Law School Admission Council, Inc. v. cao shuang
Claim Number: FA2208002009060
Complainant is Law School Admission Council, Inc. (“Complainant”), represented by Wendy K. Marsh of Nyemaster Goode, P.C., Iowa, USA. Respondent is cao shuang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boolsat.com>, registered with Eranet International Limited.
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 Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 18, 2022; the Forum received payment on August 19, 2022.
On August 20, 2022, Eranet International Limited confirmed by e-mail to the Forum that the <boolsat.com> domain name is registered with Eranet International Limited and that Respondent is the current registrant of the name. Eranet International Limited has verified that Respondent is bound by the Eranet International Limited 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, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2022 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@boolsat.com. Also on August 23, 2022, 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 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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, Law School Admission Council, Inc., provides products and services related to law school admissions, including the law school admission test (“LSAT”). Complainant has rights in the LSAT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 3,678,865, registered Sep. 8, 2009). See Compl. Ex. 8. The <boolsat.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the term “boo” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <boolsat.com> domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s LSAT mark. 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 Respondent hosts adult-oriented material at the resolving website.
Respondent has registered and uses the <boolsat.com> domain name in bad faith because Respondent uses the disputed domain name to create bad faith attraction for commercial gain. In addition, Respondent had knowledge of Complainant’s rights in the LSAT mark prior to registering the disputed domain name.
Respondent registered the <boolsat.com> domain name on May 30, 2022.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides products and services related to law school admissions, including the law school admission test known as LSAT.
2. Complainant has established its rights in the LSAT mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., 3,678,865, registered Sep. 8, 2009).
3. Respondent registered the <boolsat.com> domain name on May 30, 2022.
4. Respondent has caused the disputed domain name to host adult-oriented material at the resolving website showing that it does not have a right or legitimate interest in the domain name and that the domain name was registered and used 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 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 next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LSAT trademark. Complainant argues that the <boolsat.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the term “boo” and the “.com” gTLD. Domain names which incorporate the entire mark are usually considered confusingly similar, while adding a gTLD generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Further, adding additional terms may not create a sufficient distinction. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Here, Respondent has made the changes identified above and the Panel finds that these changes do not create a sufficient distinction between the disputed domain name and Complainant’s mark. Complainant submits that the addition of the term “boo” may reference a trend in forums “booing” LSAT questions and the Panel tends to agree. See Compl. Ex. 15. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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 LSAT mark and to use it in its domain name, adding only the word “boo” to the mark which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the domain name on May 30, 2022;
(c) Respondent has caused the disputed domain name to host adult-oriented material at the resolving website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the <boolsat.com> domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s LSAT mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy 4 ¶ (c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by <boolsat.com> and no information suggests Complainant authorized Respondent to use the LSAT mark. See Compl. Ex. 14. Rather, the Registrar lists the registrant of the domain name as “cao shuang shuang.” 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 contends Respondent is not using the <boolsat.com> domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website redirects users to adult-oriented material. Using a domain name to host adult-oriented material is not a bona fide offering of goods and services or legitimate noncommercial or fair use for purposes of Policy ¶¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). In this case, the Panel notes screenshots of the resolving websites, showcasing adult-oriented material. See Compl. Exs. 16-18. The Panel therefore finds Respondent is not using the disputed domain name in compliance with 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 does not have a right or legitimate interest 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 argues that Respondent has registered and uses the <boolsat.com> domain in bad faith because it registered and uses the domain name to create bad faith attraction for commercial gain, hosting adult-oriented material at the resolving website. Registration and use of a disputed domain name which is confusingly similar to a complainant’s mark and using that domain name to host adult-oriented content, is evidence of bad faith per Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)). Here, Complainant argues that Respondent uses the confusion to lure consumers to its webpage where it displays adult-oriented images and links to adult-oriented websites all to Respondent’s commercial benefit. See Compl. Exs. 16-18. Therefore, as the Panel agrees, it finds that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant contends that Respondent registered the <boolsat.com> domain in bad faith because Respondent had knowledge of Complainant’s rights in the LSAT mark prior to registering the disputed domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, Panels may and do find that Respondents had actual knowledge of Complainant's mark and rights given the fame of the mark and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).”). Here, Complainant argues that Respondent had actual knowledge of Complainant’s trademark given Complainant’s prior registration of the mark with the USPTO. Further, Complainant argues that Respondent had knowledge of Complainant’s rights in the mark given the fame of the mark, which may also show actual knowledge. Therefore, as the Panel determines that Respondent had actual knowledge of Complainant’s rights, it finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
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 <boolsat.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: September 22, 2022
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