NCS Pearson, Inc. v. IQ TEST
Claim Number: FA1710001752005
Complainant is NCS Pearson, Inc. (“Complainant”), represented by Patrick J. Gallagher of Cozen O’Connor, Minnesota, USA. Respondent is IQ TEST (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ravensprogressivematricestest.com>, registered with P.A. Viet Nam Company Limited.
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 October 3, 2017; the Forum received payment on October 3, 2017.
On October 8, 2017, P.A. Viet Nam Company Limited confirmed by e-mail to the Forum that the <ravensprogressivematricestest.com> domain name is registered with P.A. Viet Nam Company Limited and that Respondent is the current registrant of the names. P.A. Viet Nam Company Limited has verified that Respondent is bound by the P.A. Viet Nam Company Limited 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 October 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@ravensprogressivematricestest.com. Also on October 16, 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 November 8, 2017, 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 made the following contentions.
Complainant is a global provider of education assessments, information solutions, and learning-related goods and services. Complainant uses the RAVEN, RAVEN’S, and RAVEN’S PROGRESSIVE MATRICES AND VOCABULARY SCALES marks (“RAVEN marks”) in conjunction with its business practices. Complainant registered the RAVEN’S mark with the United States Patent Trademark Office (“USPTO”) (Reg. No. 4,818,010, registered Sept. 22, 2015). See Compl. Ex. C. Complainant also registered the RAVEN mark with the European Union Intellectual Property Office (“EUIPO”) (Reg. No. 010094746, registered Dec. 18, 2012) and the RAVEN’S
PROGRESSIVE MATRICES AND VOCABULARY SCALES mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00002284297, registered Apr. 19, 2002). Id. Respondent’s <ravensprogressivematricestest.com> is confusingly similar to Complainant’s RAVEN marks because it incorporates the marks in their entirety, adding the generic term “test” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <ravensprogressivematricestest.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the RAVEN marks in any regard. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain name. Respondent’s <ravensprogressivematricestest.com> domain name resolves to a website attempting to pass itself off by offering counterfeit versions of Complainant’s products and services under Complainant’s RAVEN marks. See Compl. Ex. F.
Respondent has registered and is using the <ravensprogressivematricestest.com> domain name in bad faith. The disputed domain name disrupts Complainant’s business by redirecting internet users to counterfeit versions of Complainant’s website and associated products and services. Respondent registered the <ravensprogressivematricestest.com> domain name with actual knowledge of Complainant and its rights to the RAVEN marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Supported Language Request
The Panel notes that Complainant requests that this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Vietnamese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the English language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Vietnamese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering all the circumstance of the present case, the Panel decides that the proceeding should be in the English language.
1. Complainant is a United States company that is a subsidiary of Pearson plc, a British multinational publishing and education company. Complainant is a
global provider of education assessments, information solutions, and learning-related goods and services.
2. Complainant has established its trademark rights in the RAVEN, RAVEN’S, and RAVEN’S PROGRESSIVE MATRICES AND VOCABULARY SCALES marks (“RAVEN marks”) by virtue of its registration of the RAVEN’S mark with the United States Patent Trademark Office (“USPTO”) (Reg. No. 4,818,010, registered Sept. 22, 2015), the RAVEN mark with the European Union Intellectual Property Office (“EUIPO”) (Reg. No. 010094746, registered Dec. 18, 2012) and the RAVEN’S PROGRESSIVE MATRICES AND VOCABULARY SCALES mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00002284297, registered Apr. 19, 2002).
