Harcourt, Inc. v. DRP Services
Claim
Number: FA0311000208588
Complainant is Harcourt, Inc., Orlando, FL
(“Complainant”) represented by Tara M.
Vold, of Fulbright & Jaworski L.L.P., 801 Pennsylvania Ave, N.W., Washington, DC 20004-2623. Respondent is DRP Services, POB 71117, Jerusalem 91710, Israel (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <harcourtmath.com>, registered with Iholdings.Com,
Inc. d/b/a Dotregistrar.Com.
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.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on November 5, 2003; the Forum received a hard copy of the
Complaint on November 6, 2003.
On
November 10, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by
e-mail to the Forum that the domain name <harcourtmath.com> is
registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent
is the current registrant of the name. Iholdings.Com, Inc. d/b/a
Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com,
Inc. d/b/a Dotregistrar.Com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
November 10, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 1, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities
and persons listed on Respondent's registration as technical, administrative
and billing contacts, and to postmaster@harcourtmath.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
December 8, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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."
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 makes the following assertions:
1. Respondent’s <harcourtmath.com>
domain name is confusingly similar to Complainant’s HARCOURT mark.
2. Respondent does not have any rights or
legitimate interests in the <harcourtmath.com> domain name.
3. Respondent registered and used the <harcourtmath.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
successfully registered the HARCOURT mark with the United States Patent and
Trademark Office (“USPTO”) (e.g., Reg. Nos. 2399024, 2403228, 2418049) as early
as October 31, 2000. Additionally,
Complainant has registered the following marks with the USPTO: MATH ADVANTAGE
(e.g., Reg. Nos. 2162808, 2159672), MATHEMATICS PLUS (e.g., Reg. Nos. 1994401,
2007396, 1692959), ANYTIME MATH (e.g., Reg. Nos. 1977169, 1977168, 1977167),
and ANYTIME IS MATH TIME (e.g., Reg. Nos. 1914332), all are products and
services relating to mathematical instruction.
Complainant is
in the business of publishing school textbooks, multi-media instructional
materials, as well as providing educational testing and training services. Complainant has used its HARCOURT mark since
1999 and some of its mathematical marks since 1997.
Respondent
registered the disputed domain name on October 15, 2002. Respondent uses the domain name for a portal
website containing links to a number of math-related websites. Among these math-related sites are links to
unrelated topics such as, “Games”, “Weight Loss”, and “Naked Men.” The “Naked Men” link provides access to a listing
of pornographic websites. Respondent’s
site also presents the Internet user with pop-up adds.
Respondent also
registered approximately thirty-eight other domain names, many of which
contained a third party’s famous mark, in or around October of 2002. Each of these other domain names resolves to
a search portal template at <beta.domainsponsor.com>, which generates
revenue for Respondent through Internet user searches.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
evidenced rights in the HARCOURT mark through registration with the USPTO and
continuous use since 1999. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning”); see also Wal-Mart
Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the
failure of Complainant to register all possible domain names that surround its
substantive mark does not hinder Complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of domain names in order to
protect themselves”).
In comparing
Complainant’s HARCOURT mark with the disputed domain name, <harcourtmath.com>,
it is apparent that Respondent has merely added a generic term, specifically
“math,” to describe the educational products that Complainant offers. This addition is not dissimilar enough to
push the domain name into the sphere of distinctiveness. See Am. Online, Inc. v. Anytime Online
Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that
Respondent’s domain names, which incorporated
Complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity); see
also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the subject domain name incorporates the VIAGRA
mark in its entirety, and deviates only by the addition of the word “bomb,” the
domain name is rendered confusingly similar to Complainant’s mark); see also
Westfield Corp., Inc. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com>
domain name confusingly similar because the WESTFIELD mark was the dominant
element).
Therefore,
Complainant has satisfied Policy ¶ 4(a)(i).
Respondent has
not asserted any rights or legitimate interests in the domain name. Therefore, the Panel may accept all
reasonable inferences of fact in the allegations of Complainant, without the
benefit of a Response. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint); see
also Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that, where Complainant has asserted that
Respondent has no rights or legitimate interests with respect to the domain
name, it is incumbent on Respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Additionally,
there is no evidence that Respondent is commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). The
WHOIS registration information fails to imply that Respondent is commonly known
by the name. See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating, “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
The evidence
suggests that Respondent has used the disputed domain name to host one link,
among many, that relates to pornography.
