Complainant is Code Academy LLC of Chicago, Illinois, United States of America, represented by McGuireWoods LLP, United States of America.
Respondent is Ryzac, Inc. d/b/a Codecademy of New York, New York, United States of America, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”), is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
Complainant filed the Original Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2012. The Center confirmed receipt of the Original Complaint the same day.
Also on April 23, 2012, the Center emailed the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2012, the Registrar emailed the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named respondents and contact information in the Original Complaint.
On April 25, 2012, the Center emailed Complainant advising it of the disclosed registrant and contact information provided by the Registrar and invited Complainant to file an amended complaint. Complainant filed the Amended Complaint on April 30, 2012. The Center verified that the Original Complaint and Amended Complaint together 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 1, 2012. In accordance with paragraph 5(a) of the Rules, the due date for a response was May 21, 2012. Respondent filed the Response with the Center on May 21, 2012. The Center acknowledged receipt of the Response on May 22, 2012.
On May 30, 2012, Complainant filed a Supplemental Submission as a rejoinder to the Response. The Center acknowledged receipt of the Supplemental Submission on May 31, 2012. In the Supplemental Submission, Complainant requested that this Panel strike a declaration from the Response.
Also on May 31, 2012, the Center appointed Michael A. Albert as the sole panelist in this matter. This Panel finds that it was properly constituted. This Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
On June 6, 2012, Respondent filed the Response to Supplemental Submission in reply to Complainant’s Supplemental Submission. 4. Factual Background
Complainant is a startup company that offers educational instruction on various topics related to website development in its physical classroom facilities in Chicago, Illinois. The founders of Complainant conceived of Complainant’s educational model during the Spring of 2011, secured funding and created their program over the following summer, and began their first semester in October of that year. Complainant operates the domain name , where it provides information about its course offerings and allows prospective students to apply to its program. Complainant estimates that by midsummer of 2012, its revenue will top USD 1 million.
Respondent is also a startup company that offers education on computer programming. Rather than a physical classroom experience, Respondent offers an online learning environment with a novel command line-based interface. Respondent’s website launched on August 18, 2011, at , where it offers its lessons free of charge. Within a few days of the launch, Respondent garnered hundreds of thousands of users.
Both Parties attained some recognition in and around August, 2011, when both Parties’ web presence and media coverage expanded greatly. Around that time, Complainant created its “” and “” pages, constituted its first class, and got mentioned in several blogs and startup news outlets. During the same time, Respondent conceived of, created, and launched its service with significant success.
Since August, 2011, both Parties have received national media coverage. Complainant received attention from The Wall Street Journal, The Atlantic, Reuters, FastC, CNBC.com, and other publications. Respondent was featured in articles from The New York Times, The Wall Street Journal, Forbes, Time Inc., Fox Business News, CNN, PC World, and many others. The tenor of the media coverage of both Parties was that they fill a needed role of providing technical training in the ever-growing field of computer programming.
Unsurprisingly, the similarity between the Parties’ names (Code Academy versus Codecademy) and missions has created significant confusion. Both Parties have attempted to correct incorrect usage of their names. For example, in the comments to an August 18, 2011, article on “” announcing Respondent’s services, the founders of both Parties jumped in to distinguish their respective services. That same day, a twitter post by Complainant claiming that Respondent “knowingly dubbed themselves with a deceptive name,” prompted an email from Respondent to Complainant attempting to “clear the air” and denying knowledge of Complainant and its website.
On September 7, 2011, Complainant filed an application with the United States Patent and Trademark Office (the “PTO”) for a service mark of both Complainants’ distinctive crest-shaped logo and for the words contained therein, CA CODE ACADEMY. On December 30, 2011, the PTO initially rejected the application, requiring from Complainant a disclaimer of any use of CODE ACADEMY as a mark apart from the full mark. The PTO’s rationale was that the component was merely descriptive of Complainant’s services. The application remains pending with the PTO, and Complainant has not yet responded to the initial rejection.
On October 19, 2011, Respondent acquired the Domain Name from one A. Cornes of Coalville, United Kingdom of Great Britain and Northern Ireland. Mr. Cornes registered the Domain Name on or before June 21, 2002. Since around May 21, 2005, he used the Domain Name to provide information and instruction on computer programming topics. Between October 20, 2009, and January 5, 2011, he began pointing the Domain Name toward “”. However, he continued to use the term “code academy” on “”. Sometime around August, 2011, Respondent contacted Mr. Cornes and expressed interest in acquiring the Domain Name. Mr. Cornes eventually agreed to assign Respondent the Domain Name and all common law trademark rights and goodwill associated with the Domain Name.
