Capsim Management Simulations, Inc. v. Charles Cook / Capsim Tutor
Claim Number: FA1408001576766
Complainant is Capsim Management Simulations, Inc. (“Complainant”), represented by Stephanie J. Harris of Goldberg Kohn Ltd., Illinois, USA. Respondent is Charles Cook / Capsim Tutor (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capsimtips.com>, <capsimtricks.com>, <capstonehelp.com>, <capsimtutor.com>, <compxmtutor.com>, and <moroccocapsimtutor.com> (the “Domain Names”), registered with Godaddy.Com, 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.
CLIVE ELLIOTT QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2014; the National Arbitration Forum received payment on August 25, 2014.
On August 26, 2014, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the Domain Names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the Domain Names. 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 August 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2014 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 email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org. Also on August 27, 2014, 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.
A timely Response was received and determined to be complete on September 15, 2014.
A timely Additional Submission was received from Complainant and determined to be complete on September 19, 2014.
On 25 September 21014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
Complainant states that it is a growing company that creates, markets and delivers interactive business simulation programs, software and other educational and training materials and services to educational institutions and private businesses, many of which are sold under the trademarks CAPSIM, CAPSTONE and COMPXM (the "Marks").
Complainant also states that business schools, universities, and corporations worldwide purchase and use CAPSIM, CAPSTONE and COMPXM branded software to educate their students and executives, and contends that its products and services are among the bestselling business simulation solutions in the world.
Complainant contends that it has been using the Marks and various logos in connection with the products sold under the Marks since as early as January 1995.
Complainant asserts that it has expended considerable time, money and resources developing, promoting and advertising its Marks through various media, and as a result, together with its quality standards, Complainant contends that the Marks have earned significant goodwill and public recognition.
Complainant contends that it also promotes and advertises its interactive business simulation programs and other educational materials and services using the Marks on its website located at capsim.com.
Complainant states that the Domain Names were registered by Respondent on various dates between October 22, 2013 and May 27, 2014, all of which were after Complainant began using and obtained registrations for the three marks comprising the Marks. Complainant further states that Respondent registered five of the six Domain Names promptly after Complainant sent Respondent a cease and desist letter on March 6, 2014 regarding the first Domain Name, <capsimtutor.com>.
Complainant submits that the Domain Names are identical to Complainant’s Marks except for the additional of generic words and the ".com" top-level domain. In particular:
(a) <capsimtutor.com>; <capsimtips.com>; and <capsimtricks.com> contain Complainant’s CAPSIM Mark with the addition of the generic words "tutor", “tips” and “tricks” respectively together with the ".com" top-level domain;
(b) <capstonehelp.com> contains Complainant's CAPSTONE Mark with the addition of the generic word "help" and the ".com" top-level domain to;
(c) <compxmtutor.com> contains Complainant's COMPXM Mark with the addition of the generic word "tutor" and the ".com" top-level domain to; and
(d) <moroccocapsimtutor.com> contains Complainant's CAPSIM Mark with the addition of the generic word "tutor", together with the geographically descriptive term "morocco", and the ".com" top-level domain.
Complainant alleges that, in an effort to attract students who are attempting to find guidance and answers that will enable them to out-perform their classmates and "win" the simulation, Respondent has added generic words such as "tutor," "tricks," "tips," and "help" to Complainant's Marks. Complainant further alleges that Respondent's addition of such terms to Complainant's Marks does not distinguish the Domain Names from the Marks and the Domain Names are confusingly similar to Complainant’s Marks.
Complainant contends that this confusion is magnified by the fact that the webpages at virtually all of the Domain Names are purportedly used in order to promote the sale or offering of "tutoring" services that relate directly to Complainant's good and services. Five of Respondent's six websites, located at the following Domain Names, purport to offer educational assistance and "tutoring" in Complainant's educational, training and business simulation software programs and tests: (a) <capsimtutor.com>; (b) <capsimtips.com>; (c) <capsimtricks.com>; (d) <capstonehelp.com>; and (e) <compxmtutor.com>. When a user clicks on any of the live "CapSimTutor.com" hyperlinks on one of Respondent's websites, the Internet user is then redirected to Respondent's website at the Domain Name <capsimtutor.com>, which purports to offer "CapSim Business Simulation Tutoring" and promises a "Perfect Score Every Time."
Complainant states that Respondent's registration of the Domain Names is likely to cause confusion or mistake with respect to Complainant's Marks, based upon the strength of Complainant's Marks, the confusing similarity between Respondent's second-level Domain Names and Complainant's Marks, and the fact that Respondent is using its Domain Names as "bait" to attract customers who are searching for information about Complainant and its educational goods and services. Respondent's addition of the generic terms "tutor," "tricks," "tips" and "help," which are highly related to the educational and training goods, services and testing offered by Complainant, does not distinguish the Domain Names from the Marks, but rather supports a finding of confusing similarity.
