DECISION

 

PEARSON PLC and NCS PEARSON, INC. v. Leonard Nicky

Claim Number: FA2401002081691

 

PARTIES

Complainant is PEARSON PLC and NCS PEARSON, INC. ("Complainant"), represented by Patrick J. Gallagher of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Leonard Nicky ("Respondent"), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pearsonsvue.org>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 30, 2024; Forum received payment on January 30, 2024.

 

On January 31, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <pearsonsvue.org> 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 February 5, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2024 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@pearsonsvue.org. Also on February 5, 2024, 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 February 27, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to both named complainants.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

There are two named complainants. Paragraph 3(a) of the Rules states that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint."  Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."

 

As discussed below, the Panel has determined that trademark rights paragraph 4(a)(i) of the Policy exist in PEARSON VUE. Complainant, NCS Pearson, Inc. holds registrations for that trademark. The Complaint states that complainant, Pearson plc, is a UK based publishing and education company which in 2000 acquired NCS Pearson, Inc. which provides educational assessment services.

 

Absent challenge from Respondent or any other reason not to accept that claim the Panel accepts that the named complainants are sufficiently linked for the purposes of Supplemental Rule 1(e). Accordingly, the Panel treats them as a single entity in this proceeding, hereinafter referring to both as "Complainant" unless otherwise stated (see, for example, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. kim seong su, FA1904001840242 (June 3, 2019); Bed Bath & Beyond Procurement Co, Inc. et al. v. shaoxuan li / lishaoxuan, FA1902001829423 (Forum Mar. 11, 2019); Guess? IP Holder L.P. and Guess?, Inc. v. New Ventures Services, Corp., FA1901001825019 (Forum Feb. 10, 2019); SPTC, Inc. and Sotheby's v. Moirano, M, FA1810001813071 (Forum Nov. 17, 2018)).

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in PEARSON VUE. Complainant holds a national registration for that trademark.  Complainant submits that the domain name is virtually identical and 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.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.        Complainant provides publishing and educational services by reference to, inter alia, the registered trademark PEARSON VUE; and

2.        the disputed domain name was registered on February 7, 2022, and resolves to various webpages which appear to be direct copies of webpages maintained by Complainant.

 

DISCUSSION

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.  

 

Identical and/or Confusingly Similar

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 (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant refers to registration of PEARSON VUE in several countries but does not provide evidence of any of those registrations. Nonetheless, the Panel was able to verify that NCS Pearson, Inc. is the current owner of United Kingdom Reg. No. UK00904789509, for PEARSON VUE, registered from December 16, 2005. Accordingly, Complainant has rights since it provides proof of its registration of the trademark with a national trademark authority.   

 

For the purposes of comparison of the disputed domain name with the trademark the gTLD, ".org" can be disregarded (see, for example, Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017)). The disputed domain name then entails a trivial variation of the trademark, adding a letter "s" after the family name PEARSON, thus producing what would almost invariably be understood as either the possessive form or pluralisation of the name.  The Panel finds that neither addition to the trademark avoids a finding of confusingly similarity (see, for example, Staples, Inc. v. lin yanxiao, FA 1617686 (Forum June 4, 2015) finding <stapeles.com> confusingly similar to the STAPLES mark; EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) finding <eebay.com> confusingly similar to EBAY)).

 

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

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 noncommercial 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 (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

In consequence of these proceedings, the Registrar disclosed "Leonard Nicky" as the name of the underlying domain name registrant. That name does not in any way indicate that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights.  Complainant states that there is no association between the parties and Respondent has no authority to use the trademark. Further, Complainant provides evidence that several pages of the resolving website, including a "sign-in" webpage, replicate Complainant's webpages. Complainant makes the reasonable inference that Internet users who believe they have reached the genuine site of Complainant are likely to be duped into sharing sensitive personal information with Respondent.

 

The Panel finds that Complainant has made a prima facie case (see, for example, Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant's mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name)). 

 

The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

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 that Respondent's actions fall under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. It is more likely than not that the resolving website exists for commercial gain in some form or another. In terms of the Policy, the Panel finds that Respondent has intentionally used the disputed domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with as to the source, sponsorship, affiliation, or endorsement of Respondent's website.

 

Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <pearsonsvue.org> domain name be TRANSFERRED from Respondent to both named complainants jointly, as requested.

 

 

Debrett G. Lyons, Panelist

Dated:  February 28, 2024