Thomson Education Direct Inc. and Thomson Learning Inc. and Thomson Canada Limited v. Domain Administration Limited c/o David Halstead
Claim Number: FA0611000843555
Complainant is Thomson Education Direct Inc. and Thomson
Learning Inc. and Thomson Canada Limited (collectively, “Complainant”), represented by Mark
Lerner, of Satterlee Stephens Burke & Burke LLP,
230 Park Avenue, New York, NY 10169.
Respondent is Domain Administration Limited c/o David
Halstead (“Respondent”),
REGISTRAR
The domain name at issue is <thomsoneducation.com>, registered with Enom, 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
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <thomsoneducation.com> domain name is confusingly similar to Complainant’s THOMSON EDUCATION DIRECT mark.
2. Respondent does not have any rights or legitimate interests in the <thomsoneducation.com> domain name.
3. Respondent registered and used the <thomsoneducation.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Thomson
Education Direct Inc. and Thomson Learning Inc. and Thomson Canada Limited,
provide online and print materials that enable at-home eduction through its
website located at the <thomsomeducationdirect.com> domain name. Complainant has been using its THOMSON
EDUCATION DIRECT mark in commerce since 2001, and holds a trademark
registration with the United States Patent and Trademark Office (“USPTO”) for
the the THOMSON EDUCATION DIRECT mark (Reg. No. 2,825,772 issued
Respondent registered the <thomsoneducation.com>
domain name on
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
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.
The Panel finds that Complainant’s trademark registration
with the USPTO sufficiently establishes Complainant’s rights in the THOMSON
EDUCATION DIRECT trademark.
Additionally, the Panel finds that Complainant’s rights in the trademark
date back to the filing date of the application with the USPTO, which in this
case is
Respondent’s <thomsoneducation.com>
domain name is confusingly similar to Complainant’s THOMSON EDUCATION DIRECT
trademark as it contains the dominant portion of Complainant’s mark, omitting
only the word “direct” from the end of the mark. Omitting the last word of Complainant’s mark
is not sufficient to negate the confusing similarity that exists between
Complainant’s mark and Respondent’s disputed domain name under Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat.
Arb. Forum
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant initially must establish that Respondent lacks
rights or legitimate interests in the <thomsoneducation.com>
domain name. However, once Complainant
makes a prima facie case, the burden of proof shifts and Respondent must
show that it has rights or legitimate interests in the disputed domain
name. See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent is using the disputed domain name to operate a
website that displays hyperlinks to third-party websites in direct competition
with Complainant, as well as to Complainant’s own websites, presumably for
Respondent’s own commercial benefit through the earning of click-through
fees. Such use does not give Respondent
rights or legitimate interests in the <thomsoneducation.com>
domain name as Respondent’s use 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 Charles Letts & Co. v.
Citipublications, FA 692150 (Nat. Arb. Forum
Additionally, the Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information does not
indicate that Respondent is commonly known by the <thomsoneducation.com> domain name
and there is no other evidence in the record to suggest that Respondent is
commonly known by the disputed domain name.
Complainant asserts that Respondent is not authorized to use
Complainant’s THOMSON EDUCATION DIRECT mark and that Respondent is not
associated with Complainant in any way.
The Panel thus finds that Respondent is not commonly known by the <thomsoneducation.com> domain name
under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel finds that Respondent is using the <thomsoneducation.com> domain name to
redirect Internet users to a website that contains hyperlinks to third-party
websites, some of which are in direct competition with Complainant. Under Policy ¶ 4(b)(iii),
such use constitutes a disruption of Complainant’s business. See Puckett, Individually v. Miller, D2000-0297 (WIPO
Moreover, the Panel finds, based on the uncontested evidence
presented by Complainant, that Respondent receives click-through fees for the
hyperlinks displayed on the website that resolves from the <thomsoneducation.com> domain
name. The Panel also finds that
Respondent’s disputed domain name is capable of creating a likelihood of
confusion as to the source and affiliation of Complainant with the disputed
domain name and corresponding website. In Drs. Foster & Smith,
Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thomsoneducation.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret), Panelist
Dated: January 4, 2007
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