Center for Educational Development and Research San Joaquin County Office of Education v. DOMAIN MANAGER / WEB D. G. LTD.
Claim Number: FA1508001632954
Complainant is Center for Educational Development and Research San Joaquin County Office of Education (“Complainant”), represented by Joshua Micheals, California, United States. Respondent is DOMAIN MANAGER / WEB D. G. LTD. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <edjoin.com>, registered with Uniregistrar Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 11, 2015; the Forum received payment on August 21, 2015.
On August 12, 2015, Uniregistrar Corp confirmed by e-mail to the Forum that the <edjoin.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 August 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 2015 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@edjoin.com. Also on August 26, 2015, 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 September 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 is a department of the San Joaquin County Office of Education in the United States. Complainant has common law trademark rights to the EDJOIN mark which is used in connection with the provision of online resource for education-specific job postings and applicant tracking. The EDJOIN mark has been used since 1988 and specifically by Complainant since early 2000 and prior to the registration of the disputed domain name on August 20, 2000. The <edjoin.com> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name resolves to a website that displays hyperlinks that compete directly with Complainant’s business.
Respondent has registered and is using the disputed domain name in bad faith. Respondent has demonstrated bad faith by using the disputed domain name to promote products and services that compete directly with Complainant’s business, thereby violating Policy ¶ 4(b)(iv). Further, Respondent engaged in conduct proscribed by Policy ¶ 4(a)(iii) by registering the disputed domain name with constructive and/or actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a department of the San Joaquin County Office of Education in California and the current contractor to and sole representative of the California County Superintendents Educational Services Association for the provision of an online resource for education-specific job postings and applicant tracking.
2. Complainant has established common law trademark rights in and for the use of the EDJOIN mark since at least March 3, 2000 in the provision of that resource.
3. The disputed domain name was registered on August 20, 2000.
4. The disputed domain name resolves to a website that displays hyperlinks that compete directly with Complainant’s business.
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(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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant acknowledges that it does not have a registered trademark but submits that it has common law trademark rights to a mark referred to as both EDJOIN and ED-JOIN (“the EDJOIN mark”) and that the mark is used in connection with the provision of online resources for education-specific job postings and applicant tracking. The evidence is that the EDJOIN mark has been used for this purpose since 1988, well before the registration of the disputed domain name on August 20, 2000. The involvement of Complainant comes about from the fact that Complainant has used the EDJOIN mark since early 2000 and therefore also prior to the registration of the disputed domain name. The history of the mark, and the services with which it is associated, is that the California County Superintendents Educational Services Association established the system in 1998 to provide an online resource for education specific job postings and applicant tracking. The Santa Clara County Office of Education initially became the contractor to design, build, and manage assets for the system. However, Complainant, the Center for Educational Development and Research, which is a department of the San Joaquin County Office of Education, is the current contractor to and sole representative of the California County Superintendents Educational Services Association for the provision of this service under the mark. Its function in that regard is to store, maintain, develop, operate, and support the resource operated under the EDJOIN mark. The evidence is that the mark “has been well known in the California public education sector for over fifteen years now, and has been advertised in education nationally for over three years. A basic search will reveal that EDJOIN is recognized (by) the California Department of Education, most California school districts, other online job resources, and mentioned in news media.” The evidence is also that Complainant has been using the EDJOIN mark for this purpose since early in the year 2000 and has regularly, “updated, maintained, redesigned, and supported the job posting and applicant tracking system that are synonymous with the ED-JOIN/EDJOIN marks.” Part of the evidence is that Complainant registered the domain name <edjoin.org> on March 3, 2000, showing that Complainant used the EDJOIN mark to perform its functions with respect to the resource since at least that date. This history is set out in the Complaint and has been verified, as has the statement that the Complaint is brought on behalf of the California County Superintendents Educational Services Association. The Panel accepts the evidence and finds that the totality of the evidence shows that the EDJOIN mark is and has been associated solely with the services provided by Complainant since early 2000 and at least since March 3, 2000 for the California County Superintendents Educational Services Association for an online resource for education specific job postings and applicant tracking and for related goods and services. Accordingly, the Panel finds that Complainant has demonstrated its rights in the mark pursuant to Policy ¶ 4(a)(i) which arise both by its use of the mark by Complainant and its approved activities on behalf of the California County Superintendents Educational Services Association and since at least March 3, 2000.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EDJOIN mark. The Panel finds that the <edjoin.com> domain name is identical to Complainant’s mark as it incorporates the mark in its entirety and merely adds the gTLD “.com.” Past panels have found that the mere addition of a gTLD to a mark does not serve to distinguish the domain name adequately from the mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The disputed domain name is also confusingly similar to the mark on those occasions when it is spelt ED-JOIN, as it has long been recognized that the absence of a hyphen cannot negate confusing similarity which is otherwise present, as it is in the present case.
For these reasons, the Panel finds that the disputed domain name is identical and confusingly similar to Complainant’s EDJOIN mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s EDJOIN mark and to use it
in its disputed <edjoin.com> domain name;
(b) Respondent registered the disputed domain name on August 20, 2000;
(c) Respondent has used the disputed domain name to resolve to a website that
displays hyperlinks that compete directly with Complainant’s business;
(d) Respondent engaged in the aforementioned activities without the permission
or authority of Complainant;
(e)Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant alleges that Respondent is not licensed or authorized to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “DOMAIN MANAGER / WEB D. G. LTD.” as registrant and that Respondent has failed to submit any evidence for the Panel’s consideration. The Panel also notes Attached Annex 2 for additional WHOIS information. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(f)Complainant contends that Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Complainant argues that Respondent’s disputed domain name resolves to a website that displays hyperlinks that compete directly with Complainant’s business. Past panels have held that a respondent has not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when the website resolving from the disputed domain name displayed links to products and services which directly competed with the complainant’s business. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, the Panel finds that 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) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has demonstrated bad faith by using the disputed domain name, for commercial gain, to promote products and services that compete directly with Complainant’s business, thereby violating Policy ¶ 4(b)(iv). Past panels have found bad faith where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s, and where the respondent presumably commercially benefited. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Accordingly, the Panel finds that Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent has engaged in conduct proscribed by Policy ¶ 4(a)(iii) by registering the disputed domain name with constructive and/or actual knowledge of Complainant’s mark. Specifically, Complainant argues that the EDJOIN mark was well-known at the time that Respondent registered its disputed domain name. While previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). As the Panel infers Respondent’s actual knowledge of the EDJOIN mark based on the circumstances, the Panel finds bad faith registration per Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <edjoin.com> domain name using the EDJOIN mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <edjoin.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 14, 2015
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