NCS Pearson, Inc. v. Genius Media
Claim Number: FA1812001820046
Complainant is NCS Pearson, Inc. (“Complainant”), represented by Patrick J. Gallagher of Cozen O’Connor, Minnesota, USA. Respondent is Genius Media (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wechslertest.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 7, 2018; the Forum received payment on December 7, 2018.
On December 10, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wechslertest.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@wechslertest.com. Also on December 10, 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 January 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant uses the trademark WECHSLER in connection with educational assessment and information solutions in many countries throughout the world. Complainant has rights in the WECHSLER trademark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,768,631, registered May 4, 1993).
Respondent’s <wechslertest.com> domain name is confusingly similar to Complainant’s WECHSLER trademark, as the domain name incorporates the mark in its entirety, merely adding the generic term “test” and a generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <wechslertest.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the WECHSLER trademark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent diverts users to the disputed domain name where it hosts embedded ads that link to competing websites. Further, Respondent’s use of a disclaimer does not alleviate any likelihood of confusion.
Respondent registered and is using the <wechslertest.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it features links to Complainant’s competitors. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the WECHLSER mark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations.
No. 2,808,520 WECHSLER ABBREVIATED SCALE OF INTELLIGENCE, registered January 27, 2004 for goods in class 16;
No. 2,033,953 WECHSLER MEMORY SCALE, registered January 28, 1997 for goods in class 16:
No. 1,956,456 WECHSLER INTELLIGENCE SCALE FOR CHILDREN, registered February 13, 1996 for goods in class 9;
No. 1,768,631 WECHSLER, registered May 4, 1993 for goods in class 16;
No. 1,788,112 WECHSLER ADULT INTELLIGENCE SCALE, registered August 17, 1993 for goods in class 16;
No. 1,788,100 WECHSLER INDIVIDUAL ACHIEVEMENT TEST, registered August 17, 1993 for services in class 38;
No. 1,768,960 WECHSLER INTELLIGENCE SCALE FOR CHILDREN, registered May 4, 1993 for services in class 42; and
No. 1,768,593 WECHSLER INTELLIGENCE SCALE FOR CHILDREN, registered May 4, 1993 for goods in class 16.
The disputed domain name was registered on June 8, 2014.
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 will 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.”).
Complainant claims to have rights in the WECHSLER trademark based upon registration of the trademark with the USPTO (e.g. Reg. No. 1,768,631, registered May 4, 1993). Accordingly, the Panel finds that Complainant has rights in the WECHSLER trademark under Policy ¶ 4(a)(i). 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.”).
Complainant next argues Respondent’s <wechslertest.com> domain name is confusingly similar to the WECHSLER trademark as it incorporates the mark in its entirety, merely adding the generic term “test” and a generic top-level domain (“gTLD”) “.com.” Addition of a generic term and a gTLD is insufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). 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 agrees that the disputed domain name is confusingly similar to Complainant’s WECHSLER trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <wechslertest.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the WECHSLER trademark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
The WHOIS information of record identifies the owner of the disputed domain name as “Genius Media” and no information on record indicated that Respondent was authorized to register a domain name with Complainant’s trademark. The Panel therefore find under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <wechslertest.com> domain name.
Complainant further argues Respondent’s lack of rights and legitimate interests in the <wechslertest.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. The Panel notes that the disputed domain name resolves to a website which is being used to obtain click-through revenue by linking to websites competing with the Complainant. Use of a domain name to host a page for third-party links is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations action 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.”).
The Panel finds the Complainant’s arguments evidence sufficient, and thereby concludes that Respondent does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant contends that Respondent’s use of a disclaimer is insufficient to indicate any rights or legitimate interests in the <wechslertest.com> domain name. The mere existence of a disclaimer may not be sufficient to confer rights and legitimate interests in a disputed domain name. See Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that the respondent wishes to trade on the fame of the complainant’s trademark, regardless of the presence of a small-print disclaimer that is unavailable to Internet users until they have already entered the gambling site, because the disclaimer fails to remedy initial confusion) .
The Panel agrees and finds that Respondent’s use of the disclaimer does not reduce a likelihood of confusion and does not confer any rights or legitimate interests in the WECHSLER trademark per Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith is indicated by its use of the <wechslertest.com> domain name to host links to third-party websites that offer competing services, and displaying pay-per-click links that send users to competitor’s websites. Use of a domain name to offer links to third-party competitors may well indicate bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See RetailMeNot, Inc. v. Above.com Domain Privacy, FA 1714474 (Forum Mar. 21, 2017) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also 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)”).
Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant contends that Respondent had actual and constructive knowledge of Complainant’s rights in the WECHSLER trademark. The Panel notes that while constructive notice may be insufficient to demonstrate bad faith, actual knowledge may support a finding of bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Further, a respondent’s actual knowledge of a complainant’s trademarks when registering a disputed domain name indicates bad faith and may be shown through the fame and Respondent’s use of the mark. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”).
The Panel finds that Respondent had actual knowledge of Complainant’s rights in the WECHLSER trademark when the disputed domain was registered and thus acted in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wechslertest.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 4, 2019
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