The Complainant is Pearson Education, Inc. of Upper Saddle River, New Jersey, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondents are Pearson Career, Inc. of El Paso, Texas, United States of America; Michael Mobley of Louisville, Kentucky, United States of America; and Matt Castetter of Louisville, Kentucky, United States of America, all represented by Gerald Woodcox, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , and (the “Domain Names”) are registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2011. On June 1, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 2, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants of the respective Domain Names 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”).
On June 1, 2011, the Center received an email communication from the Respondent Michael Mobley. On June 8, 2011, the Center acknowledged receipt of the email communication. On the same day, the Center received another email communication from the Respondent Michael Mobley. On June 8, 2011, the Center informed the Respondent Michael Mobley that a Complaint was filed against him under the UDRP and provided information as to how he may respond to it.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2011. The Response on behalf of all three Respondents was filed with the Center on June 28, 2011.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 11, 2011. 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.
The Complainant subsequently submitted a proposed Reply to the Response, and a Motion for leave to file the Reply, on July 21, 2011, to which the Respondent Michael Mobley replied by email to the Complainant and the Center on July 22, 2011. 4. Factual Background
The Complainant is a Delaware corporation that is a subsidiary of Pearson plc, the publicly traded British education and publishing group that owns the “Financial Times”, the Penguin books group, and an array of textbook publishing companies and educational testing and technology firms. Pearson plc, claims to be the world’s largest commercial education enterprise, with 60% of its sales in North America, according to Pearson’s website at “”. According to the Complaint, the Complainant has been providing “academic, professional, and career development goods and services to students, teachers, schools, school districts, and other academic institutions and educational organizations in connection with the PEARSON trademark since at least as early as 1994”. The Complainant offers professional and vocational training courses and materials in a variety of fields, including a range of technical training programs, either directly or in conjunction with third-party educational institutions.
Pearson plc holds numerous trademark registrations internationally that consist of the name “Pearson”, which are licensed to subsidiaries such as the Complainant. These include the following United States trademark registrations listed in the United States Patent and Trademark Office Principal Register:
MARK US REG. NUMBER REG. DATE
PEARSON
2600081
July 30, 2002
PEARSON
2679355
Jan. 28, 2003
PEARSON
2691830
Mar. 4, 2003
PEARSON
2694359
Mar. 11, 2003
It is undisputed that the PEARSON mark is widely used online, printed on publications, and displayed in advertising in a variety of media. It figures as well in media articles and industry awards relating to educational and vocational training services.
According to the Response, the Domain Name was originally registered to a third party (from November 2005, according to the Registrar’s verification response). The Respondents subsequently purchased the Domain Name in 2010 and registered it in the name of the Respondent Matt Castetter (whose role is not described in the Response) to use in connection with the Respondents’ new business operating under the name of Pearson Career, Inc. The Domain Name was registered by the Respondent Michael Mobley on April 14, 2010, and the Domain Name was registered in the name of the Respondent Pearson Career, Inc. on the same day.
The Response filed on behalf of all three Respondents describes the business of “the Respondent” as follows:
“Respondent is currently a Lead generation & call center services Company that gives information regarding schools and Insurance companies around the country based on information and interest supplied by its potential customers . . . Respondent primarily markets to potential students looking for secondary education opportunities and consumers interested in receiving insurance quotes”.
In correspondence with the Center, Mr. Mobley also characterized “our company” as “a small $500K per year call center” with plans to “open a post secondary school”.
According to the Response, the Respondent Pearson Career, Inc. was established in March 2010 as a Delaware “S” corporation (An “S” corporation is a business company that is treated for federal tax purposes in much the same way as a partnership). The Response acknowledges that an application for a license for the Respondent Pearson Career, Inc. to do business in Texas “appears not to have been filed”. The Panel notes that Pearson Career, Inc. appears in the online business entity database operated by the Delaware Secretary of State, with the date of incorporation shown as July 12, 2010.
The Response states that the initial business plan for the company was “to create an online school, based out of Montana, that would offer short-term online HVAC/R training for students, in a proprietary environment” (i.e., a commercial online training program for persons interested in seeking jobs installing and repairing air conditioning systems). “That has evolved into the business Respondent is involved in which is lead Generation of Edu and Insurance clients”. This evidently refers to the call center operations and links from the website formerly associated with the Domain Names to third parties that sell educational services or insurance.
In February 2011, the Complainant’s representative sent the Respondents a cease-and-desist letter after discovering the Respondents’ website associated with the Domain Name . At that time, the Respondents’ website advertised “viable solutions in the vocational and career trades education sector”, describing the Respondents’ mission as follows:
“We strive to improve applicants’ ability to obtain quality vocational education, and to provide industry-leading tools and services to schools in this segment”.
The Domain Name currently resolves to a page with the following message and disclaimer:
“Site currently under construction.
Pearson Career is a Marketing Solutions and Consulting Company and is NOT affiliated with Pearson Education/Prentice Hall Companies”.
