DECISION

 

Law School Admission Council, Inc. v. Kyle Noble

Claim Number: FA2501002137188

 

PARTIES

Complainant is Law School Admission Council, Inc. ("Complainant"), represented by Wendy K. Marsh of Nyemaster Goode, P.C., Iowa, USA. Respondent is Kyle Noble ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lsatpracticegenie.com>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 27, 2025; Forum received payment on January 27, 2025.

 

On January 27, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <lsatpracticegenie.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 January 28, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2025 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@lsatpracticegenie.com. Also on January 28, 2025, 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 19, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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 is a not-for-profit organization that provides products and services that support candidates and schools throughout the law school admission process with innovative solutions to expand and diversify the range of prelaw students, enhance student outcomes in law school, and support legal professionals throughout their careers. Complainant's goods and services include the well-known Law School Admission Test (LSAT) which is an integral part of law school admission in the United States, Canada, and many other countries. Each year, over 100,000 potential law school applicants worldwide take the LSAT. In addition to providing the famous LSAT law school exam, Complainant provides the free "Official LSAT Prep" whereby users create a personalized practice plan and build their skills with interactive lessons and official practice questions from real LSAT exams. Complainant has been using its LSAT trademark since at least as early as 1948 and this is the subject of numerous registrations at the United States Patent and Trademark Office ("USPTO) (e.g., Reg. No. 1082047 dated January 10, 1978 for LSAT, Reg. No. 1946592 dated January 9, 1996 for THE OFFICIAL LSAT PREPTEST, Reg. No. 5675499 dated February 12, 2019 for DIGITAL LSAT). Since 2000, it has owned the <lsat.com> domain name and it owns a number of other domain names that incorporate the mark such as <lsat-etutor.com>, <lsatlawpath.com> and <lsatdigital.com>.

 

The <lsatpracticegenie.com> domain name was registered on December 18, 2024 and is confusingly similar to the LSAT mark as the added words and the TLD are insufficient to distinguish it from the mark.

 

Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known thereby and it resolves the domain name to a website that features the mark, copyrighted works of Complainant, and which appears to be fraudulent in nature.

 

The disputed domain name was registered and is used in bad faith as the content of its resolving website appears to be fraudulent, it disrupts Complainant's business, and it seeks commercial gain based on a likelihood of confusion with the LSAT mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant owns trademark rights to the LSAT mark and the <lsatpracticegenie.com> domain name is confusingly similar to such mark;

-       Respondent does not have rights or legitimate interests in the disputed domain name where it is used to pass off fraudulent services as those of Complainant and there is no evidence that Respondent is commonly known by the domain name; and

-       The disputed domain name was registered and is used in bad faith where its website fraudulently passes itself off as Complainant, disrupting Complainant's business and for commercial gain, based on a likelihood of confusion with the LSAT mark.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in its various LSAT marks through registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).") Here, Complainant provides copies of a number of its USPTO registration certificates. Therefore, the Panel finds that Complainant has rights in the LSAT marks under Policy ¶ 4(a)(i).

 

Next, Complainant argues that Respondent's <lsatpracticegenie.com> domain name is confusingly similar to the LSAT marks because it incorporates the mark and adds the words "practice" and "genie" as well as the ".com" TLD. Where a mark is clearly recognizable, the addition of other words typically does not negate any confusing similarity between a disputed domain name and the mark under Policy ¶ 4(a)(i). See 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.") The Panel is aware of the decision in Law School Admission Council, Inc. v. Bradley Yi, FA 2098364 (Forum June 12, 2024), but disagrees with its holding. In that case, the Panel found that <thelsatgenius.com> "domain is not similar or confusingly similar to Complainants marks because the addition of the word 'genius' changes the character of the domain from referring to the LSAT test to a person able to successfully take the test." Id. Rather, the Panel finds that the present case aligns with the findings in Law School Admission Council, Inc. v. Nathan Cepelinski / City Jingles, FA 2098803 (Forum June 12, 2024) ("the <masterlsat.com> domain name is confusing similar to Complainant's LSAT mark as it wholly incorporates the LSAT mark and adds a generic term ('master'), and a gTLD"), and Law School Admission Council, Inc. v. Vandalay Media / sean Matthews, FA 2096289 (Forum May 30, 2024) ("each of the <lsatdoctor.com>, <lsat911.org> and <lsatdr.com> domain names are confusing similar to Complainant's LSAT mark as they each wholly incorporate the LSAT mark and add either a generic term or abbreviation ('doctor/dr') or a three-digit number, and a gTLD.") The present Panel notes that the <lsatpracticegenie.com> domain name highlights Complainant's LSAT mark and contains no indication that that it may originate from a source other than the mark's owner. Thus, it finds that the <lsatpracticegenie.com> domain name is confusingly similar to the LSAT marks under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that 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").

 

With reference to Policy ¶ 4(c)(ii), Complainant asserts that Respondent is not commonly known by the disputed domain name based on Respondent's personal name and its lack of permission to use Complainant's mark. The Panel notes that it is well accepted that WHOIS information may be considered when determining whether a respondent is commonly known by a disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same). In addition, where there is no evidence to indicate that a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interests in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)"); see also Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS Registrar verification for the <lsatpracticegenie.com> domain name lists the Registrant as "Kyle Noble" and Complainant states that it "has not licensed nor otherwise authorized Respondent to use the Domain Name, nor 'LSAT', nor any other mark owned by Complainant." It goes on to specify that "Respondent is further not affiliated with Complainant in any manner." Based on the presented evidence, the Panel finds no ground upon which to find that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Next, citing Policy ¶ 4(c)(i), the Complaint asserts that Respondent does not use its domain for a bona fide sale of goods or services. Rather, it claims that Respondent uses the disputed domain name to divert and confuse customers by offering deceptive services under the LSAT mark. Passing oneself off as a complainant and diverting users to a respondent's webpage, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).") Here, Complainant provides information about its LSAT services as well as screenshots of the <lsatpracticegenie.com> website. Respondent's site displays the LSAT mark at the top and below that the tagline "Higher LSAT Scores". A bit further down appears the phrase "Relied on by students at" followed by the names and logos of a number of educational institutions including Stanford, Harvard, USC, Columbia, and the University of Pennsylvania. This description of Respondent's website initially gives the impression that Respondent is offering LSAT review services and access to practice exams, whether independently created or copied from Complainant and one could initially be drawn to conclude that Respondent is making a bona fide offering of services or a fair use of Complainant's mark. See Law School Admission Council, Inc. v. Nathan Cepelinski / City Jingles and Law School Admission Council, Inc. v. Vandalay Media / sean Matthews, supra. However, a few things stand out to the Panel which give it pause in reaching such a conclusion.

