1, 2017.
On December 6, 2017, Uniregistrar Corp confirmed by e-mail to the Forum that the <geddiploma.org> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 December 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@geddiploma.org. Also on December 8, 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 January 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a higher education organization that represents presidents and chancellors of U.S. accredited, degree-granting institutions, including community colleges, four-year higher education institutions, private and public universities, and for-profit and not-for-profit colleges.
Complainant has rights in the GED mark due to its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,613,984, registered Sep. 3, 2002).
Respondent’s <geddiploma.org> domain name is identical to the GED mark because it incorporates the mark in its entirety and adds the generic term “diploma” and the “.org” generic top level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interests in the <geddiploma.org> domain name as it is not authorized, permitted, or licensed to use the GED mark; nor is it commonly known by the <geddiploma.org> domain name. Respondent has not used the domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent’s <geddiploma.org> domain name diverts users to competing websites via advertisements and hyperlinks. Further, Respondent has offered to sell the <geddiploma.org> domain name to the public for $5,000.
Respondent registered and used the <geddiploma.org> domain name in bad faith. Respondent’s attempt to sell the disputed domain name for $5,000 on the Uniregistry.com online marketplace indicates bad faith. Additionally, Respondent’s <geddiploma.org> domain name uses hyperlinks and advertisements to divert users to competing websites, presumably for commercial gain. Furthermore, Respondent had actual and constructive notice of Complainant’s and its rights in the GED mark.
B. Respondent
Respondent did not submit a Response
Complainant has rights in the GED mark as evidenced by its registration of such mark with the USPTO.
Complainant’s rights in the GED mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the at-issue domain name to address a website that displays advertisements and links to goods and/or services that compete with those offered by Complainant.
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
In the instant proceedings, 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.” Here Complainant’s papers, showing that one complainant is the owner of the at-issue trademark and the other is a licensee of said mark, demonstrate that there is a sufficient nexus between the complaining parties so that they may proceed as if they are a single entity. They will be treated as such herein.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant registered its GED mark with the USPTO. Such registration is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s domain name starts with Complainant’s GED trademark, adds the descriptive term “diploma” and concludes with the top-level domain name “.org”. The slight differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Notably, the term “diploma” suggests Complainant’s mark since that mark is related to diplomas. The presence of the term “diploma” in the domain name thus adds to the confusion caused by the domain name’s inclusion of Complainant’s GED trademark. Further, top level names are a necessary part of a domain name’s syntax and have long been held irrelevant to UDRP analysis under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <geddiploma.org> domain name is confusingly similar to Complainant’s GED trademark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Anthony Williams” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <geddiploma.org> domain name. The Panel therefore concludes that Respondent is not commonly known by the <geddiploma.org> domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <geddiploma.org> domain name addresses a website that displays advertising and hyperlinks which relate to services or products competing with those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below there is sufficient evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses its confusingly similar domain name to display hyperlinks that refer to goods or services that complete with those offered by Complainant. Such links include, but are not limited to, “Minnesota Virtual High School” and “Free High School Online- Get Your High School Diploma.” Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii) and(iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstores, 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.”).
Additionally, Respondent’s <geddiploma.org> domain was listed on Uniregistry.com’s online marketplace. Thereby Complainant urges that Respondent has generally offered to sell the domain name for $5,000; an amount clearly in excess of Respondent’s out of pocket costs. Although there is no corroborating evidence that Respondent -rather than a third party unbeknownst to Respondent- listed the domain name for sale, Respondent’s failure to respond leaves such a conclusion unopposed. Therefore, the general offer to sell the domain name points to bad faith registration and use per Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”).
Finally, Respondent registered <geddiploma.org> knowing that Complainant had trademark rights in the GED trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s suffixing the GED mark within the at-issue domain name with a term that suggests Complainant’s business. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <geddiploma.org> domain name in bad faith pursuant to 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <geddiploma.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 8, 2018
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