Moodle Pty Ltd and Martin Dougiamas v. beats
Claim Number: FA1811001814644
Complainant is Moodle Pty Ltd and Martin Dougiamas (“Complainant”), represented by Enrico A. Schaefer of Traverse Legal, PLC, Michigan, USA. Respondent is beats (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moodlemoot.com>, registered with Megazone Corp., dba HOSTING.KR.
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 November 1, 2018; the Forum received payment on November 1, 2018.
On November 7, 2018, Megazone Corp., dba HOSTING.KR confirmed by e-mail to the Forum that the <moodlemoot.com> domain name is registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the name. Megazone Corp., dba HOSTING.KR has verified that Respondent is bound by the Megazone Corp., dba HOSTING.KR 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 November 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2018 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@moodlemoot.com. Also on November 12, 2018, 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 December 5, 2018, 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 operates a very well-known open source course management system licensed and provided under the GNU general public license version 3, as available at <moodle.com> and <moodle.org>. Complainant enables educators across the world to create Internet-based educational communities, courses, and websites. Complainant has rights in the MOODLE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,063,893, registered Feb. 28, 2006). See Compl. Ex. 8. Complainant also has common law rights in the MOODLEMOOT mark since July 19, 2004 in connection with organizing and operating events. See Compl. Exs. 11 & 12. Respondent’s <moodlemoot.com> domain name is identical or confusingly similar to Complainant’s mark as it fully incorporates Complainant’s marks.
Respondent has no rights or legitimate interests in the <moodlemoot.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the resolving webpage as a parking page, with links to various third-party websites offering services similar to those offered by Complainant. See Compl. Ex. 15.
Respondent registered and uses the <moodlemoot.com> domain name in bad faith. Respondent has offered to sell the domain name both directly to Complainant and also to the general public. See Compl. Exs. 4, 15, and 16. Further, Respondent has been involved in numerous prior UDRP proceedings where the Panel has found bad faith warranting the transfer of the domain names. See Compl. Exs. 13 and 17. Additionally, Respondent is using the disputed domain name in attempts to intentionally mislead Internet users by deceptively attracting them to Respondent’s parking page website for commercial gain. See Compl. Ex. 15. Moreover, in the event that the disputed domain name was acquired from “Noorinet” by Respondent in 2017, Respondent would have likely been aware of the Complainant’s registration of MOODLE mark and use of MOODLEMOOT in the open source learning platform industry.
1. Complainant is an Australian company that operates a very well-known open source course management system.
2. Complainant has established its trademark rights in the MOODLE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,063,893, registered Feb. 28, 2006).
3. Complainant has also established its common law rights in the MOODLEMOOT mark since July 19, 2004 in connection with organizing and operating events.
4. Respondent registered the <moodlemoot.com> domain name on February 4, 2009.
5. Respondent uses the webpage to which the disputed domain name resolves as a parking page, with links to various third-party websites offering services similar to those offered by Complainant and has tried to sell the domain name to 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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants and the question arises whether there may be two complainants in the present proceeding. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two (2) Complainants in this matter are Moodle Pty Ltd (“Moodle”) and Martin Dougiamas (“Martin”). Both Complainants claim an interest in the outcome of this proceeding as Complainant Martin is the founder and director of Complainant Moodle.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. The Panel will therefore treat them both as a single entity in this proceeding. Accordingly, throughout this decision, the Complainants will be collectively referred to as “Complainant.”
Preliminary Issue: Required Language of Complaint
The Panel notes that the Registration Agreement of the domain name is written in Korean, thereby making Korean the language of the proceedings. It is therefore open to the Panel to decide, per Rule 11, that because the Respondent signed an agreement in Korean, the Complaint should be resubmitted in Korean and the case recommenced. Alternatively, it is open to the Panel to decide to continue the case with the English-language submission of the Complaint. See Rule 11.
Complainant has submitted that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent’s website available at the disputed domain name uses the English language, suggesting that Respondent is at least proficient in the English language. See Compl. Ex. 12. Further, Complainant is neither conversant nor proficient in the Korean language and it would involve delay and unnecessary costs to translate the document.
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 and that the matter may go forward on that basis.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the MOODLE mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,063,893, registered Feb. 28, 2006). See Compl. Ex. 8. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the MOODLE mark for the purposes of Policy ¶ 4(a)(i).
