DECISION

 

Learning Resources, Inc. v. 鲁旺龙

Claim Number: FA2502002141481

 

PARTIES        

Complainant is Learning Resources, Inc. ("Complainant"), represented by Susan H. Frohling of Michael Best & Friedrich LLP, Illinois, USA. Respondent is 鲁旺龙 ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <learningresourcesfun.com>, registered with Beijing Zhuoyue Shengming Technologies Company Ltd.

 

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.

 

The Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 21, 2025; Forum received payment on February 21, 2025.

 

On February 23, 2025, Beijing Zhuoyue Shengming Technologies Company Ltd. confirmed by e-mail to Forum that the <learningresourcesfun.com> domain name is registered with Beijing Zhuoyue Shengming Technologies Company Ltd. and that Respondent is the current registrant of the name. Beijing Zhuoyue Shengming Technologies Company Ltd. has verified that Respondent is bound by the Beijing Zhuoyue Shengming Technologies Company Ltd. 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 25, 2025, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of March 17, 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@learningresourcesfun.com. Also on February 25, 2025, the Chinese and English 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 in Chinese and English.

 

On March 18, 2025, 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.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING

Complainant has submitted that the administrative proceeding be conducted in the English language pursuant to UDRP Rule 11(a). That Rule provides that the language of the proceeding is to be the language of the registration agreement relating to the domain name at issue, unless the Panel determines that it should be a different language having regard to the circumstances of the proceeding. Complainant makes this request in light of the Chinese language Registration Agreement which is shown by the Registrar's Verification Response. It is also the established practice in this field to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Previous panels have consistently said that they should take into account all relevant circumstances before making their decision. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party.  See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, "It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.").

 

In that regard, the Complainant submits that the Respondent probably has the ability to understand and converse in English, such that conducting the proceeding in English will not prejudice Respondent.

 

Complainant submits the following circumstances demonstrate the appropriateness of proceeding in English: (i) The Disputed Domain Name wholly contains English words and characters; (ii) the Disputed Domain Name resolves to an English language website shown in Exhibit J; (iii) the Respondent's conduct and website target English speaking users and it replied in English when a sales order was confirmed; and (iv) Complainant does not speak Chinese and translating these documents would put Complainant at a disadvantage and would delay this proceeding.

 

The Panel finds that the evidence shows that the Respondent has facility with the English language and that it is appropriate that the proceeding be conducted in English. The Panel therefore agrees with the submissions proposing that the language of the proceeding should in all the circumstances be English and finds that those submissions are supported by the evidence.

 

The Panel therefore decides that the proceeding should be conducted in the English language.

 

PARTIES' CONTENTIONS

A. Complainant

    Complainant made the following contentions.

1.       The Complainant is a United States company engaged in the making and selling of educational toys and related goods and services and it has been so engaged since 1984.

2.       The Complainant provides its goods and services under the trademark for LEARNING RESOURCES. In particular, the evidence will establish that the Complainant has acquired registered trademark rights in the LEARNING RESOURCES trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration number 6298224, registered on March 23, 2021 and other trademarks for LEARNING RESOURCES (collectively "the LEARNING RESOURCES trademark"). The Complainant has used that trademark since its registration to offer its goods and services.  

3.       The LEARNING RESOURCES trademark has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4.       As well as its trademark, the Complainant has registered the domain name <learningresources.com> that it uses in its business and in particular for its website at www.learningresources.com where it markets its products under the LEARNING RESOURCES trademark and brand.

5.       The Respondent registered the <learningresourcesfun.com> domain name on December 5, 2024 ("the disputed domain name").

6.       The disputed domain name embodies, without the consent of the Complainant, the LEARNING RESOURCES trademark with the addition of the generic word "fun" and the Top Level Domain ".com". 

7.       The disputed domain name is confusingly similar to the LEARNING RESOURCES trademark.

8.       The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:

(a)       the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), but rather has used it for passing itself off as the Complainant or an authorized seller of the Complainant's resources by displaying the Complainant's LEARNING RESOURCES trademark and copyright-protected advertising material;

(b)       the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); and

(c)       there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name under the Policy or otherwise.

9.       The Respondent has registered and used the disputed domain name in bad faith. That is so because:

(a)                      the Respondent had actual knowledge of the Complainant, its name and trademark prior to registering the disputed domain name;

(b)                      the Respondent has used the domain name to create an imposter website so as to pass itself off as the Complainant or or an authorized seller of the Complainant's resources; and

(c)                      all of the acts, facts, matters and circumstances to be revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith.

The evidence will therefore establish that the Complainant has made out all of the grounds it must establish and that it is entitled to the relief it seeks.

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       The Complainant is a United States company engaged in the making and selling of educational toys and related goods and services and it has been so engaged since 1984.

2.       The Complainant provides its goods and services under the trademark for LEARNING RESOURCES. In particular, the evidence will establish that the Complainant has acquired registered trademark rights in the LEARNING RESOURCES trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration number 6298224, registered on March 23, 2021 and other trademarks for LEARNING RESOURCES (collectively "the LEARNING RESOURCES trademark"). The Complainant has used that trademark since its registration to offer its goods and services.  

3.       The Respondent registered the <learningresourcesfun.com> domain name on December 5, 2024 ("the disputed domain name").

4.       The Respondent has caused the disputed domain name to resolve to a website which is an infringement of the Complainant's trademark, passed itself off as the Complainant, offered goods for sale under the trademark that are purported to be goods of the Complainant, disrupted the Complainant's business and generated confusion between the Complainant and the Respondent.

