WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION HEALD COLLEGE, LLC v. Versata Software, Inc. Case No. D2008-1875 1. The Parties
The Complainant is HEALD COLLEGE, LLC, of San Francisco, United States of America, (“United States”), represented by Seyfarth Shaw LLP, United States of America.
The Respondent is Versata Software, Inc., of Tortola, British Virgin Island (an Overseas Territory of the United Kingdom of Great Britain and Northern Ireland). 2. The Domain Name and Registrar
The disputed domain name is registered with Red Register, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2008 by e-mail and on December 8, 2008, in hardcopy. On December 5, 2008, the Center transmitted by email to Red Register, Inc. a request for registrar verification in connection with the disputed domain name. On December 23, 2008, after significant delay and numerous reminders, Red Register, Inc. transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with Rules, paragraphs 4(a) and (b), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 16, 2009.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on January 23, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant and its predecessors offer educational services in the form of courses of instruction at the undergraduate and professional levels in United States since 1863. Their mission has always been to prepare students for careers by providing them practical, hands-on learning in fields such as health care, business, engineering, and technology. They started with one campus in San Francisco, and have expended to 11 campuses across the western United States.
The predecessor of the Complainant registered the service mark HEALD COLLEGE No. 2,573,598 on May 28, 2002 and assigned it to the Complainant.
The Complainant operates a website at , which advertises and promotes the educational services of Heald College. Its commercial name, HEALD COLLEGE appears on each page of the website.
The disputed domain name was registered on August 16, 2000.
The disputed domain name currently resolves to a website offering links to various websites for on-line degree programs and business, professional, and technical schools, including the websites of some of the Complainant's competitors.
The Respondent did not reply to a registered letter from the Complainant dated August 25, 2008, asserting trademark infringement and seeking transfer of the disputed domain name to the Complainant. 5. Parties' Contentions A. Complainant (a) Identical or Confusingly Similar
The Complainant alleges that the domain name is confusingly similar to the Complainant's service mark.
The Respondent's domain name incorporates the Complainant's registered service mark HEALD COLLEGE in its entirety.
The Complainant submits the generic top level domain (gTLD) “.com” must be disregarded in assessing identity or confusing similarity, as stated in Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., NAF Claim No. 444468. (b) Rights or Legitimate Interests
The Complainant contends that the Respondent cannot demonstrate any circumstances that would evidence rights to or legitimate interest in the disputed domain name.
The Complainant submits that neither the Complainant nor its predecessors-in-interest have ever licensed or authorized the Respondent to use the HEALD COLLEGE mark, which was used by the Complainant's predecessors-in-interest for over 130 years.
The Complainant also submits that there is nothing to suggest that the Respondent or its directors and employees have been commonly known by the name “Heald College”. (c) Registered and Used in Bad Faith
The Complainant states that when a registrant could not use a domain name without violating a trademark holder's right under applicable law, bad faith exists even if the domain name is registered before the service mark registration.
The Complainant submits that it appears that no other entity has used the HEALD COLLEGE mark in the United States in connection with educational services and that the website has provided links to multiple third-party websites, including sites offering educational services.
On these bases, the Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to obtain the transfer of the disputed domain name, the Complainant must demonstrate, in accordance with the Policy, paragraph 4(a), that:
(i) The registered domain name is identical or similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in the domain name; and
(iii) The Respondent has registered and used the domain name in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of its rights to the HEALD COLLEGE service mark and that it operates under the name “Heald College”.
The Panel has noticed that the service mark registration was issued after Respondent registered the disputed domain name. However, according to prior UDRP decisions (See, for example, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827), “paragraph 4a(i) does not require that the trademark be registered prior to the domain name”
The service mark of the Complainant, which also corresponds to its trade name, is used in its entirety in the disputed domain name. The suffix “.com” is incidental to domain names in general and does not serve to distinguish them.
As a consequence, the Panel considers that the disputed domain name is identical to the HEALD COLLEGE service mark in which the Complainant has rights. The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
By not submitting a Response, the Respondent has failed to allege any circumstances, which could demonstrate any right or legitimate interest in the disputed domain name.
Moreover, there is no evidence that the Respondent is commonly known by this domain name. The Respondent's website was registered under the name Versata Software, Inc., which is also the name of the identified administrative contact.
The Panel also accepts that the Complainant never authorized, licensed or permitted the Respondent to use its HEALD COLLEGE service mark, and that it cannot be said that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services as it includes merely what appears to be pay-per-click links to various websites including the websites of some of Complainant's competitors.
In consequence, the Panel finds that Respondent has no right or legitimate interest in the disputed domain name and that the Complainant has proven the conditions set out by paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Again, the Panel observes that the service mark registration was issued after Respondent registered the disputed domain name. However, in similar situations, prior UDRP decisions have considered that respondents have registered and used domain names in bad faith even though the registration of the domain names preceded the mark registration (See, for example, Freedom Flag, Inc., dba Falls Flag & Banner Co. v. Flags Unlimited,WIPO Case No. D2002-0478 or Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320).
In this context, the Panel has noticed that Heald College was founded in 1863 in San Francisco by Edward Payson Heald. The Complainant demonstrated that it, and its predecessors have offered continuously educational services for 145 years. In 2003, the 140th anniversary of Heald College was commemorated in the publication 140 Years of student success, published by the Complainant and predecessors, through which Heald College appears as the oldest business career college in the western United States.
The Panel has also noticed that the disputed domain name currently resolves to a website offering links to various websites for on-line degree programs and business, professional, and technical schools, including the websites of some of the Complainant's competitors.
In that regard, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to it website by providing links to other on-line degree programs and business, professional, and technical school including competitors, by creating a likelihood of confusion with the Complainant (See, for example, Freedom Flag, Inc., supra.
The Panel also acknowledges that Respondent has been found to have used this type of practice according to at least two prior UDRP decisions. First, in Enterprise Rent-A-Car Company v. Versata Software, Inc. c/o Versata Hostmaster, NAF Claim No. 1072909, the Respondent consented to the transfer of the disputed domain name , in a proceeding brought by the owner of the ENTERPRISE RENT-A-CAR service mark.
Second, in Cambridge Pavers, Inc. v. Versata Software, Inc. c/o Versata Hostmaster, NAF Claim No. 1112558, the Panel found that the Respondent had registered and was using the disputed domain name in bad faith and ordered the transfer of the domain name to the owner of the CAMBRIDGE PAVINGSTONES trademark.
These circumstances justify the conclusion that both the registration and the use of the disputed domain name have been made in bad faith.
The Panel, therefore, concludes that there is sufficient evidence that Respondent's registration and use of the disputed domain name have been made in bad faith, fulfilling the requirements set out by paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Dated: February 6, 2009
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