 

First, the Panel notes that Respondent's home page displays at least nine 5-star reviews of its service. These include the first name and country of the reviewer (three from the U.S.A., two from Canada, and one each from Australia, France, Germany, and Spain) though none of them contain any dates. For example, one states "ChatGPT could never. I think PracticeGenie is the only reason I'm passing my classes still. Celeste from United States". The disputed domain name was registered on December 18, 2024 and it seems rather odd to this Panel that a legitimate test preparation service could have developed and displayed such reviews by the time the Complaint's evidentiary screenshot was captured on January 23, 2025. Further, the LSAT is a pre-admissions test and U.S.A. law schools typically hold exams at the end of their semesters. Thus, it is highly questionable that the review from "Celeste from United States" referring to "passing my classes" is authentic.

 

Second, when one attempts to click on a link to purchase Respondent's services, it results in an error page.

 

Third, appearing as a floating button over the page is a link titled "Sign up free" but, when one clicks on this, they are brought to a separate page, again with an LSAT masthead, which invites users to pay monthly ($90), quarterly ($180), or annual ($360) fees. There does not appear to be any free sign-up available on the site.

 

Fourth, Complainant asserts that the site also provides "a video demonstration for users that constantly scrolls through various copyrighted "LSAT" exams." The use of a complainant's copyrighted material on an accused website has often been held to support a finding of no bona fide offering. See, e.g., Fenix International Limited v. Mudasir Ejaz, yehrishtakyakehlata, D2024-3227 (WIPO Oct. 2, 2024) ("the websites associated with the disputed domain name is being used to offer a mobile application which allow users to access copyrighted content from the Complainant's services.")

 

Third, there is no mention, on the <lsatpracticegenie.com> website, of the lack of any connection between the site and Complainant thus running afoul of the well-known test for nominative fair use of a mark that was set out in the seminal decision of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).

 

Finally, there is no Response in this case and Respondent has not sought to defend or explain its activities.

 

Given the evidentiary limitations of the UDRP, the Panel finds that Complainant has made out a prima facie case that the <lsatpracticegenie.com> website is not a legitimate exam preparation service but is fraudulent and this has not been rebutted by Respondent. Thus, by a preponderance of the evidence presented, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that it is also not making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant asserts that Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the LSAT mark. Actual knowledge can provide a solid foundation upon which to build an argument of bad faith registration under Policy ¶ 4(a)(iii) and can be demonstrated based on the reputation of the mark and the use to which a disputed domain name is put. See WordPress Foundation v. mich delorme / mich d dots tlds, FA 1584295 (Forum Nov. 25, 2014) ("Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant's services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant's mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.") Complainant first asserts that Respondent knew of Complainant and its trademark prior to registering the disputed domain name based on its LSAT mark being famous. While the Panel is personally aware of the mark's reputation, the entirety of Complainant's evidence on this point consists of one page from its <lsac.org> website and such a small amount of proof is typically insufficient to demonstrate the reputation of a mark. However, Respondent's knowledge can be confirmed based on it copying the mark in multiple places on its website as detailed in the previous section. Thus, the Panel finds that Respondent had actual knowledge of Complainant's marks at the time that it registered the disputed domain name.

 

Next, Complainant claims that the <lsatpracticegenie.com> domain name was registered and is used in bad faith where the resolving website disrupts Complainant's business and passes itself off as Complainant, for commercial gain, based on a likelihood of confusion with the LSAT mark under Policy ¶¶ 4(b)(iii) and (iv). Passing off activities, in the absence of a legitimate or fair use exception, have routinely been held to uphold a finding of bad faith. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) ("The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant's METLIFE mark in order to profit from the goodwill associated with the mark.") Also see Central Digital Publishing, LLC v. AlaaEldin ELzahed, FA 1959698 (Forum Sep. 14, 2021) ("Respondent registered and uses the <wordplays.net> domain name in bad faith to disrupt Complainant's business by imper-sonating Complainant and diverting Internet users to the Respondent's competing website.") Complainant asserts that Respondent "attempts to pass off as Complainant or as a licensee thereof and offers for sale unauthorized or counterfeit versions of Complainant's products and services." It further claims that the site "facilitates copyright infringement of the Complainant's copyrighted material" and that this is further evidence of bad faith. The Clash Of Trademarks And Domain Names On The Internet, at 605 (Gerald M. Levine, Legal Corner Press, 2024) ("the fact of copyright infringement together with other evidence, passing off for example and selling counterfeit goods, may bolster the evidence of cybersquatting.") The Panel agrees in light of the content and behavior of the <lsatpracticegenie.com> website as described in the previous section and finds that the disputed domain name was registered and is used in bad faith under Policy ¶¶ 4(b)(iii) and (iv).

 

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 <lsatpracticegenie.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Steven M. Levy, Esq., Panelist

Dated: February 21, 2025