American Council on Education and GED Testing Service LLC v. TAMAS DAS / GED PRACTICE ONLINE
Claim Number: FA1711001760787
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 TAMAS DAS / GED PRACTICE ONLINE (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ged-ged.com>, registered with eNom, LLC.
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.
Eleni Lappa as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2017; the Forum received payment on November 30, 2017.
On December 1, 2017, eNom, LLC confirmed by e-mail to the Forum that the <ged-ged.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 December 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@ged-ged.com. Also on December 1, 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.
A timely Response was received and determined to be complete on December 1, 2017.
On December 05, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, ACE, founded in 1918, is a higher education organization that represents presidents and chancellors of all types of U.S. accredited, degree-granting institutions. Complainant GEDTS is formerly a division of Complainant ACE that was tasked with managing the GED test, the GED brand and related test administration services. Through a joint venture formed in 2011 between Complainant Ace and NCS Pearson, Inc., GEDTS has become a separate legal entity jointly controlled by Complainant ACE and NCS Pearson, but continues to carry out all of its previous duties. Complainant contends that it has been using its GED mark in commerce in connection with educational testing services since at least as early as 1946 in order to promote its products and services and established rights in the mark GED, protected also through various registrations 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 <ged-ged.com> is identical to Complainant’s mark because it includes Complainant’s GED mark twice, separated by a hyphen, and appends the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the disputed 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 disputed domain name. Respondent is not using <ged-ged.com> in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, <ged-ged.com> diverts Internet users to a website displaying competing pay-per-click hyperlinks which Respondent likely profits from. Respondent uses the domain name to divert Internet users to Respondent’s website where Respondent accrues compensation through pay-per-click links.
Respondent registered and is using the <ged-ged.com> domain name in bad faith. Respondent uses the disputed domain name to divert Internet users to Respondent’s website that directs visitors to third-party sites offering competing goods and services. Respondent attempts to attract Internet users to its website by causing confusion as to the source of the site for its own commercial gain. Respondent had constructive and actual knowledge of Complainant’s rights in the GED mark at the time it registered the infringing domain name.
B. Respondent
Other than Google AdSense, the <ged-ged.com> domain name’s resolving website does not have any direct commercial intent by way of links or redirecting users. The disputed domain name’s resolving website content was written several years ago and may not currently feature any active links. Respondent does not earn anything significant from the domain name.
Complainant ACE owns, inter alia, the following U.S. trademark registrations for the GED® trademarks, that are valid and in effect for various goods and services related to educational testing, including the following: Reg. Nos. 4,283,155, 4,283,156, 4,351,637, 4,437,506, and 4,351,656 for GED & Design; Reg. Nos. 2,613,984, 4,283,140, 4,283,154, 4,351,631, and 4,437,505 for GED; Reg. No. 4,283,162 for GED ACCESSPOINT, Reg. No. 4,519,013 for GED READY, Reg. No. 4,353,721 for GED CONNECTION, Reg. No. 4,283,166 for GED MARKETPLACE, Reg. No. 3,448,412 for GED TESTING SERVICE, and Reg. No. 4,519,175 for MYGED, and Reg. No. 4,741,901 for GED ACADEMY. Complainant’s first registered USPTO trademark for the term GED is Reg. No. 1,321,397, for GED & design, covering educational testing services, filed on March 06, 1984 and registered on February 19, 1985
Respondent has no apparent or claimed registered or unregistered rights regarding the term GED.
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.
Complainant submitted evidence of its various registrations of its GED trademark with the USPTO as noted above. See Compl. Ex. A. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Therefore, the Panel finds that Complainant has rights in the GED trademark.
Respondent’s <ged-ged.com> is identical to Complainant’s trademark because it incorporates it, in its entirety and the duplication of the GED trademark a second time actually places emphasis on the trademark at issue, while the fact that the repeated twice trademark is separated by a hyphen, does not negate the confusing similarity between <ged-ged.com> and the GED trademark under the Policy. Moreover, appending the generic top-level domain (“gTLD”) to the fully incorporated GED mark does not avert confusion. Domain names that append a gTLD to a fully incorporated mark are considered identical to the mark. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Therefore, the Panel holds that Respondent’s <ged-ged.com> is identical to Complainant’s mark.
The 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 understands that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant, that Respondent has never requested or received any authorization, permission or license from Complainant to use the GED trademark in any way and that Respondent has never been commonly known by the <ged-ged.com> domain name or by the GED trademark and has never acquired any trademark rights in the same. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name <ged-ged.com>.
Respondent’s website currently resolves to a site containing numerous sponsored links to other commercial sites that advertise services or education products that compete with those offered by Complainant under the GED trademark, presumably for compensation in the form of “clickthrough” payments. Some of the sponsored links are “GED Test,” “GED Preparation,” and “Top 10 Learning Software.” See Compl. Ex. D. As such, the Panel concludes that Respondent is not using <ged-ged.com> in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ged-ged.com> domain name be TRANSFERRED from Respondent to Complainant.
Eleni Lappa, Panelist
Dated: December 19, 2017
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