Since acquiring the Domain Name on October 19, 2011, Respondent has used it to point to Respondent’s own website at “www.”. Respondent has not expressed any interest in selling the Domain Name. 5. Parties’ Contentions A. Complainant
Complainant contends that it has service mark rights in the CODE ACADEMY mark, and that the Domain Name is identical or confusingly similar to that mark. Complainant describes its web presence, media coverage, success at business plan competitions, pending service mark application, and tuition payments in excess of USD 200,000 as evidence of acquired secondary meaning in the CODE ACADEMY mark. Complainant argues that at the very least, it has acquired secondary meaning in the Chicago area for the niche market of education on Ruby on Rails (a web programming framework). Complainant argues that the Domain Name is identical to its CODE ACADEMY mark because the addition of the suffix “.com” and the removal of the space between the words are not significant. Furthermore, Complainant describes numerous incidents where consumers were actually confused about the distinction between Complainant’s and Respondent’s services.
Complainant further contends that Respondent has no rights or legitimate interests in the Domain Name. Complainant argues that Respondent has not used the Domain Name for a bona fide offering of goods or services, is not commonly known by the Domain Name, and is only using the Domain Name to divert consumers from Complainant. In addition, Complainant argues that Respondent could not have acquired any rights to the CODE ACADEMY mark when it acquired the Domain Name from Mr. Cornes because Mr. Cornes abandoned the mark, the transfer was in gross, and Respondent did not continue to use the mark.
Complainant finally contends that Respondent registered and is using the Domain Name in bad faith. Complainant argues that Respondent acquired the Domain Name with actual knowledge of Complainant’s rights to the CODE ACADEMY mark, and Respondent did so for the purpose of attracting consumers by creating confusion as to source, sponsorship, affiliation, or endorsement. Complainant argues that Respondent’s use of the Domain Name actually causes this confusion, and that merely pointing the Domain Name to Respondent’s primary website constitutes bad faith.
For all of the foregoing reasons, Complainant requests that this Panel transfer the Domain Name. B. Respondent
Respondent contends that the CODE ACADEMY mark is descriptive and that Complainant has not demonstrated secondary meaning in that mark. Respondent points out that the CODE ACADEMY mark describes exactly Complainant’s services. Respondent argues that because the mark is descriptive, Complainant must have established secondary meaning in the phrase before Respondent acquired the Domain Name. Respondent argues that Complainant failed to do so, because it failed to present typical evidence of secondary meaning, such as survey or focus group data, advertising or brand development expenditures, or evidence of enforcement efforts. Furthermore, Respondent discredits Complainant’s evidence as either too late to be relevant, generated by Complainant, or not demonstrating consumer confusion.
Respondent contends that it has rights to and legitimate interests in the Domain Name. Respondent argues that using the Domain Name to point to its primary website is a bona fide offering of its services. Furthermore, Respondent argues that it, rather than Complainant, has a better claim to any secondary meaning in the CODE ACADEMY mark, because it has millions of users and more significant national media coverage. Alternatively, Respondent argues that if CODE ACADEMY is a suggestive or arbitrary mark, and thus inherently distinctive, then Respondent obtained rights in that mark when it purchased the Domain Name from Mr. Cornes.
Respondent finally contends that it did not register or use the Domain Name in bad faith. Respondent argues that it could not have acquired the Domain Name with knowledge of Complainant’s service mark rights, because Complainant does not have such rights. Rather, Respondent argues that it acquired the Domain Name because it is descriptive of the services it offers. Respondent argues that it has not tried to sell the Domain Name, has not attempted to capitalize on the similarity between the Domain Name and Complainant’s domain name, and has actively attempted to dispel confusion when it arises.
For all the foregoing reasons, Respondent requests that this Panel dismiss this matter. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that Complainant is entitled to transfer if it can prove that (1) the Domain Name is identical or confusingly similar to a mark in which Complainant has rights, (2) Respondent has no rights or legitimate interests in the Domain Name, and (3) Respondent registered and is using the Domain Name in bad faith. Complainant has the burden to prove each of these elements by a preponderance of the evidence. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847.
