Udemy, Inc. v. Domain Admin / Domain Privacy Ltd
Claim Number: FA2210002017939
Complainant is Udemy, Inc. (“Complainant”), represented by Jessica Tam of Udemy, Inc., US. Respondent is Domain Admin / Domain Privacy Ltd (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <udemybusiness.com>, registered with DropCatch.com 651 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on October 27, 2022; Forum received payment on October 27, 2022.
On October 28, 2022, DropCatch.com 651 LLC confirmed by e-mail to Forum that the <udemybusiness.com> domain name is registered with DropCatch.com 651 LLC and that Respondent is the current registrant of the name. DropCatch.com 651 LLC has verified that Respondent is bound by the DropCatch.com 651 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 October 28, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@udemybusiness.com. Also on October 28, 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 November 22, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant provides online learning services. Complainant submits that it has
rights in the UDEMY mark based upon registration of the mark with multiple
trademark agencies, including the United States Patent and Trademark Office (“USPTO”)
(e.g., Reg. no. 4,314,406, registered April 2, 2013). See Compl.
Annexes 1 & 2. Respondent’s <udemybusiness.com>
is identical or confusingly
similar to Complainant’s UDEMY mark
because it incorporates the mark in its entirety and adds the generic word “business”,
as well as the generic top-level domain name (“gTLD”) “.com”.
Respondent lacks rights or legitimate interests in the <udemybusiness.com>
domain name. Respondent is not licensed or authorized to use Complainant’s UDEMY mark nor is Respondent commonly known by the disputed domain name.
Respondent does not use the disputed domain name for any bona fide offering
of goods or services nor for any legitimate noncommercial or fair use. Rather,
Respondent uses the disputed domain name to generate revenue from pay-per-click
advertisements.
Respondent registered and uses the <udemybusiness.com> domain name in bad faith. Respondent uses the confusingly similar nature of the disputed domain name in order to attract users with a false impression of association with Complainant and disrupt Complainant’s business. Respondent parked the disputed domain name’s resolving webpage and displays sponsored links.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides extensive and well -established online learning services.
2. Complainant has established its rights in the UDEMY mark based upon registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 4,314,406, registered April 2, 2013).
3. Respondent registered the <udemybusiness.com> domain name on August 25, 2021.
4. Respondent has caused the disputed domain name to generate revenue from pay-per-click advertisements.
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 UDEMY mark based upon registration of the mark with the USPTO (e.g., Reg. no. 4,314,406, registered April 2, 2013) and other trademark agencies. See Compl. Annexes 1 & 2. Registration of a mark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant has provided evidence of registration of the UDEMY mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s UDEMY mark. Complainant argues that the <udemybusiness.com> domain name is confusingly similar to Complainant’s UDEMY trademark because it incorporates the mark in its entirety and adds the generic word “business” the gTLD “.com”. The addition of a generic term and a gTLD is insufficient in distinguishing a disputed domain name from a protected mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Respondent’s <udemybusiness.com> domain name incorporates Complainant’s UDEMY mark in whole and adds the generic word “business” as well as the “.com” gTLD. Therefore, the panel finds the disputed domain name is confusingly similar to Complainant’s UDEMY mark under 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 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s UDEMY mark and to use it in its domain name, adding the generic word “business” to the mark;
(b) Respondent registered the domain name on August 25, 2021;
(c) Respondent has caused the disputed domain name to generate revenue from pay-per-click advertisements;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant argues that Respondent lacks rights or legitimate interests in the <udemybusiness.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the UDEMY mark. Without evidence to the contrary, WHOIS information that lists a privacy service as registrant supports an inference that respondent is not commonly known by the disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain name is redacted by a privacy service, however the registrar, DropCatch.com 651 LLC, revealed Respondent as “Domain Admin / Domain Privacy Ltd.” See WHOIS information; see also Registrar Email Verification. Additionally, there is no evidence to suggest that Respondent was authorized to use the UDEMY mark, nor does Respondent hold trademark registrations that are identical, similar, or in any way related to the Complainant’s mark. Therefore, the Panel finds Respondent is not authorized to use, nor is commonly known, by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <udemybusiness.com> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use, as Respondent redirects users to a website hosting pay-per-click hyperlinks. A respondent’s use of a disputed domain name for a parking page displaying sponsored links may not be considered any bona fide offering of goods or services, nor any legitimate non-commercial or fair use. See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant attached screenshots of the disputed domain name’s resolving webpage. See Compl. Annex 3. The <udemybusiness.com> domain name resolves to a webpage with sponsored links. Id. As the Panel agrees, it finds that Respondent does not use the <udemybusiness.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (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 registered and used the <udemybusiness.com> domain name in bad faith, to attract Internet users with a false impression of association with Complainant. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iv) when a respondent used a confusingly similar domain name to attract Internet users. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Additionally, a respondent’s use of a disputed domain name to divert users to a webpage that displays sponsored links may evidence bad faith pursuant to Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). The Panel recalls Complainant attached screenshots of the disputed domain name’s resolving webpage. See Compl. Annex. 3. The disputed domain name resolves to a webpage with pay-per-click sponsored links. Id. Respondent also incorporates Complainant’s UDEMY mark in the disputed domain name, presumably to attract and divert Internet users. As the Panel agrees, it finds that Respondent registered and uses the <udemybusiness.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
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 <udemybusiness.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: November 23, 2022
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