Complainant asserts that upon its information and belief, neither Respondent nor any business operated by Respondent, nor any product or service offered by Respondent, has been commonly known by any of the Domain Names, and that Respondent's use of the Marks on its webpages is wholly unauthorized, and Respondent therefore has no legitimate rights in any of the Domain Names.
Complainant asserts that the sole purpose behind Respondent's registration and operation of the Domain Names is to make money by baiting Internet traffic to Respondent's websites, which resolve to what appear to be commercial websites offering so-called "tutoring" or other assistance with Complainant's educational and business simulation programs and testing. Complainant claims that this is not a bona fide offering of goods or services or a legitimate non-commercial or fair use.
Respondent's website at the Domain Name <moroccocapsimtutor.com> resolves to a landing page stating that Respondent intends to launch content in the future. Given Respondent's course of conduct with respect to the other Domain Names at issue, Complainant asserts that Respondent's registration and use of the domain name <moroccocapsimtutor.com> is in bad faith and not a bona fide or legitimate commercial use.
Complainant advises that on March 6, 2014, its counsel sent a letter to Respondent demanding transfer of the Domain Name <capsimtutor.com>, which Respondent has not replied to.
Finally, Complainant contends that use of the Domain Names to sell "tutoring" services for Complainant's own products and services is calculated to disrupt, Complainant's business and is further evidence of bad faith.
Respondent asserts that Complainant, at "Capsim.com", offers software and products, but no tutoring services, and Respondent, at <capsimtutor.com>, only offers a tutoring service, and no software or products. Therefore, it is argued that an Internet user cannot be confused when searching for the term "tutor".
Respondent suggests a finding of reverse domain-name hijacking is appropriate. Respondent contends that Complainant advises its customers/clients against "tutoring" and deems tutoring as "cheating". On that basis, it submits that Internet users searching with the term "tutor" will not be "confused" about domain names that offer "tutoring services". Respondent only offers "tutoring services", and Complainant does not. Respondent suggests that as they are not competitors, there is no infringement, especially as Respondent is known for offering "tutoring services", whereas Complainant is known to advise against "tutoring services".
Respondent contends that the word 'Capsim', as defined by 'NASA', stands for 'Captive Simulation', and is a modeling and numerical simulation, and that 'Capsim' is also a location, found within the country of 'Morocco'. 'Capsim' is a generic term and is found in use by many other companies that are engaged in modeling simulations.
Respondent claims that CapSimTutor.com, along with the other Domain Names mentioned, are not in competition with 'Capsim.com' as both sites offer different services, without service overlap, and therefore no internet user can be "confused".
Respondent asserts that its Domain Names are directly related to their target audiences, which would be an internet user that is searching for a "simulation tutoring service", and therefore Respondent has rights since these Domain Names are commonly known, associated, and a bona fide offering of the services that are being offered by Respondent.
In terms of the allegation that Respondent is: "selling answers" & "secret 'cheat' codes", Respondent says it is only offering a "tutoring" service, instead of the software and or materials. Complainant alleges that Respondent's domains: "mislead Internet users into believing that his services are affiliated with Complainant's services". In response to this Respondent says Complainant has created 'CapsimCheats.com' which states that tutoring is cheating, therefore internet users would not be mislead into believing that Respondent's domains are affiliated with Complainant's domains. In terms of the allegation that Respondent's domains are: "redirecting internet traffic", Respondent says it could not be redirecting traffic since "tutoring" is not what Complainant is offering.
Respondent contend that the words “Morocco", "Capsim" and "Tutor" are all generic terms, with "Morocco, Capsim" being a place in the country "Morocco", and the term "Tutor" having no relation to any of the goods and or services offered by Complainant. Respondent submits that the term "tutor" only relates to its Domain Names and therefore Respondent is using the Domain Names in good faith, is bona fide and legitimate commercial use.
Respondent goes on to say that the term "tutor" has no relation to Complainant's goods and/or services, and Complainant operates its website <capsimcheats.com> to inform consumers and/or Internet users that "tutoring" is treated as "cheating". Complainant redirects Internet users from <capsimtutoring.com> to <capsim.com>, therefore Complainant is using the generic term "tutor" in bad faith by "baiting" Internet users and redirecting these internet users to Complainant’s "Capsim.com" domain.