For the reasons discussed below, Complainant has not satisfied its burden, and thus this Panel declines to order the transfer of the Domain Name. A. Admissibility of the Supplemental Filings and the Cornes Declaration
Before turning to the merits, this Panel will address several evidentiary matters. Both Parties submitted supplemental filings, and in its Supplemental Submission, Complainant requested that this Panel strike Mr. Cornes’ declaration as false and misleading. The Policy and the Rules do not afford any Party a right to submit supplemental filings, but this Panel can consider such filings at its discretion under paragraph 10 of the Rules. Additionally, the Policy and the Rules do not afford this Panel an explicit mechanism to strike submitted evidence, but paragraph 5(b)(ix) of the Rules instructs Respondent to annex all evidence on which it relies, and paragraph 10(d) of the Rules affords this Panel the discretion to determine the admissibility and weight of all evidence. In exercising its discretion, this Panel is guided by the goal of promoting equality between the Parties and ensuring an expedient resolution of the dispute.
The supplemental filings are at times duplicative of the Parties’ arguments set forth in the Amended Complaint and the Response, but nevertheless do provide further insight into several critical issues. Although Mr. Cornes’ declaration is likely hearsay, see Fed. R. Evid. 810, it does provide relevant context of Respondent’s acquisition of the Domain Name. Rather than excluding the declaration, this Panel admits it but affords it limited weight to account for the lack of strong circumstantial indicia of reliability. B. Identical or Confusingly Similar
Under paragraph 4(a) of the Policy, Complainant must prove the Domain Name is identical or confusingly similar to a mark in which Complainant has rights. The Parties do not dispute that the Domain Name contains three elements: (1) the word “code,” (2) the word “academy,” and (3) the suffix “.com”. The suffix and the lack of space between the words are not relevant to either identity or confusing similarity. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561; Boardwalk Bank v. Patrick Thorogood,WIPO Case No. D2000-0213; Ann Coulter v. Mark Vadnais, NAF Claim No. 137221. In fact, spaces are not even allowed in domain names. Beginners Guide to Domain Names, ICANN (Dec. 10, 2012), .
To satisfy its burden, Complainant must prove rights in a mark to which the Domain Name is identical or confusingly similar, and the facts of this case involve two such marks: CODE ACADEMY and CA CODE ACADEMY. The Domain Name is identical to the CODE ACADEMY mark. In addition, the Domain Name is similar to the CA CODE ACADEMY mark, and the similarity could lead to confusion since the “code academy” element is dominant and the “ca” element is merely an abbreviation. With regard to this element, the only issue then is whether Complainant has rights in either of these marks.
These marks appear to be descriptive, since the words “code” and “academy” together merely describe the services Complainant offers. The Complainant must therefore prove the marks have a secondary meaning. The secondary meaning of a descriptive mark is consumers’ association of the mark with a particular source of goods or services. Overview of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7. Thus, Complainant must prove secondary meaning in either of the marks.
Finding secondary meaning of a mark is a fact-intensive inquiry for which this proceeding is ill-suited. The voluminous factual record typically marshaled to prove secondary meaning of an unregistered descriptive mark is incompatible with the goal of expediency. See Oakland Raiders v. FanS, Inc., NAF Claim No. 126836 (finding complex factual and legal questions beyond the competency of the UDRP). These limitations in the Policy and the Rules reflect the fact that they apply only in “cases of abusive registrations,” also known as “cybersquatting.” See The Management of Internet Names and Addresses: Intellectual Property Issues, WIPO (1999), see, e.g., Family Watchdog LLC v. Lester Schweiss,WIPO Case No. D2008-0183. This dispute is not one easily characterized as cybersquatting. Because the Policy and the Rules are limited in this respect, paragraph 4(k) of the Policy explicitly reserves the Parties’ right to litigate their dispute in a court of competent jurisdiction.
Mindful of the limitations of the Policy, this Panel finds that on the basis of the limited record available in this matter, Complainant has not satisfied its burden to prove that it has rights in a relevant mark. In particular, Complainant has not provided any survey, focus group, or market data about consumers’ actual association of its marks with Complainant’s services, and Complainant has provided only limited evidence of advertising, sales volume, or other indicia of secondary meaning. Complainant’s evidence of its promotional efforts on websites such as “” and “” fall short of proving that consumers understand the marks to be indicators of source. To the contrary, much of the evidence in the record only shows that consumers continue to lack the requisite association and, thus, that the marks have not acquired sufficient secondary meaning.
Therefore, this Panel finds that Complainant has not satisfied its burden of proving that the Domain Name is identical or confusingly similar to a mark in which Complainant has rights. Since Complainant has not satisfied paragraph 4(a)(i) of the Policy, this Panel need not address whether it has satisfied paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, Complainant’s request to transfer the Domain Name is denied.
Michael A. Albert
Sole Panelist
Dated: June 14, 2012
Full & Egal Universal Law Academy