5.       By reason of the matters aforesaid, and as established by the evidence, the disputed domain name is confusingly similar to the LEARNING RESOURCES trademark, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and used in bad faith.

6.       Accordingly, the disputed domain name should be transferred from the Respondent to the Complainant.

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

The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely in this proceeding. The evidence establishes that the Complainant provides its goods and services under the trademark for LEARNING RESOURCES. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the LEARNING RESOURCES trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration number 6298224, registered on March 23, 2021 and other trademarks for LEARNING RESOURCES (collectively "the LEARNING RESOURCES trademark"). The Complainant has used that trademark since its registration to offer its goods and services.  

The aforesaid facts have been established by documentary evidence that the Panel has examined and finds to be in order.

The Complainant has thus established its trademark rights and hence its standing to bring this proceeding.

The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's LEARNING RESOURCES trademark.

The Panel finds that the disputed domain name is confusingly similar to the LEARNING RESOURCES trademark. The disputed domain name embodies, without the consent of the Complainant, the entirety of LEARNING RESOURCES trademark and the addition of the generic word "fun" and the addition of the generic Top Level Domain ".com". It is now well-established that when a domain name includes the entirety of a trademark, it is more likely than not that the domain name is invoking the trademark and is thus confusingly similar to it. In the present case it is obviously so. Thus, internet users would read the domain name as invoking the LEARNING RESOURCES trademark and as dealing with the Complainant's goods and services offered under the trademark, and as being either a domain name of the Complainant itself or one that has been registered with its consent. The presence of the generic word "fun" does not negate that conclusion but re-affirms it because, as the Complainant submits, internet users would take the domain name to mean that it was fun, particularly for children, to use the Learning Resources educational products.

The addition of the generic Top Level Domain ".com" is ignored in making the comparison, because all domain names must have such an extension.

The Panel therefore finds that the disputed domain name is confusingly similar to the LEARNING RESOURCES trademark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish under the Policy.

 

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

 

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name on all of the grounds relied on by the Complainant, which are:

(a)       the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), but rather has used it for passing itself off as the Complainant or an authorized seller of the Complainant's resources by displaying the Complainant's LEARNING RESOURCES trademark and copyright-protected advertising material; the Respondent has caused the domain name to resolve to a website that the Complainant rightly describes as an imposter website for that is; its contents are shown in the Complainant's Exhibit J which the Panel has examined; it shows extensive use of the LEARNING RESOURCES trademark on each page, many examples of the Complainant's products and no brand other than LEARNING RESOURCES; it also shows many images and photographs which the evidence is have been taken straight from the Complainant's genuine and official website and which are copyright; the Complainant has helpfully created a two-columned layout of the Respondent's website and the Complainant's official and genuine website; on the left is the Respondent's site and on the right is the Complainant's site; in each case there is an extraordinary similarity and indenticality between the products offered by the Respondent and how the same products are displayed on the Complainant's site, showing beyond doubt that they have been stolen and copied; the Respondent's site also has links for "Contact" and "Subscribe", showing an attempt to collect personal information from users; as all of this is presented under the imprimatur of the Complainant's trademark and is obviously a subterfuge, there is no way that it could give a right or legitimate interest in the domain name used to perpetrate that subterfuge;

(b)       the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); there is no evidence that the Respondent is commonly known by the domain name and no evidence that it could be known by any name other than its own; and

(c)       there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name under the Policy or otherwise; thus, it is apparent to the Panel that the evidence does not give rise to any right or legitimate interest on the grounds that the Respondent has used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii) or that the domain name could have been registered or used with any sort of consent or permission from the Complainant.

The Complainant has therefore made out a persuasive case for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.

All of these matters make out the prima facie case against the Respondent. The Respondent has not filed a Response and is in default and has thus not rebutted the prima facie case against it.

 

The Complainant has therefore made out the second of the three elements it must establish under the Policy.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in the Policy ¶ 4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds. In view of the evidence discussed above, which is equally applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat, it is clear that the Complainant has made out all of the grounds relied on.

In particular, it is clear from the evidence that, as the Complainant has submitted:

(a)                      the Respondent had actual knowledge of the Complainant, its name and trademark prior to registering the disputed domain name; the evidence is that the Complainant, its name and brand and above all its trademark are and have been at all material times very well-known and this is shown by the wide media coverage its has received and the number of awards it has received , all of which is set out in detail in the Complaint; thus, the Respondent clearly had actual knowledge of the Complainant and its trademark when it registered and used the disputed domain name;

(b)                      the Respondent has used the domain name to create an imposter website so as to pass itself off as the Complainant or or an authorized seller of the Complainant's products; there is no doubt from the evidence as a whole that the Respondent set about pretending that it was the Complainant or authorized by it and set about trying to deceive internet users into thinking that this was so and that the goods on sale were genuine LEARNING RESOURCES when the reality must be that they are counterfeit or illegally obtained and offered for sale; and

(c)                      all of the acts, facts, matters and circumstances revealed by the evidence have shown that the Respondent registered and used the disputed domain name in bad faith; the Respondent has clearly set about disrupting the Complainant's business within the meaning of Policy 4(b) (iii) and sought to generate confusion between its website and the Complainant's official and genuine website within the meaning of Policy ¶ 4(b)(iv) for financial gain; the Respondent has also passed itself off as the Complainant and has sought to obtain personal information from internet users under cover of its subterfuge.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the LEARNING RESOURCES trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has also cited several prior UDRP decisions that support all of its contentions.

The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks, namely transfer of the disputed domain name.

 

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

 

 

 

The Honorable Neil Anthony Brown KC, Panelist

Dated: March 19, 2025