Respondent points out that Complainant's domain, <capsimcheats.com> states that: "Capsim's intellectual property law firm routinely searches the Internet looking for websites that offer to sell cheat sheets and or ‘consulting services’ to students. When one pops up, they file a lawsuit." Respondent advises that it does not offer "cheat sheets" but instead offers "consulting services"/"tutoring services".
Respondent advises that it does not offer any products or services such as "cheat codes", "answers", "competing products", "counterfeit versions", it only offers "tutoring" and therefore is using the term "tutor" in good faith.
C. Complainant’s Additional Submissions
Complainant notes that Respondent argues there is no likelihood of confusion between the Domain Names and Complainant's Marks, and also that he has a legitimate interest in the Domain Names, because Respondent purportedly offers "tutoring services" and Complainant does not offer "tutoring services."
Complainant submits that this claim (which is not supported by evidence as to Respondent's so-called "tutoring" services) is contrary to authority from this forum, which Complainant cites in the Amended Complaint.
First, Respondent's addition of the generic terms "tutor," "tricks," "tips" and "help," are highly related to the educational and training goods, services and testing that Respondent admits Complainant offers, does not distinguish the Domain Names from the Marks, but rather supports a finding of confusing similarity.
Further, the authority in this forum is also clear that using the Domain Names that fully incorporate Complainant's Marks in order to sell answers, cheat codes or so-called "tutoring" or other assistance with Complainant's business simulation programs and testing is not a bona fide offering of goods or services or a legitimate non-commercial or fair use. Respondent makes no attempt to address this authority and, as a result, his first argument fails.
Respondent also argues that "Capsim" is a generic term and, thus, he has a legitimate interest in the Domain Names. But the Trademark Act establishes a presumption of validity that accompanies Capsim's Certificates of Registration. Respondent offers no evidence to rebut this presumption and, accordingly, this argument fails as well.
6. REMEDY SOUGHT
Complainant requests that the Panel issue a decision that the Domain Names registrations be transferred to Complainant.
7. OTHER LEGAL PROCEEDINGS
No other legal proceedings have been commenced or terminated in connection with or relating to the Domain Names that is the subject of this Amended Complaint.
8. AMENDED COMPLAINT TRANSMISSION
Complainant asserts that a copy of this Amended Complaint, together with the cover sheet as prescribed by the National Arbitration Forum's Supplemental Rules, has been sent or transmitted to Respondent (the Domain Name holder), in accordance with ICANN Rule 2(b)
For the reasons set out below the Panel concludes that Complainant has
established all three elements required under the ICANN Policy. Accordingly, the requested relief should follow.
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.
Complainant claims rights in the CAPSIM, CAPSTONE, and COMPXM marks through United States Patent and Trademark Office ("USPTO") registrations, defined above as the Marks. Complainant uses the Marks in connection with interactive business simulation programs, software, and other educational and training materials designed to educate students and business executives. Such registrations with the USPTO evidence Policy ¶ 4(a)(i) rights in the Marks.
Complainant argues the Domain Names are confusingly similar to the CAPSIM mark. Complainant claims the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to the confusing similarity analysis. Prior panels have agreed with this view. See, e.g., Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, Complainant claims the Domain Names merely add a generic/descriptive term to the otherwise included mark, including the terms “tips,” “tricks,” and “tutor.” Additionally, Complainant notes the <moroccocapsimtutor.com> domain name also includes the geographically descriptive term “morocco.” Complainant argues that such addition of such terms to the CAPSIM mark does not distinguish the domain names from the mark. Prior panels agree. In Mead Johnson & Company, LLC v. noom kung, FA 1521731 (Nat. Arb. Forum Oct. 24, 2013), the panel held that the addition of multiple terms, both generic and descriptive, do not negate a finding of confusing similarity. Accordingly, the Panel agrees that the inclusion of a gTLD and addition of a generic or descriptive terms does not sufficiently distinguish the domain name from the incorporated mark.
Similarly, Complainant claims the <capstonehelp.com> domain name is confusingly similar to Complainant’s CAPSTONE mark and the <compxmtutor.com> domain name is also confusingly similar to the COMPXM mark. The same considerations apply as above.
The Panel notes that Respondent argues the CAPSIM mark is generic in nature. However, this argument is not applicable under Policy ¶ 4(a)(i), and therefore will be covered in Policy ¶¶ 4(a)(ii) and (iii) where appropriate. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant argues that Respondent lacks rights and legitimate interests in the Domain Names. First, Complainant claims Respondent has not been commonly known by the any of the Domain Names. The Panel notes that the registrant of the Domain Names is listed in the WHOIS as “charles cook / Capsim Tutor.” On the basis of this evidence, the Panel finds that Respondent has failed to provide sufficient affirmative evidence to show it is commonly known by the Domain Name for purposes of Policy ¶ 4(c)(ii).
