Graduate Management Admission Council v. Ning Wang
Claim Number: FA2107001954770
Complainant is Graduate Management Admission Council (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Ning Wang (“Respondent”), represented by Chang Liu of Shanghai Sunshine Intellectual Property Information Center, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmat.la>, 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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2021; the Forum received payment on July 12, 2021.
On July 14, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <gmat.la> 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 July 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@gmat.la. Also on July 15, 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.
A timely Response was received and determined to be complete on August 4, 2021.
An Additional Submission was filed by Complainant on August 6, 2021.
A response to the Additional Submission was filed by Respondent on August 8, 2021.
On August 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a Virginia non-profit corporation located in Reston, Virginia that develops standardized testing to help business schools select qualified applicants. Complainant has rights in the GMAT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,220,864, registered Dec. 21, 1982). Respondent’s <gmat.la> domain name is identical or confusingly similar to Complainant’s mark as Respondent merely adds the “.la” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <gmat.la> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to divert Internet users seeking Complainant to a commercial website offering competing goods. Furthermore, Respondent is attempting to pass himself off as Complainant.
Respondent registered and uses the <gmat.la> domain name in bad faith. Specifically, Respondent is attempting to pass himself off as Complainant. Furthermore, Respondent had actual or constructive knowledge of Complainant’s rights in the GMAT mark at the time of registration.
B. Respondent
Respondent concedes the <gmat.la> domain name is identical to Complainant’s mark.
Respondent has rights and legitimate interest in the disputed domain name. Respondent’s use is a bona fide use, as Respondent is providing study materials and teaching potential GMAT test takers strategies to study for the test. Respondent is commonly known by the <gmat.la> domain name, as Respondent has been doing business under the name is and is recognized by the domain name by various institutions in the educational research community.
Respondent did not register or use the <gmat.la> domain name in bad faith. Respondent is not competing with Complainant, as Respondent is only providing supplements and strategies to persons taking Complainant’s test. Respondent is not obstructing Complainant’s ability to reflect its mark in a domain name for the Chinese market. Respondent’s use of a disclaimer is sufficient to avoid any possible confusion that might arise as to the affiliation between the two parties.
C. Additional Submissions
Complainant filed an Additional Submission. Respondent requested that the submission be rejected or alternatively that Respondent be given leave to reply to it. Nothing in Complainant’s Additional Submission alters the outcome of this proceeding or changes any factor discussed herein. In accordance with Respondent’s request, the Additional Submission is rejected and shall not be relied upon. Respondent’s alternative request for leave to respond to the submission is accordingly denied as moot.
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.
Complainant claims rights in the GMAT mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,220,864, registered Dec. 21, 1982). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <gmat.la> domain name is identical or confusingly similar to Complainant’s mark as Respondent merely adds the “.la” ccTLD. Adding only a ccTLD to a complainant’s mark does not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding that “[t]he inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). Therefore, the Panel finds Respondent’s <gmat.la> domain name is identical or confusingly similar to Complainant’s mark under 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), 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)
Complainant argues that Respondent has no rights or legitimate interests in the <gmat.la> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by Complainant to use Complainant’s mark. The Panel notes that the WHOIS listing of record identifies Respondent as “Ning Wang.” Nothing in that record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name.
Next, Complainant argues that Respondent fails to use the <gmat.la> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead diverts Internet users seeking Complainant to a commercial website offering competing goods. Using a disputed domain name to divert Internet users seeking a complainant’s goods or services to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006).
Lastly, Complainant argues that Respondent lacks rights and legitimate interest in the disputed domain name as Respondent is attempting to pass himself off as Complainant. Using a disputed domain name to deceive Internet users as to an affiliation a respondent has with the complainant may show a lack of rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”).
Complainant has accordingly met its burden to make a prima facie case, shifting the burden to Respondent.
Respondent has failed to adequately establish any rights or legitimate interests. While it may be true, as Respondent argues, that he sells products legitimately intended to prepare students for Complainant’s test, Respondent fails thereby to establish rights in using the trademark in question, which he has used in its entirety as the disputed domain name, without any alteration (other than addition of a ccTLD, which has long been established as insufficient to obviate confusion). There are circumstances in which a respondent can legitimately claim nominative fair use or otherwise justify certain uses of another’s mark; but Respondent makes no such case in his Response.
Therefore, the Panel finds Respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <gmat.la> domain name in bad faith by attempting to pass himself off as Complainant. Registering a disputed domain name to pass off as a complainant may be evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Whether Respondent is actually attempting to pass himself off as Complainant is not entirely clear from the record, but it does appear that Respondent’s use of Complainant’s mark is likely to generate some confusion as to source, sponsorship, or affiliation between the two entities, particularly in view of the fact that Respondent offers test-preparation materials in direct competition with Complainant’s own test-preparation materials.
Respondent states that he has placed a disclaimer on his website, stating that it “has no connection with” Complainant. No such disclaimer, however, appears in the attachments filed with the Complaint. If Respondent added one subsequently, his failure to be transparent about the timing of such an addition does little to dissuade the Panel from drawing inferences that he has not acted entirely in good faith, at least as of when the Complaint was filed, which is the operative time for the Panel to assess the parties’ respective positions.
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the GMAT mark at the time of registering the <gmat.la> domain name. To support this assertion, Complainant points to its trademark registrations and fame in China, along with the fact that Respondent uses Complainant’s mark in connection with similar goods and services. The Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark at the time of registration.
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmat.la> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: August 17, 2021
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