The Domain Name does not currently resolve to an active website, and the Domain Name resolves to a page with only the message “New and improved site coming soon”. 5. Parties’ Contentions A. Complainant
The Complainant argues that the Domain Names are confusingly similar to its PEARSON mark, and that the Respondents have no evident rights or legitimate interests in using the “Pearson” name, particularly for a website that in some respects competed with the Complainant’s online education and vocational training offerings.
The Complainant observes that its mark was well known and long established by the time the Respondents established Pearson Career, Inc. and registered the Domain Names to use in connection with their business in the American vocational training sector in which the Complainant is a leading service provider. The Complainant infers from this, and from the similarity of the logo formerly displayed on the website associated with the Domain Names to the Complainant’s logo, that the Respondents intended to mislead Internet users for commercial gain by suggesting a relationship with the Complainant. B. Respondents
The Respondents argue that their business is not likely to be confused with the Complainant’s marks, and that the Domain Names were not chosen to take advantage of the Complainant’s reputation. The Respondents assert that the company name Pearson Career, Inc., of which the three Domain Names represent variations, was selected following a “significant religious experience” of the founder, the Respondent Michael Mobley:
“As part of that experience he actually came to believe that the name of his company should be based on the sufferings of Jesus Christ. In his mind he began to think of the term ‘pierce the son’. Recognizing that the name was too much for that marketplace in the United States he then decided to call the company ‘Pearson’”.
Mr. Mobley reportedly discovered before registering the company that a Pearson College existed in both the United States and Canada (both unrelated to the Complainant), but the Response states that a search at that time of the United States Patent and Trademark Office (USPTO) database showed that there were no registered trademarks for “Pearson Career”, “Pearson College”, or “Pearson Career College”. The Domain Name was already being used by “another marketing company” to refer educational leads to third parties, and that Domain Name “was purchased at a very significant premium by the Respondent”. The Respondents deny any intent to mislead Internet users concerning a possible connection with the Complainant. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Supplemental Filings
As noted above, the Complainant submitted a proposed Reply to the Response, with a Motion for leave to file the Reply, on July 21, 2011, to which the Respondent Michael Mobley replied by email to the Complainant and the Center on July 22, 2011.
The Rules direct panels to conduct Policy proceedings “with due expedition” (paragraph 10) and make no provision for supplemental filings other than at the request of the panel (paragraph 12). A party’s submission of additional facts or arguments may be viewed as an invitation to the panel to exercise its discretion to consider material beyond that which was included in the complaint and response.
The panel in The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447, made these general observations about such requests:
“The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules (citations omitted). The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself”.
The Complainant seeks to introduce evidence concerning the involvement of the Respondent Michael Mobley in previous businesses offering educational services, two of which allegedly ended in bankruptcy filings and fraud claims, and to discuss evidence, some of it already in the record, to the effect that the Respondents initially used the Domain Names in connection with educational services rather than marketing.
It does not appear that this evidence was unavailable to the Complainant at the time the Complaint was filed, or that the Reply counters unanticipated arguments from the Respondents. Accordingly, the Complainant’s request to include the Reply in the record of this proceeding is denied, and the Respondent Michael Mobley’s uncertified email remarks in response to the proposed Reply will also be excluded as unnecessary and immaterial. B. Identical or Confusingly Similar
Each of the Domain Names incorporates the Complainant’s registered PEARSON mark in its entirety, followed by generic words that do not avoid confusion with the mark, particularly since the mark is strongly associated with education and career training. The Panel finds, accordingly, that all three Domain Names are confusingly similar to the Complainant’s PEARSON mark for purposes of the Policy, paragraph 4(a)(i). C. Rights or Legitimate Interests
The Policy, paragraph 4(c), lists nonexclusive circumstances under which a respondent could demonstrate rights or legitimate interests in a domain name, including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights . . .”.
It is undisputed that the Respondent Pearson Career, Inc. was established in 2010, and that the Domain Names were statedly registered for use in the company’s business. Thus, the Respondent Pearson Career, Inc. has in some capacity been known by a name corresponding to the Domain Name , and both that Domain Name and the other two, similar Domain Names incorporate the name “Pearson” as found in the company name. It is also undisputed that the Respondents used the Domain Names, until receiving the cease-and-desist letter from the Complainant, in connection with online and call center marketing of third-party educational and insurance services.
