DECISION

 

Association of Waldorf Schools of North America v. Dominik Heybeerg

Claim Number: FA2407002104906

PARTIES

Complainant is Association of Waldorf Schools of North America ("Complainant"), represented by Alexis Crawford Douglas of K&L Gates LLP, Illinois, USA. Respondent is Dominik Heybeerg ("Respondent"), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <steinercollege.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 July 3, 2024; Forum received payment on July 3, 2024.

 

On July 3, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <steinercollege.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 July 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 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@steinercollege.org. Also on July 9, 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 July 30, 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 Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in STEINER. Complainant holds a national registration for that trademark.  Complainant 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 because it has no trademark rights; is not known by the same name; is not authorized by Complainant to use the trademark, and the use of the domain name in conjunction with educational services creates a false suggestion of association with Complainant.

 

Complainant alleges that Respondent registered the disputed domain name in bad faith being aware of Complainant's business and trademark, and then used the disputed domain name in bad faith by linking it to a website that impersonates Complainant.

 

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 is an association of independent schools and institutes in Canada, the United States, and Mexico that owns and licenses the marks STEINER, RUDOLPH STEINER, and WALDORF for educational services;

2.       Complainant is the owner of United States Patent & Trademark Office ("USPTO") as Reg. No. 4,161,667, for the mark, STEINER, registered since June 19, 2012, with a first use date in 1928 and a first use in commerce date in 2011;

3.       the disputed domain name was registered on October 11, 1996, using a privacy service to shield the name of Respondent;

4.       the domain name is for sale for USD2,500;

5.       for many years the domain name was not in use but in recent years has resolved to a website using the STEINER, RUDOLF STEINER and WALDORF trademarks;

6.       that website purports to be the website of an association member school, Rudolf Steiner College Canada, in Ontario, Canada, and copies video and other information from Complainant's own website and seeks personal information from would-be consumers of Complainant's services; and 

7.       Respondent did not answer Complainant's June 6, 2024 cease and desist letter.

 

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 therefore has rights since it provides proof of its registration of the trademark STEINER with the USPTO, a national trademark authority.   

 

The disputed domain name is confusingly similar to Complainant's trademark. For the purposes of comparison, the gTLD can usually be disregarded but in this case the particular gTLD, ".org", only compounds the risk of confusion. Likewise, addition of the word "college" to the trademark is purely descriptive and of no distinguishing value (see, for example, 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."; Prosper Funding, LLC v. Contact Privacy Inc., Customer 0153078519 / Dessalines Prosper, Prosper Credit Consultants, D2019-0118 (WIPO March 7, 2019) holding that "[u]nder the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity."; Bloomberg Finance L.P. v. Thomas Hampson / ClickTech Solutions Ltd., FA1906001850421 (Forum August 19, 2019), finding <bloomberg-college.com> confusingly similar to the complainant's BLOOMBERG trademark; Harvard University Trademark Program / President and Fellows of Harvard College v. Harvard Research and Innovation College, FA1906001849944 (Forum July 26, 2019) finding <harvardcollege.education> confusingly similar to the complainant's HARVARD trademark.).

 

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)).

 

The name of Respondent does not indicate that Respondent might be commonly known by the domain name (see, for example, Tercent Inc. v. Lee Yi, FA 0139720 (Forum Feb. 10, 2003) stating "nothing in [the respondent's] WHOIS information implies that [the respondent] is 'commonly known by' the disputed domain name" as one factor in determining that Policy ¶ 4(c)(ii) does not apply."). There is no evidence that Respondent has any trademark rights.  Complainant states that there is no association between the parties.  The domain name is for sale. The domain name has been used in the manner already described creating the impression of a website maintained by Complainant or a member school.

 

A prima facie case has been made that Respondent lacks rights or interests in the domain name (see, for example, Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) finding that the respondent's non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); Chime Financial, Inc. v. Raditya, D2023-0395 (WIPO March 29, 2023) finding no legitimate rights or interests in the domain when it resolved to a website impersonating Complainant).

 

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.  In making that finding the Panel notes that whilst the registration date of the relevant trademark (June 19, 2012) postdates the creation date of the disputed domain name by 6 years, the actual use of the trademark predates the creation date of the domain name by many decades.

 

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 use of the domain name falls under paragraphs 4(a)(i) and (iv) above. The domain name is for sale for an amount vastly exceeding the likely out-of-pocket acquisitional and maintenance costs directly related to the domain name. The Panel finds it more likely than not that Respondent registered the domain name primarily for the purpose of selling it to Complainant. Further, the Panel has already found the domain name to be confusingly similar to the trademark. The resolving website exists for commercial gain in one form or another, the exact mode being unimportant.  In terms of the Policy, the Panel finds that Respondent intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of that website.

 

The 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 <steinercollege.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated:  July 31, 2024