Complainant also submits that in addition to the MOODLE mark it holds common law rights in the MOODLEMOOT mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark during that time. It will be recalled that Respondent registered the <moodlemoot.com> domain name on February 4, 2009. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning of the expression used in the trademark. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant avers it has expended a great deal of time, effort, money, and care into developing and promoting the MOODLEMOOT product and offerings in order to provide high quality open source learning platforms. Complainant provides evidence of its use of the mark since July 19, 2004. See Compl. Exs. 11 & 12. As such, the Panel finds that Complainant does hold common law rights in the MOODLEMOOT mark for the purposes of Policy ¶ 4(a)(i) and from July 19, 2004.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MOODLE or MOODLEMOOT marks.
Complainant argues that Respondent’s <moodlemoot.com> domain name is identical or confusingly similar to Complainant’s MOODLE and MOODLEMOOT marks as it fully incorporates Complainant’s marks in the domain name. The Panel notes that the domain name also adds the “.com” generic top-level domain (“gTLD”) and finds that similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). On the question of whether the domain name is confusingly similar to the MOODLE mark, the Panel notes that the domain name adds the word “moot” and the “.com” gTLD and finds that such changes do not distinguish the mark from the domain name for the purposes of the Policy. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel therefore finds that the <moodlemoot.com> domain name is identical to the MOODLEMOOT mark, and confusingly similar to the MOODLE 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
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 MOODLEMOOT trademark and to use it in its domain name;
(b) Respondent registered the <moodlemoot.com> domain name on February 4, 2009;
(c) Respondent uses the webpage to which the disputed domain name resolves as a parking page, with links to various third-party websites offering services similar to those offered by Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <moodlemoot.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “beats / beats” as the registrant. See Compl. Ex. 4. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the MOODLE or MOODLEMOOT marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by the <moodlemoot.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent uses the resolving webpage as a parking page, with links to various third-party websites offering services similar to those offered by Complainant. Using a domain name to offer links to services in direct competition with a complainant generally does not amount to a bona fide offering of goods or services or a 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.”). Complainant provides a screenshot of the resolving webpage associated with the disputed domain name, which displays links such as “Elearning LMS” and “ LMS ELearning.” See Compl. Ex. 15. Accordingly, the Panel finds that Respondent’s use of the domain name to offer competing hyperlinks fails to confer rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) or (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 submits that Respondent has offered to sell the domain name both directly to Complainant and also to the general public. Offering a confusingly similar domain name for sale can evince bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Complainant provides various examples of this offer to sell the domain name, which includes the offer posted on the WHOIS information website, the words “Buy this domain” displayed on the resolving webpage, and an email from Respondent soliciting the sale of the domain name to Complainant. See Compl. Exs. 4, 15, and 16. Accordingly, the Panel finds that Respondent’s offering of the domain name for sale is, in all the circumstances, evidence of bad faith per Policy ¶ 4(b)(i).
Secondly, Complainant contends that Respondent has been involved in numerous prior UDRP proceedings where the Panel has found bad faith warranting the transfer of the domain names. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to evidence bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides UDRP cases listing the respondent as both “Noorinet” and “Beats” in which the domain names have transferred to the complainant in the matter. See Compl. Exs. 13 & 17. Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith based on Respondent’s prior history of registering confusingly similar domain names.
Thirdly, Complainant submits that Respondent is using the disputed domain name in attempts to mislead Internet users intentionally by deceptively attracting them to Respondent’s parking page website for commercial gain. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). As noted above, Complainant provides a screenshot of the resolving webpage associated with the disputed domain name, which displays links such as “Elearning LMS” and “ LMS ELearning.” See Compl. Ex. 15. Accordingly, the Panel finds that Respondent attempted to benefit commercially from the use of Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Fourthly, Complainant argues that in the event that the disputed domain name was acquired from “Noorinet” by Respondent in 2017, Respondent would have likely been aware of the Complainant’s registration of the MOODLE mark and use of the MOODLEMOOT mark in the open source learning platform industry. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince 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). Complainant contends that the registration information changed to “Beats” on or about March 15, 2017, and at that time Respondent should have known of Complainant’s rights given the long prior use of the mark by Complainant. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under 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 domain name using the MOODLE and MOODLEMOOT marks 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 <moodlemoot.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: December 6, 2018
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