Skillshare, Inc. v. Benji Wilson / Willow
Claim Number: FA2302002033823
Complainant is Skillshare, Inc. (“Complainant”), represented by Carissa L. Weiss of Law Office of Carissa L. Weiss, PLLC, New York, USA. Respondent is Benji Wilson / Willow (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skilshare.com>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on February 28, 2023; Forum received payment on February 28, 2023.
On March 1, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <skilshare.com> 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 March 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2023 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@skilshare.com. Also on March 3, 2023, 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 March 31, 2023, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Skillshare, Inc. offers online educational courses and materials in a wide variety of disciplines. It asserts rights in the trademark SKILLSHARE based upon its U.S. common law trademark rights dating back to 2010 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 6,921,513, registered December 13, 2022). Complainant also hosts its website at the address www.skillshare.com and operates an affiliate program through which it provides a financial benefit to any third party that uses its own website or social media account to generate new customers for Complainant.
Respondent’s
<skilshare.com> domain name is confusingly similar to Complainant’s SKILLSHARE trademark because it includes the mark but deletes
one letter “L” and adds the generic top-level domain name (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests
in the <skilshare.com> domain name. Respondent is not licensed or
authorized to use Complainant’s SKILLSHARE
mark and is not commonly known by the
disputed domain name. Respondent also does not use the disputed domain name for
any bona fide offering of goods or services nor does it make a legitimate
noncommercial or fair use thereof. Rather, Respondent joined Complainant’s
affiliate program and redirected the <skilshare.com>
domain name to
Complainant’s website. Complainant disabled this link and removed Respondent
from the affiliate program. Soon thereafter, Respondent resolved the disputed domain name to a page that provides
monetized hyperlinks to third-party websites offering online educational
courses.
Respondent registered and uses the <skilshare.com> domain name in bad faith. Respondent creates initial interest confusion with Complainant and engages in typosquatting of the SKILLSHARE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has trademark rights in the SKILLSHARE mark and the <skilshare.com> domain name is confusingly similar to the mark;
- Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known thereby and its redirection of the domain name to Complainant’s own website, or its resolution to a pay-per-click page, is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use; and
- Although the evidence indicates that the disputed domain name is currently being used in bad faith, there is insufficient evidence to provide that it was registered in bad faith.
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. 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”).
Complainant asserts trademark rights in the term SKILLSHARE based upon both common law and registration with the USPTO. Both a showing of common law rights and registration of a mark with the USPTO are considered a valid showing of rights under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Also see Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Although Complainant has not provided evidence of its claimed common law rights beyond screenshots of its current website, it has submitted copies of its USPTO registration certificates for the SKILLSHARE mark and so the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that the <skilshare.com> domain name is confusingly similar to Complainant’s SKILLSHARE trademark because it includes the mark but deletes one letter “L” and adds the gTLD “.com”. The deletion of a letter that creates a common misspelling fails to sufficiently distinguish a domain name from a registered mark under Policy ¶ 4(a)(i). See, e.g., Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). Based on the difference of a single letter between the <skilshare.com> domain name and Complainant’s SKILLSHARE mark, the Panel finds that the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in such an 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <skilshare.com> domain name because Respondent is not licensed or authorized to use Complainant’s SKILLSHARE mark and is not commonly known by the disputed domain name. In considering this issue, relevant WHOIS information may be examined to assist in the determination of whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.) The WHOIS information for the disputed domain name, as revealed in the Registrar verification to the Forum, names the registrant as “Benji Wilson / Willow” and there is no evidence presented to indicate that Respondent is known otherwise. As such, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant contends that Respondent does not use the disputed domain name for any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use of the domain name. Rather, Respondent joined Complainant’s affiliate program and redirected traffic from the disputed domain name to Complainant’s own website. Use of a disputed domain name to divert Internet users attempting to reach the complainant’s website in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop c/o Tim Trueblood, FA 670171 (Forum May 3, 2006) (where “Respondent was originally a part of Complainant’s affiliate program, [and] Complainant contends that Respondent’s use of misspelled variations of Complainant’s mark to improperly profit at Complainant’s expense is in violation of the affiliate program agreement” the Panel found that such use “is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”) Here, Complainant notes that Respondent enrolled in the Skillshare affiliate program and provides screenshots of the disputed domain name’s redirection to Complainant’s own website. Based on this evidence the Panel finds that redirection of a confusingly similar domain name to Complainant’s own website, as part of a revenue-generating affiliate program, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
After Complainant removed Respondent’s domain name from the affiliate program, the resolution changed to a website that provides hyperlinks to Complainant’s competitors. Use of a disputed domain name to host a pay-per-click page most often does not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Priceline.com LLC v. levesque, bruno, FA 1625137 (Forum July 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Complainant provides a screenshot of the disputed domain name’s pay-per-click resolution showing four links titled “Online Training Courses”, “Browse Online Courses”, “Online Learning Courses”, and “Online Certificate Programs”, as well as screenshots of some of the monetized ads to which those links resolve. As Respondent has not filed a Response or made any other submission in this case, it does not provide any further information or explanation regarding its use of the <skilshare.com> domain name. As Complainant has made a prima facie showing which has not been rebutted by Respondent, upon a preponderance of the evidence before it, the Panel determines that Respondent does not use the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and that it does not make a legitimate non-commercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Under Policy ¶ 4(a)(iii), the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. While the evidence presented here indicates the latter, it does not suffice to prove the former and there is an open question as to whether the Complainant possessed trademark rights at a time prior to Respondent’s acquisition of the disputed domain name.
