Secondary School Admission Test Board,
Inc. v. Joanna Severino and Richard Hosko
Claim Number: FA0501000408094
PARTIES
Complainant
is Secondary School Admission Test
Board, Inc. (“Complainant”), represented by Todd A. Denys, of Mathews, Collins, Shepherd & McKay,
P.A., 100 Thanet Circle,
Suite 306, Princeton, NJ 08540.
Respondents are Joanna Severino and Richard Hosko (collectively, “Respondent”), represented by Navin Khanna, of McCarthy Tetrault LLP,
Box 48, Suite 4700, Toronto Dominion Bank Tower, Toronto, ON M5K 1E6,
Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <prepssat.com>
(the “Domain Name”), registered with Onlinenic,
Inc. (the “Registrar”).
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Michael
Albert, James A. Carmody, and Karl V. Fink Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 24, 2005.
On
January 24, 2005, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <prepssat.com>
is registered with Onlinenic, Inc. and that the Respondent is the current
registrant of the name. Onlinenic, Inc.
has verified that Respondent is bound by the Onlinenic, Inc. 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
January 26, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 15, 2005 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@prepssat.com by e-mail.
A
timely Response was received and determined to be complete on February 25, 2005.
On March 10, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Michael Albert, James A. Carmody, and Karl V. Fink as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that:
-
it has rights in the SSAT mark and that Respondent’s <prepssat.com>
domain name is identical or confusingly similar to that mark.
-
Complainant owns and administers the Secondary School Admission Test (“SSAT”),
which is a test that is used by private secondary schools to assist those
schools in evaluating student candidates for admission.
-
The Secondary School Admission Test has widely become known by the acronym
trademark SSAT.
-
Complainant has also created, and offers for sale through various channels of
distribution, written materials used by students to assist them in preparing
for the SSAT and applying to private secondary schools.
-
Complainant or its predecessors have been using the SSAT mark in the United
States since 1956, and have owned federal trademark and service mark
registrations for the SSAT mark since 1988.
Complainant has used the mark in Canada since at least as early as 1998,
and registered the mark in Canada in 1998.
-
Respondent Joanna Severino d/b/a Prep SSAT Inc. (“Respondent”), based in
Canada, registered the <prepssat.com> domain name on May 23, 2002,
well after Complainant first used and registered the SSAT mark in both Canada
and the United States and with prior knowledge of Complainant. At some point, Respondent changed the name
of her business to Prepskills, and registered and began using the <prepskills.com>
domain name in place of the Domain Name.
- Complainant has had numerous communications
with Respondent, through various counsel, since September 2002, asking
Respondent to cease use of the SSAT mark.
Respondent did not at first agree.
Complainant then filed a UDRP Complaint regarding the <prepssat.com>
domain name with the National Arbitration Forum on November 25, 2003. This dispute was assigned file number
FA0311000211963. Shortly thereafter,
Respondent offered to settle the dispute and transfer the domain name to Complainant.
The proceeding was stayed, and later dismissed without prejudice. Ultimately, however, the settlement fell
through. Complainant therefore filed
this second UDRP Complaint.
- Respondent
has used Complainant’s SSAT mark as a meta-tag on Respondent’s websites.
-
The Domain Name incorporates Complainant’s trademark in its entirety, merely
adding as a prefix the abbreviation “prep” which is short for “preparation” or
“preparatory.” Complainant alleges that
this change does not eliminate the similarity or confusion between the mark and
the Domain Name.
-
Complainant further alleges that Respondent’s use of the SSAT mark as a
meta-tag for her websites evidences an intent to confuse Internet users as to
the source and sponsorship of the Domain Name.
Furthermore, many school-aged consumers use the Internet to locate SSAT test information, increasing the
likelihood of confusion among these allegedly “relatively unsophisticated
consumers.”
- Respondent’s website included a disclaimer of any
affiliation between Complainant and Respondent, but this disclaimer is
insufficient to avoid “initial interest confusion” between the parties.
