Boston Global Education Inc. v. [Name Redacted ]
Claim Number: FA2209002011994
Complainant is Boston Global Education Inc. (“Complainant”), represented by Ruben Peña of Kronenberger Rosenfeld, LLP, California, US. Respondent is [Name Redacted ] (“respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostonglobaledu.com>, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on September 14, 2022; Forum received payment on September 14, 2022.
On September 14, 2022, Godaddy.Com, Llc confirmed by e-mail to Forum that the <bostonglobaledu.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 19, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@bostonglobaledu.com. Also on September 19, 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 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist (the "Panel").
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.
Complainant requests that the domain name be transferred from respondent to Complainant.
A. Complainant
Complainant states that it has used the unregistered trademark BOSTON GLOBAL EDUCATION in connection with educational mentoring services and submits that the domain name is confusingly similar to its trademark.
Complainant alleges that respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that respondent registered and used the disputed domain name in bad faith.
In particular, Complainant states that it was established in 2007 and has since that time continuously used BOSTON GLOBAL EDUCATION as a trademark in connection with its educational services. It states that in March, 2022 its website resolving from the disputed domain name shut down and control of the domain name was lost. Complainant states that the current holder of the domain name and named respondent in these proceedings is a fictitious person and an alias of a former employee of Complainant who had been laid off in consequence of the pandemic. Complainant states that the domain name is now being used by respondent to pass off identical services to those provided by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
A question arises as to whether the dispute exceeds the scope of the Policy. The facts put into declaratory form by Complainant show that the person previously employed in a position of trust as manager of Complainant’s website, and the named respondent, are one and the same. The evidence is that this person was amongst a group Complainant’s employees laid off during the pandemic. The evidence is that aside from Complainant’s president and vice president, this person was the only other who knew the domain name account login information of the original domain name registrar, Network Solutions. Following notice of termination of employment with Complainant, the evidence shows a series of manipulations of the domain name records including transfer of registrar from Network Solutions to GoDaddy.
In Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) the panellist stated that “the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.”
Respondent’s actions are those typical of a cybersquatter, but in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) the panellist stated that “[t]he Policy’s purpose is to combat abusive domain name registrations …” and so the question here is whether respondent’s actions are abusive or in the nature of those of a cybersquatter.
As presented, the facts are essentially identical to those in Better Existence with HIV v. AAA / Christine Gryszkiewicz, FA1012001363660 (Forum Jan. 25, 2011) where a former employee of the complainant registered the disputed domain name in retaliation for the termination of his employment as the complainant’s business manager. Albeit that the domain name still resolved to the complainant’s website, the complainant had lost control of the name and the panellist applied the Policy and found bad faith registration and use, citing other similar fact cases: Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002); MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007).
This is not a dispute about trademark ownership. It is not even a business dispute. The respondent occupied a position of trust and owned fiduciary duties which it broke. It had the chance to file a Response if it wanted to challenge Complainant’s characterisation of events and did not. In the circumstances the Panel finds it appropriate to apply the Policy. In so doing it finds that the named respondent is a fictitious person and that an actual person going by the name would in consequence of this decision suffer an adverse public decision. Accordingly, the name of the domain name holder (respondent) has been redacted from the record.
The factual findings pertinent to the decision in this case are that:
1. Complainant created the disputed domain name on July 31, 2006;
2. respondent was an employee of Complainant;
3. on November 5, 2021 respondent was notified of termination of employment; and
4. on March 13, 2022 the disputed domain name was transferred into the name of respondent.
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 to prove each of the following elements to obtain an order that the domain name be 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[i]. Complainant provided no proof of such a registration but instead asserts common law rights in the BOSTON GLOBAL EDUCATION. Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. In Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) the panel found that “[t]he Policy does not require a complainant to own a registered trademark … if it can demonstrate established common law rights in the mark.”[ii]
Complainant provides a declaration of the company president that it has served over 1,000 international high school students with its diversified programs and services through its offices in China and the United States. Further, that Complainant has offered and sold its services to customers through both online and brick-and-mortar channels, including Complainant’s website.
As stated above, Complainant was established in 2007 and has continuously used BOSTON GLOBAL EDUCATION as a trademark in connection with its services until the present day. The Complaint provides ample evidence of use and the Panel finds that Complainant has unregistered trademark rights in BOSTON GLOBAL EDUCATION.[iii]
Not only is the domain name the one chosen and used by Complainant before its control was usurped, but the domain name is an obvious contraction of the trademark since the word “education” is most commonly abbreviated to “edu”. The Panel finds the domain name to be confusingly similar to the trademark.
Accordingly, the Panel finds that Complainant has established the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The publicly available WhoIs information shielded the name of the underlying domain name registrant by a privacy service provider, but in consequence of these proceedings the Registrar disclosed the name of the actual registrant (respondent). That name does not provide any indication that respondent might be commonly known by the domain name. There is no evidence that respondent has any trademark rights. Accordingly, there is no suggestion that paragraph 4(c)(ii) of the Policy might apply.
Otherwise, the circumstances are as described above. Clearly those actions by respondent will not give rise to rights or a legitimate interest in the domain name. Further, respondent is now using the domain name to pass off as Complainant. In terms of paragraph 4(a)(ii) of the Policy, there is not evidence of either preparations to use the domain name in connection with a bona fide offering of services, or of legitimate non-commercial use of the name without an intention to divert consumers.
The Panel finds that Complainant has make a prima facie case that Respondent has no rights or interests. Absent a Response, that case is not met and so the Panel finds that Complainant has established the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds registration and use in bad faith pursuant to paragraph 4(b)(iv) above. The Panel has already found the disputed domain name to be confusingly similar to the trademark. The resolving website exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has used the domain name intending to attract Internet users to the website for commercial gain by creating a likelihood of confusion with the trademark as to the source of that website.
The Panel finds registration and use of the domain name in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bostonglobaledu.com> domain name be TRANSFERRED from respondent to Complainant.
Debrett G. Lyons, Panelist
Date: November 6, 2022
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] See also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007), amongst a great many cases, finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
[iii] See, for example, Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership; Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Forum Sept. 7, 2002) finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
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