American Council on Education and GED Testing Service LLC v. Above.com Domain Privacy
Claim Number: FA1708001743123
Complainant is American Council on Education and GED Testing Service LLC (“Complainant”), represented by Patrick J. Gallagher of Cozen O’Connor, Minnesota, USA. Respondent is Above.com Domain Privacy (“Respondent”), Austrailia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gedlive.com>, registered with Above.com Pty Ltd..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2017; the Forum received payment on August 4, 2017.
On August 6, 2017, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <gedlive.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 2017 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@gedlive.com. Also on August 7, 2017, 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 August, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, American Council on Education and GED Testing Service LLC, is a higher education organization that represents educational administrators. In connection with this business, Complainant uses the GED marks to promote its goods and services.
Complainant has rights in the GED mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,613,894, registered Sep. 3, 2002).
Respondent’s <gedlive.com> is confusingly similar as it appends the generic term “live” and the generic top-level-domain (“gTLD”) “.com” to Complainant’s wholly incorporated mark.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent’s use of the GED marks. Further, Respondent fails to use <gedlive.com> in connection with a bona fide offer of goods or services or for a legitimate noncommercial or otherwise fair use; instead, the disputed domain name resolves to a page containing pay-per-click hyperlinks to other commercial sites that compete with Complainant’s business.
Respondent registered and uses <gedlive.com> in bad faith. Respondent hosts links that direct visitors to third-party websites offering goods and services that compete with Complainant’s business. Respondent had actual knowledge of Complainant’s rights in the GED marks prior to registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GED mark as evidenced by its registration of such mark with the USPTO.
Complainant’s rights in the GED mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the at-issue domain name to address a website that displays pay-per-click links to goods and/or services that compete with those offered by Complainant.
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(f), 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 (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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant registered its GED mark with the USPTO. Such registration is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s domain name starts with Complainant’s GED trademark, adds the descriptive term “live” and concludes with the top-level domain name “.com”. The slight differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Notably, the term “live” suggests Complainant’s mark to the extent that mark is peripherally related to “live” testing. The presence of the term “live” in the domain name thus adds to the confusion caused by the domain name’s inclusion of Complainant’s GED trademark. Further, top level domains are a necessary part of a domain name’s syntax and have long been held irrelevant to analysis under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <gedlive.com> domain name is confusingly similar to Complainant’s GED trademark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); also see, Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Above.com Pty Ltd” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <gedlive.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <gedlive.com> domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Respondent’s <gedlive.com> domain name addresses a website that lists pay-per-click links, some of which relate to services or products competing with those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below there is sufficient evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses it confusingly similar domain name to offer pay-per-click links that refer goods or services that complete with those offered by Complainant. Respondent’s hosting of links to third party competitors demonstrates bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Hilton Group plc v. Forum LLC, D2005-0244 (WIPO Apr. 22, 2005) (holding that the bad faith prong is satisfied where a respondent “used the Complainant’s well known trademark . . . to attract users to Respondent’s website thereby linking and redirecting the said users to other competing . . . websites”).
Additionally, Respondent registered <gedlive.com> knowing that Complainant had trademark rights in the GED trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s suffixing the GED mark in the at-issue domain name with a term which reasonably suggests Complainant’s business activity. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <gedlive.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gedlive.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 3, 2017
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