- Respondent has no rights or legitimate interests
in the <prepssat.com> domain name because her use was in bad
faith; she did not make a bona fide offering of goods or services under that
mark because her use was confusingly similar to Complainant’s and operated in
the same industry as Complainant; Respondent’s services are not affiliated with
or licensed by Complainant; and Respondent’s current non-use of the Domain Name
undermines any right she might once have had.
- Respondent’s use of a confusingly similar mark as
part of the Domain Name, refusal to follow through with a proposed settlement
agreement, and use of Complainant’s mark as a meta-tag on Respondent’s website
all constitute evidence of Respondent’s bad faith.
B.
Respondent
Respondent
contends that:
-
Respondent, Joanna Severino, is a director and co-founder of Prepskills Inc.
(“Prepskills”), formerly known as Prep SSAT Inc., which has been providing
classroom training and private tutoring to students since May 2002 to assist
them with their preparation for various private school admission tests,
including the SSAT. Respondent, Richard
Hosko, has been listed in error, as he was to have been listed as the
Administrator for the Domain Name registration, not as a co-owner (Ms. Severino
is referred in hereto in the singular as “Respondent”
-
Respondent does not dispute that Complainant has rights in the SSAT trademark.
-
Respondent does not dispute that the Domain Name is confusingly similar to the
SSAT trademark within the meaning of Policy Paragraph 4(a)(i), in that the mark
has some similarity through the overlap of the term SSAT. Respondent denies, however, that Internet
users are likely to be confused as to the source, sponsorship, affiliation or
endorsement of the Respondent’s website.
- From May
to September of 2002, Respondent incurred significant expenses developing and
distributing marketing materials, registering its business name Prep SSAT Inc.,
retaining teachers, securing classroom locations, developing its website under
the Domain Name, developing class materials, purchasing licenses and otherwise
preparing to offer services related to preparing students to take the
SSAT. By September 2002, Respondent had
incurred over $100,000 in expenses to launch and operate its business.
-
Respondent operated under the Prep SSAT Inc. business name and the Domain Name
for two years before changing its name to Prepskills. During that time it engaged in substantial marketing efforts
under its original name, and accordingly became “commonly known by” the name
Prep SSAT, which is identical to the second level Domain Name.
-
Respondent contends that Complainant has failed to put forth evidence of bad
faith registration or use of the Domain Name.
Respondent does not administer official SSAT tests, nor does it purport
to do so. In fact, Respondent refers
prospective test takers to Complainant to take the SSAT, and assists in their
registration for the SSAT. Complainant and Respondent are thus not competitors
and there is no likelihood of confusion as to their respective roles.
–
Respondent responded to the cease and desist letter promptly, took advice of
counsel, stated its views to Complainant, and added a disclaimer to its web
site stating that the two entities are not affiliated. Respondent has seen no evidence of actual
confusion, such as inquiries from someone believing the two entities are the
same or related.
–
Respondent’s use of the word SSAT as a meta tag in both the former <prepssat.com>
website and the current <prepskills.com> website are not evidence of
an intention to confuse Internet users into believing that Respondent’s
training services are provided by, or sponsored by, Complainant. Rather, the word was used solely in its
descriptive sense, to describe goods or services that are being provided at the
website.
FINDINGS
The Panel finds that Complainant owns the
SSAT mark.
The Panel need not decide whether the
term PREPSSAT is confusingly similar to the Complainant’s mark, because, as
discussed below, the Panel finds that Complainant has not established that
Respondent lacks “rights or legitimate interests in respect of the domain name”
as defined in Paragraph 4(a)(2) of the Policy.
The Panel likewise makes no findings with
respect to whether Respondent’s conduct (including its domain name registration
or its use of Complainant’s mark in its meta-tags) constitutes trademark
infringement, or whether Respondent entered into, or violated, any settlement
agreement with Complainant. These are
matters appropriately resolved by a court rather than by a panel charged with
implementing the Policy. The sole issue
before us is whether Complainant has established all three elements of its
claim for a transfer of the Domain Name under the terms of the Policy. It has not.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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 established that it owns
trademark rights in the SSAT mark.
Respondent, moreover, admits as much.
