Pearson Education, Inc. v. V A / Do My Math Lab
Claim Number: FA1912001874941
Complainant is Pearson Education, Inc. (“Complainant”), represented by Patrick J. Gallagher of Cozen O'Connor, United States. Respondent is V A / Do My Math Lab (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <domymathlab.com>, registered with FastDomain Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2019; the Forum received payment on December 12, 2019.
On December 13, 2019, FastDomain Inc. confirmed by e-mail to the Forum that the <domymathlab.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2020 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@domymathlab.com. Also, on December 16, 2019, 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 9, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, Pearson Education, Inc., is in the business of education publishing and assessment services. Complainant has rights in the MYMATHLAB mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,554,037, registered March 26, 2002). Respondent’s <domymathlab.com> domain name is confusingly similar to Complainant’s mark because the domain name includes Complainant’s MYMATHLAB mark in its entirety, merely adding a generic word and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <domymathlab.com> domain name. Respondent has no relationship with complainant or authorization to use Complainant’s MYMATHLAB mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to divert Internet users to a website that offers competing products and services.
Respondent registered and is using the <domymathlab.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by attracting Internet users to its competing website for commercial gain. Also, Respondent had actual knowledge of Complainant’s rights to the MYMATHLAB mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Pearson Education, Inc. (“Complainant”), of New York, New York, USA. Complainant is the owner of the domestic registration for the mark MYMATHLAB, which Complainant has used continuously since at least as early as 2001, in connection with its provision of educational publishing and assessment products and services.
Respondent is V A / Do My Math Lab (“Respondent”), of New York, New York, USA. Respondent’s registrar’s address is listed as Tempe, AZ, USA. The Panel notes that the <domymathlab.com> domain name was registered on or about Sept. 28, 2015.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the MYMATHLAB mark based upon its registration with the USPTO. Registration with the USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Complainant provides copies of its USPTO registrations for the mark (e.g., Reg. No. 2,554,037, registered March 26, 2002). The Panel here finds that Complainant has rights in the MYMATHLAB mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <domymathlab.com> domain name is confusingly similar to Complainant’s mark because the domain name includes Complainant’s MYMATHLAB mark in its entirety, merely adding a generic word and a gTLD. Additions of generic and/or descriptive terms and a gTLD to a complainant’s mark do not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Complainant argues Respondent merely adds the term “do,” and a “.com” gTLD to Complainant’s mark to form the domain name. The Panel here finds that the <domymathlab.com> does not contain changes that sufficiently distinguish it from the MYMATHLAB mark per Policy ¶ 4(a)(i)
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <domymathlab.com> domain name because Respondent has no relationship with Complainant or authorization to use Complainant’s MYMATHLAB mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Where a respondent appears to be commonly known by a disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of this identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). Though the WHOIS information of record identifies the registrant organization as “Do My Math Lab,” Complainant argues that Respondent has never been commonly known by the <domymathlab.com> domain name and that Respondent is not affiliated with Complainant or it’s mark in any way. Respondent provides no evidence to indicate it has any legitimate interests or rights. Using a disputed domain name dually as one’s WHOIS registration name alone provides no legitimacy for an offending Respondent. The Panel here finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to divert Internet users to a website that offers competing products and services. Use of a confusingly similar domain name to offer competing services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“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” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides screenshots of Respondent’s webpage and argues that it offers services that compete with Complainant’s business. The Panel here finds that Respondent did not use the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and is using the <domymathlab.com> domain name in bad faith because Respondent attempts to disrupt Complainant’s business by attracting Internet users to its competing website for commercial gain. Use of a confusingly similar domain name to divert users to a website for commercial gain and disruption of 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).”); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). Complainant provides screenshots of Respondent’s website, asserting that Respondent’s use of the site disrupts Complainant’s business by diverting Complainant’s users to Respondent’s webpage. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and (iv).
Complainant also argues that Respondent had actual knowledge of Complainant’s rights to the MYMATHLAB mark prior to registering the <domymathlab.com> domain name. While constructive knowledge is insufficient for a finding of bad faith, actual knowledge of a complainant’s rights in a mark evidences 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.”). Actual knowledge can be discerned through a respondent’s competitive use of a mark. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant claims that Respondent’s use of Complainant’s mark for a competing website constitutes evidence of actual knowledge. The Panel here finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <domymathlab.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 23, 2020
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