3. Respondent registered the <ravensprogressivematricestest.com> domain name on March 27, 2017.
4. Respondent has caused the <ravensprogressivematricestest.com> domain name to resolve to a website attempting to pass itself off as Complainant by offering counterfeit versions of Complainant’s products and services under Complainant’s RAVEN marks.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant is a global provider of education assessments, information solutions, and learning-related goods and services. Complainant uses the RAVEN marks in conjunction with its business practices. Complainant submits that it registered the RAVEN’S mark with USPTO (Reg. No. 4,818,010, registered Sept. 22, 2015). See Compl. Ex. C. Complainant also submits that it registered the RAVEN mark with EUIPO (Reg. No. 010094746, registered Dec. 18, 2012) and the RAVEN’S PROGRESSIVE MATRICES AND VOCABULARY SCALES mark with UKIPO (Reg. No. UK00002284297, registered Apr. 19, 2002). Complainant has submitted evidence to that effect that the Panel accepts. Id. Registrations of a mark with government trademark entities is sufficient to show rights in a mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Therefore, the Panel finds that Complainant’s registrations with multiple trademark offices is sufficient to show rights in the RAVEN marks.
The next question that arises is whether the disputed domain name is identical or confusingly similar to one or more of Complainant’s registered marks. Complainant contends that Respondent’s <ravensprogressivematricestest.com> domain name is confusingly similar to Complainant’s RAVEN marks because it incorporates the marks in their entirety, adding the generic word “test” to one of them, namely the RAVEN’S PROGRESSIVE MATRICES AND VOCABULARY SCALES mark and the “.com” gTLD. Adding a generic or descriptive term and a gTLD to a mark does not remove the disputed domain name from the realm of confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where a disputed domain name contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). As such, the Panel finds that Respondent’s <ravensprogressivematricestest.com> domain name is confusingly similar to Complainant’s RAVEN marks.
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 (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 (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 RAVENS marks and to use them in its domain name, adding only the generic word “test” to one of the marks, namely RAVEN’S PROGRESSIVE MATRICES AND VOCABULARY SCALES;
(b) Respondent registered the <ravensprogressivematricestest.com> domain name on March 27, 2017;
(c) Respondent has caused the <ravensprogressivematricestest.com> domain name to resolve to a website attempting to pass itself off by offering counterfeit versions of Complainant’s products and services under Complainant’s RAVEN marks;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant asserts that Respondent does not have rights or legitimate interests in the <ravensprogressivematricestest.com> domain name. To support its assertion, Complainant illustrates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “IQ TEST.” See Compl. Amend. Ex. A. A respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, when “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name,” the Panel may determine, as it does in this proceeding, that Respondent is not commonly known by the <ravensprogressivematricestest.com> domain name; see Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003);
(f) Complainant avers it has not authorized or licensed Respondent to use the RAVEN marks in any regard. Complainant contends that Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. In support of its contention, Complainant illustrates that Respondent’s <ravensprogressivematricestest.com> resolves to a website attempting to pass itself off as Complainant by offering counterfeit versions of Complainant’s products and services under Complainant’s RAVEN marks. See Compl. Ex. F. A respondent’s attempt to pass itself off as the complainant is not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006). Moreover, no bona fide offering of goods or legitimate noncommercial or fair use exists where respondent uses the resolving website to sell products branded with complainant’s mark, and are either counterfeit products or legitimate products of Complainant being resold without authorization. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015). In the instant case, the Panel finds that Respondent does not have rights or legitimate interests in the <ravensprogressivematricestest.com> domain name under the Policy.
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 maintains that Respondent has registered and is using the <ravensprogressivematricestest.com> domain name in bad faith as the disputed domain name disrupts Complainant’s business by redirecting internet users to counterfeit versions of Complainant’s website and associated products and services. The respondent’s use of the disputed domain name to sell counterfeit products disrupts the complainant’s business and indicates bad faith under Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum Apr. 6, 2015); see also Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA1410001587466 (Forum Dec. 13, 2014) (“The Panel finds that Respondent’s use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant’s business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent’s <ravensprogressivematricestest.com> domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant contends that Respondent registered the <ravensprogressivematricestest.com> domain name with actual knowledge of Complainant and its rights to the RAVEN marks. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). In light of the fame and notoriety of Complainant's RAVEN marks, it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, as the circumstances indicate that Respondent had actual knowledge of Complainant's RAVEN marks when it registered the <ravensprogressivematricestest.com> domain name, the Panel finds that it registered the domain name in bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
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 domain name using the RAVEN marks and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name 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 <ravensprogressivematricestest.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 9, 2017
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