Complainant contends that the addition of
“prep,” a generic abbreviation for the generic term “preparation” or
“preparatory,” does not eliminate the likelihood of confusion between the mark
and the Domain Name. Certainly,
numerous panels have decided under the Policy that the addition of a generic
word to a protectable trademark will not necessarily undermine a finding of
likelihood of confusion. See,
e.g., Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains Complainant’s mark combined with a generic word or
term). This Panel need not resolve the
issue, however, as the Complaint fails for the reason discussed below.
As to the second element of paragraph
4(a), Complainant fails to persuade this Panel that it has met its burden to
show that Respondent lacks any rights or legitimate interests in the Domain
Name.
Paragraph 4(c) of the Policy describes
three nonexclusive circumstances which, if found, would demonstrate a
respondent’s rights or legitimate interests in a domain name. Two of these circumstances are applicable
here: First, if the respondent, prior
to notice of the dispute, has made “use of, or demonstrable preparations to
use, the domain name . . . in connection with a bona fide offering of goods or
services.” The second is if the
respondent “has been commonly known by the domain name,” even without owning
any trademark rights under it.
In this case, Respondent has met both of
these criteria for “rights or legitimate interests” in the Domain Name. The evidence before us shows that Respondent
made use of the Domain Name in connection with the provision of test
preparation services relating to the SSAT prior to any notice from Complainant
of any dispute. In so doing, Respondent
invested many thousands of dollars in establishing its business, hiring
teachers, distributing marketing materials, registering its business name,
securing classroom locations, developing its website and class materials,
purchasing licenses and otherwise preparing to offer services directed to
preparing students to take the SSAT.
Moreover, Respondent was originally known
as Prep SSAT Inc. This business name is
virtually identical to the Domain Name but for the addition of the corporate
signifier “Inc.” which adds no trademark weight. The evidence suggests that Respondent was commonly known under
this name until, in an effort to resolve its trademark dispute with
Complainant, it switched to the Prepskills trademark. See VeriSign Inc. v.
VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding rights and
legitimate interests where domain name reflected respondent’s company name); World
Publ’ns, Inc. v. World Pen, D2000-0736 (WIPO Sept. 14, 2000) (finding
rights and legitimate interests where respondent had been conducting business
under the name incorporated into its domain name for several years).
The analysis does not, however, end
there. If Respondent’s use of the
PREPSSAT mark was in clear violation of a trademark right of Complainant’s,
Respondent’s use might well not be found to be “legitimate” and its provision
of goods or services under that mark might not be “bona fide” as required by
Paragraph 4(c)(i). Similarly, it might
not properly be deemed to have become “commonly known by” the name under
Paragraph 4(c)(ii) as interpreted by prior panels.
The reason Respondent’s use does not fall
into this category of illegitimate use of a confusingly similar trademark,
however, lies in the manner in which it has been used. Respondent does not hold itself out as a
provider of the Secondary School Admission Test, or indeed of any other
test. Rather, it holds itself out as a
provider of services designed to help students prepare for the SSAT. Indeed, it refers students to the Complainant
and assists them in signing up to take Complainant’s test. In so doing, it would be difficult, if not
impossible, for Respondent to adequately identify the services it is offering
without making reference to the SSAT.
In so doing, Respondent is not making use of “SSAT” as a trademark, i.e.
as an indicator of the source or origin of goods or services. Rather, it is using the word SSAT to refer
to the SSAT. In trademark law, this is
known as a “nominative” use, also sometimes called a “nominative fair use.” See,
e.g., The New Kids On The Block v.
News Am. Publ’g Inc., 971 F.2d 302 (9th Cir. 1991). Such uses are noninfringing.
Complainant
admits that the Secondary School Admission Test has become widely known by the
acronym “SSAT.” Accordingly, informing
the public that one is offering services designed to prepare students for that
particular test seems to virtually require the use of the widely-known name of
that test. If Respondent were
prohibited from using the term “SSAT” to identify the test for which it is
offering to prepare students, it would be disabled from effectively describing
its goods or services. Respondent is
not seeking to mislead or confuse consumers into believing that it is the
Secondary School Admission Test Board, or even that it is affiliated with that
organization. Rather, it is offering a
service distinct from, albeit ancillary to, the testing services provided by
Complainant. See Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208
(WIPO Jan. 3, 2002) (use of disputed domain name was bona fide because it
appropriately described the nature of Respondent’s services and its target
users).
