High Scope Educational Research Foundation v. Kwangpyo Kim / Mediablue inc
Claim Number: FA2108001960035
Complainant is High Scope Educational Research Foundation (“Complainant”), represented by Jessica S. Sachs of Harness, Dickey & Pierce, P.L.C., Michigan, USA. Respondent is Kwangpyo Kim / Mediablue inc (“Respondent”), Korea
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <highscope.com>, registered with GoDaddy Online Services Cayman Islands Ltd..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 17, 2021; the Forum received payment on August 17, 2021.
On August 18, 2021, GoDaddy Online Services Cayman Islands Ltd. confirmed by e-mail to the Forum that the <highscope.com> domain name is registered with GoDaddy Online Services Cayman Islands Ltd. and that Respondent is the current registrant of the name. GoDaddy Online Services Cayman Islands Ltd. has verified that Respondent is bound by the GoDaddy Online Services Cayman Islands Ltd. 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 August 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@highscope.com. Also on August 23, 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 September 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a nonprofit organization that provides information and training in the field of early childhood education. Complainant has rights in the HIGH SCOPE mark based on its registration of the mark with multiple trademark offices around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,462,318, registered on Oct. 20, 1987). See Compl. Ex. 3. Respondent’s <highscope.com> domain name is identical or confusingly similar to Complainant’s HIGH SCOPE mark as it incorporates the mark in its entirely, only adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licenses Respondent to use the HIGH SCOPE mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the domain resolves to a website with competing pay-per-click hyperlinks.
Respondent registered and uses the <highscope.com> domain name in bad faith. Respondent uses the domain name to attract users to Respondent’s website for commercial gain. Additionally, the disputed domain name resolves to a website that provides hyperlinks to Complainant’s competitors, disrupting Complainant’s business. The resolving website also presents users with Complainant’s marks and is related to Complainant’s business and services, creating an illusion of an affiliation or association between the resolving website and Complainant. Finally, Respondent had actual notice of Complainant’s rights based on the notoriety and fame of Complainant’s mark
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States
company that is a nonprofit
organization focused on research, development, training, and publishing in the
field of early childhood education.
2. Complainant has established its trademark rights in the HIGH SCOPE mark by reason of registering the same with multiple trademark offices around the world, including the USPTO (e.g., Reg. No. 1,462,318, registered on Oct. 20, 1987).
3. Respondent registered the <highscope.com> domain name on January 14, 1998 and updated the registration on January 14, 2020.
4. Respondent has caused the domain name to resolve to a website with pay-per-click hyperlinks to products in competition with those of 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the HIGH SCOPE mark through its registration of the mark with multiple trademark offices around the world, including the USPTO (e.g., Reg. No. 1,462,318, registered on Oct. 20, 1987). See Compl. Ex. 3. Registration of a mark with multiple trademarks around the world is sufficient to establish rights in a mark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO.). Therefore, the Panel finds Complainant has demonstrated rights in the HIGH SCOPE mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s HIGH SCOPE mark. Complainant argues Respondent’s <highscope.com> domain name is identical to Complainant’s HIGH SCOPE mark, as it contains the mark in its entirety, simply adding the “.com” gTLD. Past panels have agreed that merely appending the “.com” gTLD does not sufficiently differentiate the disputed domain name with the mark. See David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Respondent arrives at the disputed domain name by simply taking Complainant’s mark in its entirety and adding the g TLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark.”); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel agrees and finds that the disputed domain name is identical to Complainant’s mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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”).
(a) Respondent has chosen to take Complainant’s HIGH SCOPE trademark and to use it in its domain name;
(b) Respondent registered the <highscope.com> domain name on January 14, 1998 and updated the registration on January 14, 2020;
(c) Respondent has caused the domain name to resolve to a website with pay-per-click hyperlinks to products in competition with those of Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <highscope.com> domain name because Respondent is not authorized to use the HIGH SCOPE mark, nor is Respondent commonly known by the disputed domain name. To determine whether a Respondent is commonly known by the disputed domain name, WHOIS information may be used under Policy ¶ 4(c)(ii). 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 interest in the dispute domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by the 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). In this case, the Respondent appears to be known as “Kwangpyo Kym” and/or “Mediablue Inc.” See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii) because the resolving website provides users with competing hyperlinks to Complainant’s business, presumably for Respondent’s financial gain. Using a disputed domain name to display competing hyperlinks to users does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien 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.”); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the resolving website, showcasing the competing hyperlinks. See Compl. Ex. 5. As the Panel agrees, the Panel therefore finds Respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits Respondent registered and uses the <highscope.com> domain name in bad faith because the resolving website presents users with competing hyperlinks to Complainant’s business. Previously, panels have concluded that using a disputed domain name to host competing hyperlinks to a complainant’s business for commercial gain constitutes bad faith under Policy ¶ 4(b)(iv). See 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)”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Here, the Panel again notes the screenshots that have been provided by Complainant that show the competing hyperlinks in the resolving website. See Compl. Ex. 5. Therefore, the Panel finds that Respondent registered and has used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent acted in bad faith because Respondent had actual notice of Complainant’s rights in the mark, as evidenced by the notoriety and fame of Complainant’s mark, as well as the use and services provided by the resolving website. Past panels have looked at the fame of a mark and the use of the disputed domain name in relation to the mark to make a finding of bad faith. 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.”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 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”). In this case, Respondent uses the disputed domain name to provide competing hyperlinks, showing that it has had notice of Complainant’s brand and business. See Compl. Ex. 5. Therefore, the Panel finds the Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent’s use of a privacy service when registering the disputed domain name raises a rebuttable presumption of bad faith. Past panels have concurred that using a privacy shield may serve as an indication of bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”); see also Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Here, the WHOIS Information indicates Respondent’s information was hidden. See Compl. Ex. 1. Therefore, the Panel agrees that Respondent’s use of a privacy shield has served as another indicator of bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <highscope.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 16, 2021
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