Paragraph 4(a)(iii) of the Policy is stated in the conjunctive “bad faith registration and use” [emphasis added]. A lack of evidence that a complainant’s trademark existed when the disputed domain name was registered suggests that the respondent could not have known of or anticipated the trademark and thus could not have targeted it in bad faith at that point in time. See VitriVax, Inc. v. Alexander Segal, FA 1959542 (Forum Sep. 10, 2021) (“The Panel notes that Respondent’s registration of the disputed domain name predates Complainant’s first claimed rights in the VITRIVAX mark (filed on November 5, 2020 and proceeded to registration on August 10, 2021). Complainant generally cannot prove registration in bad faith per Policy paragraph 4(a)(iii), as the Policy requires a showing of bad faith registration and use.”)
Complainant submits copies of four of its USPTO trademark registration certificates for the SKILLSHARE mark, the earliest reflecting a registration date of November 1, 2022, an application date of June 24, 2021, and a first use in commerce date of November 16, 2010. However, “the claimed date of first use in the application [is not] definitive evidence that the mark actually was used and valid prior to the filing of the application”. Handy Guy Inc. v. Merlin Kauffman, FA 1998214 (Forum July 20, 2022).[i]
Of course, common law trademark rights may support a claim under the Policy but sufficient evidence of this must be presented. According to par. 1.3 of the Overview of WIPO Panel Views on Selected UDRP Questions, (“WIPO Overview 3.0) (3d ed. 2017), titled “What does a complainant need to show to successfully assert unregistered or common law trademark rights?”:
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
While Complainant asserts that it “owns U.S. common law trademark rights in the mark”, the only supporting evidence it has submitted consists of a screenshot of its own home page at www.skillshare.com as well as that of its page titled “Become a Skillshare Affiliate”. These screenshots do indicate some promotion of the SKILLSHARE mark but they, along with Complainant’s trademark registration certificates, do not, on their own, speak to the public perception, reputation, and scope of Complainant’s mark or provide sufficient evidence of common law trademark rights to meet the above-mentioned standard.
Even if Complainant’s evidence did support its claim of common law rights, the submitted screenshots are dated February 28, 2023 and so would not prove rights prior to that date.
Further, Complainant has not included in its evidence a copy of the WHOIS record for the disputed domain name but, according to the verification email sent to the Forum by the concerned Registrar, the <skilshare.com> domain name was first created on December 12, 2010. It may be that a review of the archival WHOIS records would indicate that Respondent acquired the domain name at a later date, but the Panel cannot discern this as such evidence has not been submitted in the present proceedings. Since it appears that Respondent acquired the disputed domain name prior to the earliest possible date on which the submitted evidence proves that Complainant acquired rights in the SKILLSHARE trademark (i.e., the application date of its USPTO registration per 15 U.S.C. § 1057(c)), the Panel is unable to find that Complainant possessed rights to its mark at that time (common law or otherwise) and thus, that Respondent targeted the mark in bad faith at the time it registered or otherwise acquired the domain name[ii]. This fails the conjunctive requirement of Policy ¶ 4(a)(iii).
In view of the above-stated deficiencies in the Complaint and Complainant’s submissions, the Panel cannot, by a preponderance of the evidence, find that the Respondent registered the disputed domain name in bad faith under Paragraph 4(a)(iii) of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <skilshare.com> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: April 4, 2023
[i] It is also noted that, when accepting and validating proof of use for a trademark application, the USPTO does not require proof of the date of the claimed first use in commerce (e.g., a receipt from the applicant’s first sale). The applicant must merely attest and submit proof that the applied-for mark is actually in use as of the date of that submission.
[ii]It must also be noted that the submitted evidence showing a redirection from the disputed domain name to Complainant’s affiliate page is undated and so it cannot be inferred from this action that Respondent was aware of or targeted Complainant’s SKILLSHARE mark as of any particular date.
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