NCS Pearson, Inc. and Regents of the University of Minnesota v. No Name / Beat the MMPI
Claim Number: FA1811001817714
Complainant is NCS Pearson, Inc. and Regents of the University of Minnesota (“Complainant”), represented by Patrick J. Gallagher of Cozen O’Connor, Minnesota, USA. Respondent is No Name / Beat the MMPI (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <beat-the-mmpi.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 November 21, 2018; the Forum received payment on November 21, 2018.
On November 23, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <beat-the-mmpi.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 November 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@beat-the-mmpi.com. Also on November 30, 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 December 23, 2018, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the MMPI in connection with a standardized psychometric test that tests personality traits and psychopathology. The assessment is used for mental health assessment and therapy purposes, for legal purposes and/or for employment screenings. Complainant has rights in the MMPI mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,486,888, registered May 3, 1988). Respondent’s <beat-the-mmpi.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the entire MMPI mark with the addition of the descriptive wording “beat” and “the,” separated by hyphens, and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <beat-the-mmpi.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to pass itself off as Complainant by displaying Complainant’s content without authorization, and commercially benefits from the distribution of a “Cheat Sheet” for Complainant’s MMPI test.
Respondent registered and uses the <beat-the-mmpi.com> domain name in bad faith. Respondent engages in a pattern of bad faith, as Complainant was likely involved in a prior UDRP dispute with the current Respondent over the domain name <takemmpionline.com> in which the Panel ordered the transfer of the domain name to Complainant. Additionally, Respondent uses the domain name to provide online access to Complainant’s MMPI test, without Complainant’s authorization, which disrupts Complainant’s business for Respondent’s commercial gain. Further, Respondent clearly had actual and/or constructive knowledge of Complainant’s rights in the MMPI mark given that the mark is well-known throughout numerous jurisdictions and through Respondent’s use of the domain name’s resolving webpage to reference Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <beat-the-mmpi.com> 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 (2) Complainants in this matter: Complainant NCS Pearson, Inc. (“NCSP”) and Complainant Regents of the University of Minnesota (“Regents”). Complainant NCSP is the exclusive licensee of Complainant Regents, holding the exclusive right to distribute the MMPI test commercially in English-speaking jurisdictions throughout the world.
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.
The Panel accepts that the uncontested 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. In this decision, the Complainants will be collectively referred to as “Complainant.”
Complainant claims rights in the MMPI mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,486,888, registered May 3, 1988). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel finds that Complainant has established rights in the MMPI mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <beat-the-mmpi.com> domain name is confusingly similar to Complainant’s mark as it incorporates the entire MMPI mark with the addition of the descriptive wording “beat” and “the,” separated by hyphens, and the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). The Panel finds that the <beat-the-mmpi.com> domain name is confusingly similar to the MMPI mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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”).
Complainant contends that Respondent has no rights or legitimate interests in the <beat-the-mmpi.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 information identifies “Beat the MMPI” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the MMPI mark. Panels may use these assertions 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 alleges 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. The Panel finds that Respondent is not commonly known by the <beat-the-mmpi.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <beat-the-mmpi.com> domain name to pass itself off as Complainant by displaying Complainant’s content without authorization, and commercially benefits from the distribution of a “Cheat Sheet” for Complainant’s MMPI test. Using a confusingly similar domain name to pass itself off as a complainant for commercial gain can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides screenshots of the resolving webpage associated with the disputed domain name, which contains specific references to Complainant and offers its MMPI test online for $3.99 while distributing a “Cheat Sheet” for the test. The Panel finds that Respondent attempts to pass itself off as Complainant and fails to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). The Panel additionally finds Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant contends that Respondent engages in a pattern of bad faith, as Complainant was likely involved in a prior UDRP dispute with the current Respondent over the domain name <takemmpionline.com> in which the Panel ordered the transfer of the domain name to Complainant. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to evidence bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). The Panel finds Complainant has not sufficiently established that Respondent has a history of registering infringing domain names.
Complainant claims that Respondent uses the <beat-the-mmpi.com> domain name to provide online access to Complainant’s MMPI test, without Complainant’s authorization, which disrupts Complainant’s business for Respondent’s commercial gain. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As detailed above, Complainant provides screenshots of the resolving webpage associated with the disputed domain name, which contains specific references to Complainant and offers its MMPI test online for $3.99 while distributing a “Cheat Sheet” for the test. The Panel finds that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s MMPI mark at the time of registering the <beat-the-mmpi.com> domain name. Complainant contends that Respondent’s knowledge can be inferred given that the mark is well-known throughout numerous jurisdictions and through Respondent’s use of the domain name’s resolving webpage to reference Complainant’s products. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
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 <beat-the-mmpi.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: December 28, 2018
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