American Council on Education and GED Testing Service LLC v. ZLATAN DZEBIC
Claim Number: FA1710001752633
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 ZLATAN DZEBIC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ged101.com>, registered with NameSilo, LLC.
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 6, 2017; the Forum received payment on October 6, 2017.
On October 9, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <ged101.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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@ged101.com. Also on October 13, 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 7, 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, ACE, is a higher education organization that represents presidents and chancellors of all types of U.S. accredited, degree-granting institutions, including community colleges, four year higher education institutions, private and public universities, and for-profit and not-for-profit colleges. In connection with this business, Complainant uses its GED mark to offer various goods and services related to educational testing. Complainant has rights in the GED mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,613,984, registered Sep. 3, 2002). See Compl. Ex. A. Respondent’s <ged101.com> domain name is confusingly similar to Complainant’s mark because it appends the number “101” and the generic top-level domain “gTLD” “.com” to the fully incorporated GED mark.
Respondent does not have rights or legitimate interests in the <ged101.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its GED mark in any fashion, and Respondent is not commonly known by the name. Respondent is not using the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the confusingly similar domain name to divert Internet users from Complainant’s site to Respondent’s site for Respondent’s commercial benefit. Further, <ged101.com> resolves to a site featuring click-through links that advertise services or education products that compete with Complainant’s business.
Respondent registered and is using the disputed domain name in bad faith. Respondent diverts Internet traffic and creates the likelihood of confusion for commercial gain by linking to competitors of Complainant on the website resolving from the <ged101.com> domain name. Complainant’s USPTO registration put Respondent on constructive notice of Complainant’s rights in the GED mark. Further, due to the fame of the mark and Respondent’s use of the mark, it is inconceivable that Respondent did not have actual knowledge of Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that represents heads of
educational institutions and offers goods and services related to educational testing.
2. Complainant has established its rights in the GED mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,613,984, registered Sep. 3, 2002).
3. Respondent registered the <ged101.com> domain name on December 28, 2007.
4. Respondent uses the confusingly similar domain name to divert Internet users from Complainant’s site to Respondent’s site for Respondent’s commercial benefit and causes it to resolve to a site featuring click-through links that advertise services or education products competing 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(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 submits that it has rights in the GED mark based upon its registration of the mark with the USPTO (e.g. Reg. No. 2,613,984, registered Sep. 3, 2002). Registration with a national trademark agency such as the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(iii). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds that Complainant has rights in the GED mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GED mark. Complainant submits that Respondent’s <ged101.com> domain name is confusingly similar to Complainant’s mark because it appends the number “101” and the gTLD “.com” to the fully incorporated GED mark. The addition of a number and a gTLD to a mark do not negate confusing similarity. See Novartis AG v. boggs, william, FA 1570988 (Forum Aug. 25, 2014) (finding that the <freshlook2.com> domain name was confusingly similar to the complainant’s FRESHLOOK mark because the domain name contained the mark in its entirety and merely added the number “2”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). As such, the Panel finds that Respondent’s <ged101.com> domain name is confusingly similar to Complainant’s mark.
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 GED trademark and to
use it in its domain name, adding only the numbers 101 that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <ged101.com> domain name on December 28, 2007;
(c) Respondent uses the domain name to divert Internet users from Complainant’s site to Respondent’s site for Respondent’s commercial benefit and causes it to resolve to a site featuring click-through links that advertise services or education products competing with Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in <ged101.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the GED mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. See WHOIS information of record, dated Oct. 6, 2017 (listing “Domain Administrator / See PrivacyGuardian.org” as registrant name). As a result, the Panel notes that the WHOIS information of record identifies Respondent as “ZLATAN DZEBIC.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name;
(f) Complainant submits that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant asserts that Respondent uses the confusingly similar domain name to divert Internet users from Complainant’s site to Respondent’s website for Respondent’s commercial benefit. Further, Complainant argues that the <ged101.com> domain name resolves to a site featuring click-through links that advertise services and education products that compete with Complainant’s business. Use of a confusingly similar domain name to divert Internet users to Respondent’s website that features competing click-through hyperlinks is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). As such, the Panel concludes that Respondent is not using the <ged101.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use, and thus lacks rights and legitimate interests in the name per Policy ¶¶ 4(c)(i) and (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 is disrupting Complainant’s business by using the confusingly similar domain name to divert Internet users from Complainant’s site to Respondent’s competing site. Use of a domain name to disrupt a complainant’s business is evidence of bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Here, screenshots of Respondent’s website indicate that the site features hyperlinks for competing services such as “Free Ged Classes Online,” “How to Get The Ged Online,” and “Free GED Test & Exam Questions 2017.” See Compl. Ex. D. Complainant argues that these links lead to the website for Penn Foster High School, a competitor of Complainant’s business. Id. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant submits that Respondent is using the confusingly similar domain name to attract Internet traffic and benefit commercially from the goodwill of the GED mark by resolving to a website that features Complainant’s marks and competing hyperlinks. See Compl. Ex. D. Use of a domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of its website is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”). As such, the Panel concludes that Respondent registered and is using the <ged101.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant submits that Respondent had constructive notice of Complainant’s rights in the UBS mark because Complainant registered the mark with the USPTO. Arguments of bad faith based on constructive notice are irrelevant, because UDRP decisions have declined to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
However, Complainant also submits that Respondent had actual knowledge of Complainant’s rights in the GED mark due to the fame of the mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is sufficiently famous. 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).”). Here, Complainant claims Complainant’s GED mark has created significant good will and consumer recognition around the world since it was founded in 1918. See Amend. Compl. pg. 3. Due to the fame of Complainant’s mark, the Panel finds Respondent had actual knowledge of Complainant’s rights when the <ged101.com> domain name was registered and subsequently used.
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 GED mark and in view of the conduct that Respondent has engaged in when using the disputed 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 <ged101.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
, Panelist
Dated: November 8, 2017
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