Complainant next argues that Respondent is operating five of the six disputed domain names in an apparent attempt to make money by baiting Internet traffic to Respondent’s own website to promote tutoring or other assistance with Complainant’s educational and business simulation programs and testing. Complainant maintains in its additional submission that such use does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use. In so arguing, Complainant cites Penn Foster, Inc. v. A. Kalinchuck, FA 1383827 (Nat. Arb. Forum May 25, 2011), where the Panel found that the use of confusingly similar domain names resolving to websites selling the answers to the complainant’s exams was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Notably, the panel in Penn Foster wrote, “The Panel finds that Complainant’s use of the confusingly similar disputed domain names to profit off the use of content and material belonging to Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” The Panel concludes that Respondent’s efforts to profit from tutorials targeted at Complainant’s business simulation materials does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant explains that the sixth domain name, <moroccocapsimtutor.com>, resolves to a page claiming Respondent intends to launch content in the future. Prior panels have held that the failure to make an active use of a domain name evinces a lack of rights in the disputed domain name. See, e.g., T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out). The Panel finds, in the present circumstances, that Respondent’s inactive use of the <moroccocapsimtutor.com>, in conjunction with Respondent’s course of conduct with respect to the other domain names, is evidence that Respondent lacks Policy ¶ 4(a)(ii) rights and legitimate interests in the <moroccocapsimtutor.com> domain name as well.
Complainant argues that Respondent is in violation of Policy ¶ 4(b)(iii) as Respondent resolves the name to promote tutoring services for Complainant’s own products and services, which disrupts Complainant’s offerings. See Compl., at Attached Ex. C. In support of this claim, Complainant cites the UDRP decision KingsIsle Entertainment, Inc. v. Wizard101-Cheat-Vault.com, FA 1289655 (Nat. Arb. Forum Nov. 30, 2009), in which the panel found the use of a domain name to sell secret cheat codes for the complainant’s computer game disrupted the complainant’s business and was therefore evidence of Policy ¶ 4(b)(iii) bad faith. At present, the Panel finds that Respondent’s tutoring efforts, which purportedly diminishes the utility of Complainant’s simulation exercises and materials, serves to disrupt Complainant’s business, and therefore evinces Policy ¶ 4(b)(iii) bad faith.
Further, Complainant argues that Respondent is using the Domain Names in order to mislead Internet users as to Complainant’s affiliation with the Domain Names, and Respondent commercially benefits from this confusion. The Domain Names resolve to promote tutoring services related to Complainant’s business simulation services. See Compl., at Attached Ex. C. To this end, Complainant again cites to Penn Foster, Inc. v. A. Kalinchuck, FA 1383827 (Nat. Arb. Forum May 25, 2011), where the respondent had resolved the disputed domain name to offer for sale the exam answers to tests created and issued by Complainant to its students. Under such circumstances, the Penn Foster panel wrote, “The similarity in material and content and the use of Complainant’s mark create a strong likelihood of confusion among Internet users as to Complainant’s sponsorship of, or affiliation with, these websites. Respondent attempts to profit from this confusion through the sale of exam answers. The Panel finds that this constitutes bad faith use and registration under Policy ¶ 4(b)(iv).” In the present case the Panel regards the conduct at issue as comparable, and on that basis concludes that Respondent has engaged in Policy ¶ 4(b)(iv) bad faith.
Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the Marks at the time the Domain Names were registered. Complainant notes that the tutoring services offered by Respondent are based off Complainant’s exercises. Prior panels have determined that constructive knowledge is insufficient evidence of bad faith, but that actual knowledge, which may be inferred from the circumstances, does support a finding of bad faith under Policy ¶ 4(a)(iii). The Panel infers from the circumstances that Respondent had actual knowledge of Complainant’s rights in the CAPSIM mark based on the related conscious use of the <capsimtutor.com> domain name with Complainant’s services, and that Respondent was on notice following the March 6, 2014 correspondence from Complainant’s counsel, but still registered the remaining five domain names. Accordingly, the Panel finds sufficient evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Having satisfied Policy ¶ 4(a)(i), or any or all of the elements of Policy ¶ 4(a), the Panel finds that Complainant plainly has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”).
The logic of that finding is inescapable and is adopted by the Panel.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capsimtips.com>, <capsimtricks.com>, <capstonehelp.com>, <capsimtutor.com>, <compxmtutor.com>, and <moroccocapsimtutor.com> domain names be TRANSFERRED from Respondent to Complainant.
Clive Elliott QC, Panelist
Dated: October 15, 2014
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