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 Respondent is SourcePhil Solutions / Anthony Alen of Las Pinas, Republic of the Philippines. 2. The Domain Name and Registrar
The disputed 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 June 8, 2011. On June 9, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 14, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaints on June 19 and 24, 2011.
The Center verified that the Complaint together with the amendment to the Complaint and the amended 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 June 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2011.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 1, 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. 4. Factual Background
The facts relevant to the findings and decision in this case are that:
- The Complainant provides educational services and makes educational products.
- The Complainant has offered educational services in the nature of an online gaming site for children under the registered trade mark POPTROPICA since 2007.
- The disputed domain name was registered on January 14, 2010.
- There has been no commercial or other relationship between the parties.
- At the time the Complaint was filed, a website corresponding with the disputed domain carried children’s games not provided by the Complainant and links to miscellaneous third parties having no connection with the Complainant.
- The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in POPTROPICA and alleges that the disputed domain name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not respond to those allegations or to the Complaint in any other way. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed 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 interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is prima facie evidence of trade mark rights for the purposes of the Policy1. The Complainant has trade mark rights acquired through United States Trade Mark Registration 3,599,286 for the word mark POPTROPICA issued March 31, 2009. In addition, for the purposes of the Policy, the Panel finds that the Complainant has unregistered rights in the trade mark acquired through use and reputation.2
The remaining question is whether the disputed domain name is confusingly similar to the Complainant’s trade mark. For the purposes of testing confusing similarity, the generic top-level domain “.net” can be ignored.3 The disputed domain name then differs from the trade mark by the addition of the word “games” which is purely descriptive of the Complainant’s goods offered under the trade mark. Countless earlier decisions under this Policy have held that the addition of a non-distinctive integer to a trade mark does little or nothing to avoid confusion. The Panel has no hesitation finding that the disputed domain name is confusingly similar to the Complainant’s trade mark and so finds that the Complainant has satisfied the first limb of the Policy. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the burden shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests4.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(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; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The publicly available WhoIs information does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not.
The Respondent has not provided any evidence that it used the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. The Panel finds that a negative inference arises from the evidence provided by the Complainant of a website corresponding with the disputed domain name, which mimics in many respects the website from which the Complainant offers its products under the trade mark.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not responded to the Complaint. By failing to do so, it has also failed to discharge the onus of proof which fells to it to show that it has rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
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 Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(iv) of the Policy in that the Respondent has intentionally used the disputed domain name to attract, for commercial gain, Internet users to a web site or on-line location, by creating the requisite likelihood of confusion with the Complainant’s trade mark. 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 disputed domain name be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Dated: August 12, 2011
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 It is alleged (and not contested) that there are over 75 million registered users for the games provided at the Complainant’s website.
3 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
4 See Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.
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