Houghton Mifflin Company v. Domaincar
Claim Number: FA0601000628213
Complainant is Houghton Mifflin Company (“Complainant”), 222 Berkeley Street, Boston, MA 02116. Respondent is Domaincar (“Respondent”), Galerias 3, Zona 5, Panama 5235, Panama.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwweduplace.com>, registered with Dstr Acquisition Vii, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 17, 2006.
On January 19, 2006, Dstr Acquisition Vii, LLC confirmed by e-mail to the National Arbitration Forum that the <wwweduplace.com> domain name is registered with Dstr Acquisition Vii, LLC and that Respondent is the current registrant of the name. Dstr Acquisition Vii, LLC has verified that Respondent is bound by the Dstr Acquisition Vii, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 9, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwweduplace.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <wwweduplace.com> domain name is confusingly similar to Complainant’s EDUCATION PLACE mark.
2. Respondent does not have any rights or legitimate interests in the <wwweduplace.com> domain name.
3. Respondent registered and used the <wwweduplace.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Houghton Mifflin Company is a large publishing company that operates a School Division called “Education Place.” Complainant’s “Education Place” provides educational resource services, including games and activities, to elementary school students and teachers. Complainant uses the <eduplace.com> domain name to provide 50,000 pages of educational materials, including supplementary materials for school textbooks, and online tools in math, language, social studies, and science. Complainant’s <eduplace.com> domain name, in operation since 1996, is the longest-running website of any educational publisher.
Complainant registered the EDUCATION PLACE mark with the United States Patent and Trademark Office (“USPTO”) on March 3, 1998 (U.S. Reg. No. 2,140,700). Complainant also registered the HOUGHTON MIFFLIN EDUCATION PLACE mark on March 3, 1998 (U.S. Reg. No. 2,140,707). Complainant registered the <eduplace.com> and <educationplace.com> domain names on May 14, 1996, and March 8, 1999, respectively.
Respondent registered the <wwweduplace.com> domain name on October 21, 2002.
Respondent is using the disputed domain name to redirect Internet users to a web directory containing links to Complainant’s direct competitors.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has established rights in the EDUCTION PLACE
mark through registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA
198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <wwweduplace.com> domain name is
confusingly similar to Complainant’s EDUCATION PLACE mark pursuant to Policy ¶
4(a)(i) because it adds “www” to the beginning of the mark and abbreviates the
term “education” into “edu.” Moreover,
Complainant has registered the <eduplace.com> domain name for use in
connection with Complainant’s website which provides information regarding
Complainant’s products and services.
Panels have held that the addition of “www” and the abbreviations of
words both make a domain name confusingly similar to a complainant’s mark. See Microsoft Corp. v. Montrose Corp.,
D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com>
to be confusingly similar even though the mark MICROSOFT is abbreviated); see
also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001)
(finding that the <mnlottery.com> domain name is confusingly similar to
the complainant’s MINNESOTA STATE LOTTERY registered mark); see also Marie
Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the
letters "www" are not distinct in the "Internet world" and
thus the respondent 's <wwwmarieclaire.com> domain name is confusingly
similar to the complainant's MARIE CLAIRE trademark); see also Dana Corp. v.
$$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19,
2002) (finding the respondent's <wwwdana.com> domain name confusingly
similar to the complainant's registered DANA mark because the complainant's
mark remains the dominant feature).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <wwweduplace.com> domain name. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <wwweduplace.com>
domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO
June 20, 2000) (“By not submitting a response, Respondent has failed to invoke
any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel will now examine that
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
There is also no evidence in the record suggesting that
Respondent is commonly known by the <wwweduplace.com> domain
name. Therefore, Respondent has not
established rights or legitimate interests in the <wwweduplace.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Furthermore, Respondent is using the <wwweduplace.com> domain name, which is confusingly similar to Complainant’s EDUCATION PLACE mark, to divert Internet users to a commercial website displaying links to Complainant’s direct competitors. Such use of the disputed domain name for commercial gain by misdirecting users to Complainant’s competitors does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <wwweduplace.com> domain
name, which is confusingly similar to Complainant’s EDUCATION PLACE mark, to
divert Internet users to Respondent’s website that features links to
Complainant’s direct competitors. The
Panel infers that Respondent receives click-through fees for diverting
consumers to these websites. Therefore,
Respondent is taking advantage of the likelihood of confusion between
Respondent’s domain name and Complainant’s mark and capitalizing on the
goodwill associated with the mark. The
Panel finds that such use constitutes bad faith registration and use pursuant
to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes); see also Luck's
Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30,
2000) (finding that the respondent engaged in bad faith use and registration by
using domain names that were identical or confusingly similar to the
complainant’s mark to redirect users to a website that offered services similar
to those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site).
Furthermore, the misspelling of Complainant’s EDUCATION PLACE mark in Respondent’s <wwweduplace.com> domain name indicates that Respondent is typosquatting. Consumers intending to type in the <eduplace.com> domain name may unintentionally omit a period and end up at Respondent’s <wwweduplace.com> domain name. Such use is indicative of bad faith pursuant to Policy ¶ 4(a)(iii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“In typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing [<wwwmedline.com>] domain name.”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwweduplace.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 28, 2006
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