Renaissance Learning, Inc. v. Domain Administrator a/k/a Payphone Search LLC
Claim Number: FA0510000578633
Complainant is Renaissance Learning, Inc. (“Complainant”), represented by Andrew S. Ehard, of Merchant & Gould, P.C., P.O. Box 2910, Minneapolis, MN 55402. Respondent is Domain Administrator a/k/a Payphone Search LLC (“Respondent”), P.O. Box 8188, Charlestown, NEVIS 00000, KE.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <renaissancelearning.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 17, 2005.
On October 26, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <renaissancelearning.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 October 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 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@renaissancelearning.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 30, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <renaissancelearning.com> domain name is identical to Complainant’s RENAISSANCE LEARNING mark.
2. Respondent does not have any rights or legitimate interests in the <renaissancelearning.com> domain name.
3. Respondent registered and used the <renaissancelearning.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Renaissance Learning, Inc., is engaged in the business of offering educational products and services and has been operating under the RENAISSANCE LEARNING mark since September 2000. Complainant holds several trademark registrations and pending applications for the RENAISSANCE LEARNING mark in Canada, the European Union and the United States with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,805,300, filed January 8, 2001, issued January 13, 2004). Complainant has invested substantial effort and money in developing goodwill and marketing its RENAISSANCE LEARNING products and services.
Respondent registered the <renaissancelearning.com> domain name on May 31, 1999. Respondent’s website redirects Internet users to a search engine website displaying links to commercial websites offering educational-related products and services similar to those offered by Complainant.
Although Complainant asserts that it “has used the well-known RENAISSANCE LEARNING trademark in connection with educational products and services since at least as early as September of 2000,” Complainant has not made reference to use of the mark before May 31, 1999, the date Respondent registered the disputed 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."
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. 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 (Nat. Arb. 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.”).
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.
Because Respondent registered the <renaissancelearning.com> domain name on May 31, 1999 and Complainant has neither provided any
proof nor asserted use of the mark prior to Respondent’s registration date,
Complainant has failed to show that Respondent registered the disputed domain
name in bad faith pursuant to Policy ¶ 4(a)(iii).
See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
Because Complainant has failed to show bad faith, an analysis of the remaining elements is unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 14, 2005
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