Indeed,
no confusion appears to have arisen regarding the services Respondent has
provided. Respondent expressly denies
that any such confusion has occurred, and Complainant has not brought any
instances of confusion to the Panel’s attention. While that fact is not, of course, alone dispositive, it tends to
support the conclusion set forth above.
Additionally, in response to the trademark dispute it has found itself
embroiled in with Complainant, Respondent has set forth on its website a
disclaimer of any affiliation with Complainant. While again not alone dispositive, this fact too supports the conclusion
that Respondent’s purpose in selecting and using its name was to truthfully
describe its services rather than to generate trademark confusion.
Complainant
argues that it, too, provides some services related to preparing students to
take the SSAT. In that sense, perhaps
there is some direct competition between the two companies; although that
overlap appears to be relatively minimal in the context of the two companies’
overall business. But even assuming
some direct competition, the underlying principle that Respondent’s use is
nominative does not change.
Finally,
Complainant argues that its services are directed to “school-aged consumers”
who use the Internet to locate SSAT Test information. Calling these individuals “relatively unsophisticated consumers,”
Complainant argues that this fact enhances the likelihood of confusion. Respondent suggests that the real customers
for the services are the students’ parents, and that therefore this argument is
inapplicable. The Panel, moreover,
notes the absence of any evidence of record establishing that students are in
fact less sophisticated than their parents with respect to Internet usage. Indeed, there is reason to believe that at
least some parents turn to their children for their Internet education. One recent study by Hewlett-Packard, for
example, found that “[a] majority of U.S. children are enhancing their parents’
technology and Internet awareness . . . Approximately two-thirds of the 635
parents surveyed across the United States reported that their children show
them something new pertaining to technology or the Internet.” See International Communications Research, Hpshopping.com Survey Reveals How Children Teach and Influence Their
Parents in Today’s Digital Economy,
available at http://www.icrsurvey.com/ICRInTheNews/HPShop043001.html.
All such
speculation aside, however, the fact again remains that Respondent’s use of the
term SSAT is nominative, and therefore, even assuming that the users in
question are unsophisticated, it is all that much more important for a provider
of SSAT-related services to be able to use the term SSAT, the common name for
this test, so that these individuals may readily locate services designed to
help them take that particular test.
In
sum, Respondent’s use of the term SSAT in a truthful, nominative sense
undermines any contention that its use of the mark is illegitimate. Accordingly, it is entitled to the
protection of the safe harbor accorded by Policy Paragraph 4(c)(i) for domain
name owners who have made a bona fide use of their name, as well as by Paragraph
4(c)(ii) for domain owners who have become commonly known by the domain
name. Complainant has thus failed to
establish that Respondent lacks rights or legitimate interests in the Domain
Name.
Because Complainant has failed to
establish the second element of its claim under the Policy, this Panel need not
resolve the question of whether any conduct by Respondent in connection with
its registration or use of the mark has been shown by Complainant to have been
in bad faith. Nevertheless, the Panel
notes that it is unpersuaded that Complainant has advanced sufficient evidence
of any bad faith conduct. The two
substantive grounds offered – the similarity of the Domain Name to the mark and
the use of the mark in Respondent’s website meta-tags – both fail for the
reason discussed above, namely that in both of those contexts it appears that
Respondent has used the term SSAT in its nominative sense, i.e. to designate a
particular test which it offers to prepare students to take, rather than in a
trademark sense.
Such a finding does not undermine
Complainant’s ownership of the SSAT mark, nor is it intended to resolve or
prejudge any legal claims the parties may have against each other if their
dispute proceeds to court. Not every
use of a mark by an unlicensed party, however, is automatically an infringing
use. Where, as here, the context
indicates that the use is nominative, the use may be legitimate.
DECISION
Complainant
having failed to establish at least one of the three elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED.
Michael Albert, Panel Chair
Hon. James A. Carmody, Panelist
Hon. Karl V. Fink, Panelist
Dated: March 24, 2005
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