Lurn, Inc. v. thach Trung
Claim Number: FA2102001933627
Complainant is Lurn, Inc. (“Complainant”), represented by Allison Haugen of Holland & Hart LLP, Colorado, USA. Respondent is thach Trung (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thelurn.com>, registered with NameCheap, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 25, 2021; the Forum received payment on February 25, 2021.
On February 26, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <thelurn.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2021 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@thelurn.com. Also on March 3, 2021, 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 March 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Lurn, Inc., operates an education and empowerment platform for aspiring entrepreneurs.
Complainant has rights in the LURN mark through its registration with multiple trademark agencies (e.g., United States Patent and Trademark Office (“USPTO”), Canadian Intellectual Property Office (“CIPO”)).
Respondent’s <thelurn.com> domain name is confusingly similar to Complainant’s LURN mark, only adding the generic term “the” before the mark along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <thelurn.com> domain name as it is not commonly known by the at-issue domain name and is neither an authorized user nor licensee of the LURN mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent engages in a copyright infringement scheme by which it re-sells Complainant’s products on its own competing website.
Respondent registered and uses the <thelurn.com> domain name in bad faith. Respondent uses the <thelurn.com> domain name to compete with Complainant, re-selling Complainant’s programs, which indicates bad faith disruption and attraction to commercial gain. Respondent also provided misleading WHOIS information when registering the disputed domain name by disguising its identity behind a privacy shield, along with having actual knowledge of Complainant’s rights in the LURN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the LURN mark.
Respondent has not been authorized to use Complainant’s trademark.
Respondent registered the at-issue domain name after Complainant acquired rights in LURN.
Respondent uses the at-issue domain name to address a website that attempts to sell copyrighted intellectual property owned by 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 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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant registered its LURN mark with multiple national trademark registries worldwide. Such registries include the USPTO and CIPO. Owning a registration with even a single national trademark registry is generally sufficient to establish rights in a mark for the purposes of Policy 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.).
Respondent’s at-issue domain name contains Complainant’s LURN trademark prefixed with the article “the” and followed by the top level domain name “.com.” The slight differences between Respondent’s <thelurn.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that the <thelurn.com> domain name is confusingly similar to Complainant’s LURN mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for <thelurn.com> indicates that “thach Trung” is the domain name’s registrant. There is nothing in the record before the Panel that indicates that Respondent is otherwise known by the <thelurn.com> domain name. Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s confusingly similar domain name addresses a website that, inter alia, attempts to illegally re-sell the copyrighted educational works of third parties. Respondent’s website offers numerous works that Complainant makes available for sale as part of its online publishing business. Respondent’s website also displays certain graphic images and text in which Complainant claims to have copyrights, including stylized images of Complainant’s LURN word mark. Shamelessly, Respondent explains on its <thelurn.com> website that it “collected all these courses for cheap sale,” referring to its pirated offering. Likewise, Respondent impudently expounds that it will not reply to questions regarding the legality of its activities and states that “[i]f you have enough money, we encourage you to buy this product from the original(author) weebsites [sic] to get the full support and functions.” Respondent’s use of the <thelurn.com> domain name to illegally re-sell the intellectual property of others is obviously not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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).”); see also Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <thelurn.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As discussed in more detail above with regard to rights and legitimate interest, Respondent uses its confusingly similar <thelurn.com> domain name to compete with Complainant’s business by using the <thelurn.com> website to re-sell Complainant’s copyrighted material apparently knowing that it’s breaking the law in doing so. Respondent augmented its lawless image by cloaking its identity from the public and stonewalling Complainant’s multiple demand letters. Such circumstances show Respondent’s bad faith disruption of Complainant’s business and Respondent’s intent on attracting internet traffic to the <thelurn.com> website by exploiting the confusion between Complainant’s mark and Respondent’s domain name. The Panel thus finds that Respondent registered and used the <thelurn.com> the domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products.). Unsurprisingly, Respondent’s copyright infringement activity alone is sufficient to allow the Panel to conclude that Respondent acted in bad faith in registering and using <thelurn.com>. See TPI Holdings Inc. v. JB Designs, D2000-0216 (WIPO May 22, 2000) (noting that “intentional infringement of the Complainant’s copyright would in itself amount to use in bad faith.”); see also, Compiere Inc. v. Access, Denied, D2007-0131 (WIPO April 3, 2007) (“[T]he Panel agrees with the Complainant that, by using websites to sell materials which infringe the Complainant’s copyright in those materials, this also constitutes bad faith on the part of the Respondent.”).
Moreover, Respondent registered the <thelurn.com> domain name knowing that Complainant had trademark rights in LURN. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s attempt to pirate Complainant’s intellectual property as revealed elsewhere herein. The Panel thus finds that Respondent intentionally registered the at-issue domain name to improperly exploit its misappropriated trademark value, rather than for some benign reason, and further that Respondent’s prior knowledge of Complainant's trademark demonstrates that Respondent registered and used its <thelurn.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under 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 <thelurn.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 30, 2021
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