American Council on Education and GED Testing Service LLC v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd
Claim Number: FA1812001821239
Complainant is American Council on Education and GED Testing Service LLC (“Complainant”), represented by Mayura I Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gedmanager.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2018; the Forum received payment on December 14, 2018.
On December 17, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gedmanager.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 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2019 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@gedmanager.com. Also on December 17, 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 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, 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 its use in commerce dating back to 1946 and its registrations with the United States Patent and Trademark Office (“USPTO”) that date back to 2002. Respondent’s <gedmanager.com> domain name, registered on December 17, 2015, is confusingly similar to Complainant’s mark because it appends the generic and/or descriptive term “manager” and the “.com” generic top-level domain “gTLD” to the fully incorporated GED mark.
Respondent does not have rights or legitimate interests in the <gedmanager.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its GED mark in any manner, and Respondent is not commonly known by the name. Respondent is not using the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the confusingly similar <gedmanager.com> domain name to divert Internet users from Complainant’s site to Respondent’s own site for its commercial benefit. Further, the disputed domain name 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 <gedmanager.com> 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 disputed domain name. Complainant’s USPTO registrations 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) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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.”).
Complainant claims rights in the GED mark based upon its registration of the mark with the USPTO. Registration with a national trademark agency, such as the USPTO, is sufficient to establish rights in the mark per 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.”). Therefore, the Panel holds that Complainant has rights in the GED mark under Policy ¶ 4(a)(i).
Complainant next asserts that Respondent’s <gedmanager.com> domain name is confusingly similar to Complainant’s mark because it appends the generic and/or descriptive term “manager” and the “.com” gTLD to the fully incorporated GED mark. The addition of a generic and/or descriptive term and a gTLD to a mark may not sufficiently negate any confusing similarity under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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).) It should be noted that the Complainant itself uses the phrase “GED Manager” as noted in screenshots from the ged.com website that have been submitted into evidence. Such use dates back to at least 2014 as shown in further screenshots of the gedtestingservice.com website obtained from the Archive.org site and also submitted into evidence. Thus, Respondent’s addition of the word “manager” to the GED mark may actually enhance confusion in this instance. As such, the Panel concludes that Respondent’s <gedmanager.com> domain name is confusingly similar to Complainant’s GED mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent has no rights or legitimate interests in <gedmanager.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. 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)). 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 notes that the WHOIS information of record for the <gedmanager.com> domain name identifies Respondent as “Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd,” and there is no evidence in the record to suggest that Respondent is known otherwise or that it is authorized to use Complainant’s GED mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the disputed domain name.
Furthermore, Complainant alleges 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. Complainant also argues that <gedmanager.com> resolves to a site featuring pay-per-click 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 unrelated and/or 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, FA 1506001626253 (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)). Complainant provides screenshots of the disputed domain name’s resolving website which feature clickable links related to educational programs. As such, the Panel concludes that Respondent is not using the <gedmanager.com> domain name in connection with any bona fide offering of goods or services.
Finally, while it may be that the letters “GED” are used for purposes that do not relate to Complainant’s educational testing services, the Respondent has not filed a response or other submission in this case and so any such uses are not in evidence here. This, combined with the fact that Complainant itself uses the phrase “GED Manager”, as shown in some of the evidence it has submitted, leads this Panel to conclude that Respondent’s use of the <gedmanager.com> domain name to resolve to a commercial pay-per-click page is not a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant alleges that Respondent had constructive notice of Complainant’s rights in the GED mark because Complainant registered the mark with the USPTO. The Panel here finds that any arguments of bad faith based on constructive notice are not relevant, however, because UDRP case precedent most often declines to find bad faith as a result of constructive knowledge – especially where, as here, there is no evidence that the Respondent is subject to the laws of a jurisdiction that adopts such principle. See UBS AG v. Randy Allotey, FA1810001812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") The Panel does agree with Complainant, however, that Respondent must have had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is an adequate foundation upon which to build a finding of bad faith under Policy ¶ 4(a)(iii). 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.”). Complainant further asserts that Respondent’s use of the GED mark in the <gedmanager.com> domain name and its resolving website content indicates it had actual knowledge of Complainant’s rights. The Panel agrees with this claim and finds it more likely than not (i.e., by a preponderance of the evidence) that Respondent had actual knowledge of Complainant’s rights in the GED mark.
Next, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith. 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 pay-per-click website. Use of a domain name to disrupt a complainant’s business by featuring competing hyperlinks 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).”); see also RetailMeNot, Inc. v. Above.com Domain Privacy, FA1701001714474 (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). Here, screenshots of Respondent’s website indicate that the site features hyperlinks for competing services such as “Free GED Practice Tests-Practice for the Big Day,” “Accredited Online Ged Programs-Information for You,” and “Ged program-Check this out now.” Therefore, the Panel holds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Finally, Complainant asserts that Respondent is using a confusingly similar domain name to attract Internet traffic and commercially benefit from the goodwill of the GED mark by resolving it to a website that features Complainant’s marks and competing hyperlinks. Use of a domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of a 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.”); Webster Financial Corporation v. THIS DOMAIN MAY BE FOR SALE AT HTTPS://WWW.NETWORKSOLUTIONS.COM / New Ventures Services, Corp, Claim No. FA1812001820480 (Forum Jan. 4, 2019) (“Respondent is using the dispute domain name to host pay-per-click links to third parties that directly compete with Complainant. Such use of a disputed domain name may indicate bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).”) The evidence submitted here supports Complainant’s contentions that the disputed domain name’s resolving website features links to both unrelated and competing, commercial third party websites. As such, the Panel concludes that Respondent registered and is using the <gedmanager.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gedmanager.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 11, 2019
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