These facts in different circumstances might have sufficed to establish the Respondents’ rights or legitimate interests for purposes of the Policy, paragraphs 4(a)(i) and (ii). Here, however, it is evident to this Panel that the registration and use of the Domain Names was more likely driven by an intention to trade unfairly on the reputation associated with the Complainants’ mark (noting inter alia that the Respondents were admittedly aware of the Complainant at the time of registering the Domain Names, the unlikely argument that “Pearson” stands for “pierce of the son” for domain names that were apparently not used for religious purposes, and the admittedly “significant premium” paid by the Respondents for a domain name including the Complainant’s mark and a term related to its business). In these circumstances, the Respondents’ use of the Domain Names cannot be deemed in connection with a bona fide offering of goods or services within the meaning of the Policy, paragraph 4(c)(i). See Telephone and Data Systems, Inc. v. TDS Holdings,WIPO Case No. D2010-1422, citing Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847. As for the application of paragraph 4(c)(ii) in such circumstances, the Panel endorses the conclusion expressed in World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642:
“It cannot be the case that a cybersquatter who registers a domain name in bad faith, and then operates a business under that domain name long enough for the business to become ‘commonly known by’ the domain name, thereby acquires a complete defense under Paragraph 4(c)(ii). That would not make any sense. If that were the correct interpretation of Paragraph 4(c)(ii), every cybersquatter who registered a domain name in bad faith would be able to ‘create’ a defense under Paragraph 4(c)(ii) by the simple expedient of adopting the domain name as the name of his/her business or organization, thereby defeating the intended operation of the Policy”.
Thus, the question of the Respondents’ rights or legitimate interests in the current proceeding turns on the strength of the Complainant’s inference that the Respondents selected the Domain Names, as well as their company name, in contemplation of the Complainant’s mark, hoping to trade on the Complainant’s reputation. That argument is more fully addressed below in the discussion of the Respondents’ alleged bad faith in the registration and use of the Domain Names. D. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Respondents deny seeking to trade on the Complainant’s reputation, but they do not deny prior knowledge of the Complainant and its PEARSON mark, which is well established in the United States in the education and training sector. Indeed, the Response indicates that some online research was conducted in advance to ascertain that the company name and the three Domain Names were not registered in the United States as trademarks, although the Respondents did find two educational institutions named Pearson College. Since education and training websites associated with the Complainant appear among the top results for queries on “Pearson” using major search engines such as “Google”, “Yahoo!”, and “Bing”, it is unlikely that the Respondents’ pre-registration search failed to point them toward the Complainant’s brand in this field.
The Respondents may have drawn their own, questionable conclusion that the Domain Names did not infringe on existing, registered PEARSON marks. They argue in this proceeding that there is no likelihood of confusion with the Complainant, because the Respondents operate a marketing company rather than an education-sector business “vertical” as the Complainant does. This is not a convincing argument, since the Respondents admittedly market third-party educational and vocational training programs, at least some of which are likely to compete with the Complainant’s offerings. Moreover, the Respondents have repeatedly avowed an initial and eventual intention to offer post-secondary vocational training courses themselves. Thus, the Complainant’s inference is plausible, that the Respondents sought commercial advantage by trading on the reputation of one of the leading brands in online training programs, to attract Internet users to the Respondents’ website marketing similar services.
The Respondents deny this inference but claim no personal or generic interest in the English family name “Pearson”. Rather, they assert a religious motivation in selecting a company name, and the related Domain Names, phonetically similar to the phrase, “pierce the son”, purportedly with Christian significance. The Respondents offer no supporting evidence of this motivation, and the website formerly associated with the Domain Names appears to have been entirely commercial and not devoted to uses consistent in any way with the asserted generic significance of the name. Compare Alan and Denise Fields d/b/a Windsor Peak Press v. Babies 411, LLC,WIPO Case No. D2011-0688, denying a UDRP complaint against a respondent who established a company, a related domain name, and an associated website consistent with the generic sense of the domain name.
The Complainant remarks on the visual similarity of the logo formerly displayed on the Respondents’ website to the logo incorporating the PEARSON mark as commonly displayed by the Complainant, which features “Pearson” in white capital letters on a blue background over a white, curved line. The website formerly associated with the Domain Names displayed a “Pearson Career” logo with “Pearson” in large, white, capital letters on a blue background, over a curved green field. The Respondents contend that the two logos are not at all alike, but there is a broad similarity in appearance that could contribute to a misleading association with the Complainant. The disclaimer of affiliation now found on the website does not detract from the observation that the Respondents’ website, as formerly presented, used a name and logo similar to the Complainant’s for the purpose of marketing commercial educational and vocational courses, a business in which the Complainant has a well-established reputation associated with its PEARSON mark.
Moreover, it is disturbing that the Respondents admittedly did not reply to the Complainant’s letter alleging trademark and Policy violations. Disagreement is understandable, but silence suggests a lack of regard for the trademark rights of others, contributing to an impression of bad faith in registering and using domain names incorporating a registered mark.
The Complainant has the burden of proof on each element of the Policy, and the Respondents have argued against the Complainant’s inference that the Domain Names, like the Respondents’ corresponding company name, were selected in substantial measure for their trademark rather than generic value. On the available record in this proceeding, however, the Complainant’s inference is more plausible than the Respondents’ assertions to the contrary. The Panel concludes, therefore, that both the second and third elements of the Policy have been established. 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 Names , , and be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: July 22, 2011
Full & Egal Universal Law Academy