Pearson Education, Inc. and Pearson plc v. Protection of Private Person
Claim Number: FA1804001782445
Complainant is Pearson Education, Inc. and Pearson plc (“Complainant”), represented by Patrick J. Gallagher of Cozen O'Connor, Minnesota, USA. Respondent is Protection of Private Person (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pearsonmywritinglab.com>, registered with Registrar of Domain Names REG.RU 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2018; the Forum received payment on April 18, 2018.
On April 19, 2018, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <pearsonmywritinglab.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 April 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2018 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@pearsonmywritinglab.com. Also on April 23, 2018, 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 May 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a British multinational publishing and education company. It is one of the world’s largest education companies and book publishers. Complainant established rights in its PEARSON mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,599,724, registered Jul. 23, 2002). See Compl. Exs. C–D. Additionally, Complainant has common law rights in its MYWRITINGLAB mark that date back to 2006. Respondent’s <pearsonmywritinglab.com> domain name is identical and/or confusingly similar to Complainant’s PEARSON and MYWRITINGLAB marks as Respondent incorporates both marks entirely, and adds the generic top-level domain (“gTLD”) “.com” to the mark.
Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not permitted, licensed, or authorized to use Complainant’s marks. Additionally, Respondent is not commonly known by the disputed domain name based on the WHOIS registration information. See Compl. Ex. A. Further, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name lures consumers looking for Complainant’s goods and services and diverts them to Respondent’s website and/or a third party website which offers competing homework related services. See Compl. Ex. K. Respondent purportedly receives click-through fees for redirecting users to the competing website. See Compl. Ex. L.
Respondent registered and is using the disputed domain name in bad faith as Respondent’s use of the domain name to solicit competing services disrupts Complainant’s business. See Compl. Exs. K–L. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in its mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
There are two (“2”) Complainants in this matter: Pearson Education Inc. and Pearson plc. Complainant Pearson Education Inc. is a wholly-owned subsidiary of Complainant PEARSON plc, and is a global leader in educational publishing, scientifically research-based print and digital programs, and educates over 100 million people worldwide. Complainant Pearson PLC owns over ninety (“90”) trademark registrations for the PEARSON mark and its variations over the world. Complainants use the PEARSON mark in connection with its products and services.
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 Paralymic 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. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding and the proceeding may go forward on that basis.
The Complainants will be collectively referred to as “Complainant.”
Panel Note: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Russian language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Russian language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). In the present case, the disputed domain name consists of English words, Complainant is a prominent British company, Respondent must have known of this to devise its scheme, the website conducted by Respondent is of an international nature which necessarily involves use of the English language and an examination of Respondent’s website shows that it is written solely in English, with buttons marked with English words such as “Order Now” and “ Homework”, an automatic link to another website is also in the English language and it is offering services which would mainly if not solely be performed using the English language. These factors make out an overwhelming case for the proceedings to be conducted in the English language. Further, the Panel may weigh the relative time and expense in enforcing the Russian language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Accordingly, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the high probability that the Respondent is conversant and proficient in the English language. After considering all the circumstances of the present case, the Panel decides that the proceeding should be in the English language.
1. Complainant is a British multinational publishing and education company which is one of the world’s largest education companies and book publishers.
2. Complainant has established its trademark rights in its PEARSON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,599,724, registered Jul. 23, 2002).
3. Additionally, Complainant has established its common law trademark rights in its MYWRITINGLAB mark that date back to the year 2006.
4. Respondent registered the <pearsonmywritinglab.com> domain name on May 26, 2016.
5. Respondent has caused the disputed domain name to be used to lure consumers looking for Complainant’s goods and services and divert them to Respondent’s website and/or a third party website which offers competing homework related services.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims rights in the PEARSON mark through registration with the USPTO (e.g., Reg. No. 2,600,081, registered Jul. 30, 2002). See Compl. Ex. C. Registering a mark with a trademark authority, such as the USPTO, may be sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds Complainant has rights in the PEARSON mark per Policy ¶ 4(a)(i).
In addition, Complainant claims common law rights to its MYWRITINGLAB mark. Common law rights to a mark may be demonstrated through evidence of secondary meaning. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant claims to have used the MYWRITINGLAB mark in commerce in connection its goods and services since at least as early as 2006. Further, Complainant avers that it owns and uses the domain names <mywritinglab.com> and <pearsonmylabandmastering.com>, registered in 2004 and 2011 respectively. See Compl. Exs. F and G. Additionally, Complainant argues it has expended considerable resources enforcing its rights in the MYWRITINGLAB mark, and promotes its MYWRITINGLAB service through its other websites and social media channels around the world. See Compl. Ex. H. As a result, the Panel finds Complainant has demonstrated common law rights in its MYWRITINGLAB mark since at least as early as 2006.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PEARSON and/or MYWRITINGLAB marks.
Complainant argues Respondent’s <pearsonmywritinglab.com> domain name is confusingly similar and/or identical to its marks as Respondent incorporates both marks entirely while adding the gTLD “.com.” Such additions to a domain name do not typically negate a finding of confusing similarity between the domain name and a trademark. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”); see also Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). Consequently, the Panel finds the disputed domain name is confusingly similar to Complainant’s PEARSON and MYWRITINGLAB marks.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PEARSON and MYWRITINGLAB marks and to use them in its domain name;
(b) Respondent registered the disputed domain name on May 26, 2016;
(c) Respondent has caused the disputed domain name to be used to lure consumers looking for Complainant’s goods and services and divert them to Respondent’s website and/or a third party website which offers competing homework related services;
(d) Respondent registered the domain name and engaged in the foregoing conduct without Complainant’s knowledge or permission;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <pearsonmywritinglab.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Protection of Private Person” as the registrant. See Compl. Ex. A. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the PEARSON and MYWRITINGLAB marks. Panels often use this information as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by the <pearsonmywritinglab.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant contends Respondent does not use the <pearsonmywritinglab.com> domain name in connection with a bona fide offering of goods and services, or a legitimate noncommercial or fair use. Rather, Complainant avers that Respondent’s domain name lures consumers looking for Complainant’s goods and services and diverts them to Respondent’s website or a different third party website, which offers homework related services for sale. Complainant contends Respondent receives click-through fees for redirecting users to the competing website. Use of a domain name for such purposes is not typically considered a bona fide offerings of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 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).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides a screenshot of the resolving webpage, which contains a button with the words “Order Now” which redirects users to the website <evolutionwriters.com> purporting to offer online writing services. See Compl. Exs. K-L. Consequently, the Panel finds Respondent’s use of the disputed domain name does not confer rights and legitimate interests in the same under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Secondly, Complainant asserts Respondent had constructive and actual knowledge of its rights prior to registering the <pearsonmywritinglab.com> domain name. The Panel notes that while constructive knowledge is insufficient to support a finding of bad faith, actual knowledge is sufficient for a finding of bad faith registration under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant avers, Respondent used two of Complainants’ trademarks, PEARSON and MYWRITINGLAB, in the disputed domain name to divert visitors to a third party website offering competing services. See Compl. Exs. K–L. Consequently, the Panel finds Respondent had actual knowledge of Complainant’s rights in its mark prior to registering the disputed domain name, thus indicative of bad faith registration under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using Complainant’s PEARSON and MYWRITINGLAB marks and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pearsonmywritinglab.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 22, 2018
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