Previous Panels have found that using domain names, which are
confusingly similar to a trademark holder’s mark, in order to link users to
pornographic websites, is not a legitimate or fair use, pursuant to Policy ¶
4(c)(iii). See Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use); see also ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215
(WIPO May 26, 2003) (finding that the “use of the disputed domain name in
connection with pornographic images and links tarnishes and dilutes
[Complainant’s mark],” was evidence that Respondent had no rights or legitimate
interests in the disputed domain name); see also Paws, Inc. v. Zuccarini
a/k/a Country Walk, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that
the use of a domain name that is confusingly similar to an established mark to
divert Internet users to an adult-oriented website “tarnishes Complainant’s
mark and does not evidence noncommercial or fair use of the domain name by a
respondent”); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb.
27, 2002) (finding that Respondent’s use of Complainant’s mark to define the
location of Respondent’s website on the Internet and to host a pornographic
website was not a legitimate noncommercial or fair use of the domain name).
Furthermore,
Respondent is not using the disputed domain name in connection with a bona fide
offering of goods or services, pursuant to Policy ¶ 4(c)(i), because Respondent
is redirecting unsuspecting Internet users, who are looking for Complainant’s
products or services, to a website wholly unrelated to Complainant’s mark and
Respondent presumably receives referral fees for each misdirected user. See WeddingChannel.com Inc. v. Vasiliev
a/k/a NA and Free Domains Parking, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to websites unrelated to Complainant’s mark, websites where
Respondent presumably receives a referral fee for each misdirected Internet
user, was not a bona fide offering of goods or services as contemplated by the
Policy); see also Prudential
Ins. Co. of America v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum
Nov. 15, 2001) (finding no rights or legitimate interests in the disputed
domain name where Respondent was using Complainant’s mark to redirect Internet
users to a website offering credit card services unrelated to those services
legitimately offered under Complainant’s mark); see also Disney Enters.,
Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that
Respondent’s diversionary use of Complainant’s mark to attract Internet users
to its own website, which contained a series of hyperlinks to unrelated
websites, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the disputed domain names).
Therefore,
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has
registered and used the disputed domain name in bad faith, pursuant to Policy ¶
4(b)(iv), by intentionally attracting Internet users, who are seeking
Complainant’s products or services, to an unrelated website that provides
revenue for Respondent by creating confusion with Complainant’s mark. See H-D Mich., Inc. v. Petersons Auto.
a/k/a Petersons, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the
disputed domain name was registered and used in bad faith pursuant to Policy ¶
4(b)(iv) through Respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet users to its fraudulent
website by using Complainant’s famous marks and likeness); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)).
Moreover,
evidence suggests that Respondent has engaged in a pattern of conduct,
consistent with Complainant’s assertion that Respondent has registered and used
the disputed domain name in bad faith, pursuant to Policy ¶ 4(b)(ii), by
registering thirty-eight other domain names, many of which contained a third
party’s famous mark, in a very short period of time that all connect to another
portal website. See Calvin Klein, Inc. v. Spanno Indus., FA
95283 (Nat. Arb. Forum Aug. 21, 2000) (finding that Respondent has registered
numerous domain names containing sexual references and domain names which are
confusingly similar to third party trademarks; which points to a pattern of
conduct on the part of Respondent, revealing that Respondent is registering
domain names in order to prevent trademark owners from reflecting their marks
in corresponding domain names); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000)
(finding that registration of more than one domain name that infringes on
another’s registered mark(s) supports the inference that Respondent knew of
Complainant’s marks upon registering the domain names; and the registration of
multiple domain names that infringe on Complainant’s trademark(s) is evidence
of a pattern of conduct); see also Gamesville.com,
Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that
Respondent engaged in a pattern of conduct of registering domain names to
prevent the owner of the trademark from reflecting the mark in a corresponding
domain name, which is evidence of registration and use in bad faith).
Therefore,
Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <harcourtmath.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice Supreme Court. NY (Ret.)
Dated:
December 22, 2003
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