Phillips Exeter Academy v. John Wilson / Cranbrook Schools
Claim Number: FA2209002010895
Complainant is Phillips Exeter Academy (“Complainant”), represented by Mark A. Wright of McLane Middleton, Professional Association, New Hampshire, USA. Respondent is John Wilson / Cranbrook Schools (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exeter-academy.us>, registered with GoDaddy.com, LLC.
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 Forum electronically on September 6, 2022; Forum received payment on Paper file date.
On September 7, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <exeter-academy.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 7, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@exeter-academy.us. Also on September 7, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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, Phillips Exeter Academy, is a nonprofit organization that provides educational services.
Complainant asserts rights in the PHILLIPS EXETER ACADEMY and EXETER marks based upon registration with the United States Patent and Trademark Office (“USPTO”) and other trademark agencies worldwide.
Respondent’s <exeter-academy.us> domain name is confusingly similar to Complainant’s marks because it contains a majority of the PHILLIPS EXETER ACADEMY mark, and incorporates the EXETER mark in its entirety, merely adding the descriptive term “academy” and top-level domain (“TLD”) “.us” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <exeter-academy.us> domain name. Respondent is not licensed or authorized to use Complainant’s PHILLIPS EXETER ACADEMY or EXETER marks and is not commonly known by the at-issue domain name. In addition, Respondent does not have rights in a mark identical to the at-issue domain name. Furthermore, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to promote similar or competing educational services.
Respondent registered or uses the <exeter-academy.us> domain name in bad faith. Respondent uses the at-issue domain name to attract internet users to its site for commercial gain, misusing Complainant’s marks in the process. Furthermore, Respondent failed to respond to Complainant’s cease-and-desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in PHILLIPS EXETER ACADEMY and EXETER.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the PHILLIPS EXETER ACADEMY and EXETER trademarks.
Respondent uses the at-issue domain name to addresses a website that purports to promote similar or competing educational services to Complainant’s offering.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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’s USPTO registration for PHILLIPS EXETER ACADEMY or EXETER marks, as well as any of its other national registrations for such marks worldwide, establishes Complainant’s rights in a mark for the purposes of Policy 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also, Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
The at-issue domain name contains Complainant’s entire EXETER trademark and a material part of its PHILLIPS EXETER ACADEMY mark. An insignificant hyphen is inserted in the domain name between “Exeter” and “academy.” The domain name concludes with the “.us” top level domain. The differences between Respondent’s domain name and Complainant’s trademarks are insufficient to distinguish the <exeter-academy.us> domain name from Complainant’s trademarks under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <exeter-academy.us> domain name is confusingly similar to both Complainant’s PHILLIPS EXETER ACADEMY and its EXETER trademarks. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable 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.”); see also, Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity).
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 <exeter-academy.us> indicates that “John Wilson / Cranbrook Schools” is the domain name’s registrant and there is nothing in the record indicating that Respondent is otherwise known by the at-issue domain name. Therefore, the Panel finds that Respondent is not commonly known by <exeter-academy.us> under Policy ¶ 4(c)(iii). 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 uses the <exeter-academy.us> domain name to address a website bearing Complainant’s trademarks and exact or near exact copies of Complainant’s copyrightable works, including its webpages, photographs, and texts. There, Respondent promotes educational services in competition with Complainant and appears to be in the process of engaging third-party services to set up an online retail store. Such use of <exeter-academy.us> is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor of a non-commercial or fair use under Policy ¶ 4(c)(iv). 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.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name.
As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the at-issue <exeter-academy.us> domain name to attract internet users to its <exeter-academy.us> website and thereby exploits the similarity between the at-issue domain name and Complainant’s trademarks for commercial gain. Such use of the domain name is disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the PHILLIPS EXETER ACADEMY and EXETER marks when it registered <exeter-academy.us> as a domain name. Respondent’s actual knowledge is evident from the notoriety of the PHILLIPS EXETER ACADEMY and EXETER trademarks and from Respondent’s use of <exeter-academy.us> to address a website displaying Complainant’s intellectual property and promoting services similar to those offered by Complainant. Furthermore, Respondent pretended to represent Complainant in front of at-least one third-party by presenting such party with a false declaration claiming to authorize Respondent’s representative to act as Complainant’s agent. Respondent’s registration and use of the <exeter-academy.us> domain names with knowledge of Complainant’s rights in such domain name additionally shows Respondent’s 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, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <exeter-academy.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 4, 2022
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