WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pearson Education, Inc. v. Er Bai Wu Case No. D2009-1582 1. The Parties
The Complainant is Pearson Education, Inc. of New Jersey, United States of America, represented by Kilpatrick Stockton LLP, United States of America.
The Respondent is Er Bai Wu of Shanghai, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2009. On November 25, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2009, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 30, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 6, 2010. 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 is a publisher incorporated in Delaware and is a member of the international publishing group headed by Pearson plc of the United Kingdom.
The Complainant asserts and produces evidence to establish that in 2002 it commenced its SUCCESSNET program, which is an online educational portal for access to the Complainant's electronic texts and serving the needs of children aged 5 to 17 in the United States of America.
Originally, the Complainant used its domain names, and , for its SUCCESSNET program, but on August 26, 2004 it registered the domain name, , and thereafter has used that domain name for its website for the program and for the name of the program.
The program comprises an interactive learning management system whereby teachers, parents and students can access the site for a wide variety of educational purposes from obtaining/delivering online content to taking tests, tracking students' performance and retrieving assignments.
The unchallenged evidence of the Complainant is that more than 70% of the school districts in the United States of America have access to the Complainant's PEARSONSUCCESSNET.COM learning management system and that currently there are at least 5 million registered users of the system.
On August 29, 2005 the Complainant filed an application for registration of the name or mark SUCCESSNET with the United States Trademark Office as a service mark in class 41 for “ a password protected website through which school district administrators, teachers, students and parents may access online … curriculum, coursework, and testing products and progress reports in class 41”.
On September 1, 2006 the Respondent registered the Domain Name.
On October 21, 2007 the Complainant's aforementioned service mark application matured into a registration under number 3,317,262.
The Domain Name is currently connected to a website which features sponsored links primarily to educational publishing sites, but also to other service sites. At an earlier stage it was connected to a parking page, which featured in addition links to pornographic/adult sites and related images. The educational publishing links appear to be links to sites/businesses other than those associated with the Complainant.
On October 1, 2009 the Complainant and/or another member of the Pearson group received an email from a concerned parent whose child had accidentally accessed the Respondent's page featuring the pornographic/adult links. The parent expressed the hope that the Respondent's site be shut down “very quickly”. 5. Parties' Contentions A. Complainant
The Complainant contends that it has common law rights in the mark, PEARSONSUCCESSNET.COM, in addition to its registered rights in respect of its SUCCESSNET mark and contends that the Domain Name is substantially identical to the former and confusingly similar to the latter.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant further contends that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name is identical to the domain name used by the Complainant for its PEARSONSUCCESSNET.COM (formerly SUCCESSNET) program save that the former features an extra ‘net' in front of the ‘.com' domain suffix.
The Complainant has registered trade mark rights in the United States of America covering SUCCESSNET and claims unregistered trade mark rights in respect of the name, PEARSONSUCCESSNET.COM, the name (and domain name) which it has used for its learning management system since about September 2004.
The Panel accepts the unchallenged evidence of the Complainant as to the extent of its reputation and goodwill in relation to its PEARSONSUCCESSNET.COM learning management system and finds that the Complainant has acquired common law trade mark rights in respect of that name.
The Panel finds that the Domain Name, is confusingly similar to the name PEARSONSUCCESSNET.COM in which the Complainant has common law trade mark rights. C. Rights or Legitimate Interests
The Domain Name is connected to a parking page featuring sponsored links. The Complainant contends, and it appears to the Panel more than likely, that the Respondent is deriving Pay-Per-Click (“PPC”) revenue from the site.
The Complainant contends that the use for a commercial purpose (i.e. Pay-Per-Click revenue) of a domain name, which is so obviously targeted at the Complainant's name for one of its primary service products and which has no obvious connection or association with the Respondent, cannot constitute a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.
The nature of the Domain Name is such that the Panel is satisfied that it cannot have been selected for any reason other than its confusing similarity to the name of the Complainant's PEARSONSUCCESSNET.COM learning management system. This is supported by the fact that many of the primary links are to sites/businesses engaged in the same field of activity as the Complainant. There is nothing before the Panel to suggest that the Respondent has any connection or association with the name “PearsonSuccessNet” other than his registration of the Domain Name.
The evidence put before the Panel by the Complainant seems to show that the Respondent's name translates from the Mandarin to “stupid person” or “fool” in English, which in turn has led the Complainant to contend that the Respondent's name is fictitious. It is unnecessary for the Panel to come to any conclusion on that point.
It is sufficient that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent has not sought to answer that case.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant contends that the Respondent is using the Domain Name to exploit the fame of the Complainant's learning management system for commercial gain. The Respondent hopes and anticipates that Internet users interested in the Complainant's system will be diverted to the Respondent's site at which there is an opportunity for the visitor to generate PPC revenue for the Respondent.
The Panel agrees that the evidence points overwhelmingly in that direction. The Domain Name is an extraordinary name for anyone to have selected “out of the blue”. The Panel agrees that it can only have been selected for its confusing similarity to the name and domain name used by the Complainant for the Complainant's learning management system.
While there is only one instance of confusion in the evidence before the Panel (see section 4 above), it is likely to be the tip of the iceberg and, in any event, the Panel sees no reason to doubt that the Respondent has succeeded in the deception of Internet users, which he has so clearly set out to achieve.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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.
Tony Willoughby
Sole Panelist
Dated: January 20, 2010
Full & Egal Universal Law Academy