Complainant is New Horizons Education Corporation of Anaheim, California, United States of America (“United States”), represented by Neal & McDevitt, United States.
Respondent is Benchmark Learning of Edina, Minnesota, United States. 2. The Domain Names and Registrar
The disputed domain names and are registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012. On May 1, 2012, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On May 1, 2012, Network Solutions, LLC transmitted by email to the Center its verification response confirming that 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 May 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2012.
The Center appointed Gary J. Nelson as the sole panelist in this matter on June 8, 2012. 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
Complainant is the owner of at least four United States trademark registrations for NEW HORIZONS. Specifically, Complainant owns at least the following trademark registrations in the United States:
Country
Reg. no.
Mark
Classes
Dates of Application and Registration
United States
1337233
NEW HORIZONS
041
June 18, 1984
May 21, 1985
United States
2616283
NEW HORIZONS
016; 041
November 5, 1999
September 10, 2002
United States
2515371
NEW HORIZONS
009
May 21, 2001
December 4, 2001
United States
2836345
NEW HORIZONS
038; 041; 042
July 12, 2002
April 27, 2004
The disputed domain name appears to have been registered on June 4, 2004. The disputed domain name appears to have been registered on July 14, 2009. Neither of the disputed domain names have a corresponding operational website. 5. Parties’ Contentions A. Complainant
Complainant uses its NEW HORIZON mark is association with education services, namely, conducting internet-based instruction in the field of computer training; Internet-based distribution of training content in connection therewith and related goods and services.
Complainant is the owner of trademark registrations for NEW HORIZONS and for marks incorporating the words “new horizon,” and has been using this mark since at least as early as 1983.
Respondent is a former owner of a franchisee that at one time had a business relationship with Complainant and, through this relationship, was aware of Complainant and Complainant’s rights in NEW HORIZONS at the time Respondent registered the disputed domain names.
Complainant contacted Respondent with a request to voluntarily transfer ownership of the disputed domain names. In response, Respondent confirmed intent to cease the redirection of web traffic from the disputed domain names to one of its own websites, but refused to voluntarily transfer ownership of the disputed domain names to Complainant without “just compensation.”
The disputed domain names and are both confusingly similar to Complainant’s NEW HORIZON trademark.
Respondent has no rights or legitimate interests with respect to the disputed domain names.
Respondent registered the disputed domain names in bad faith, and is using the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the NEW HORIZONS mark and the disputed domain names are confusingly similar to Complainant’s NEW HORIZONS mark.
Complainant owns at least four NEW HORIZONS trademark registrations in the United States. One of these registrations is for United States trademark registration no. 1337233. The registration date for this trademark (i.e., May 21, 1985) precedes the dates upon which the disputed domain names were registered (i.e., June 4, 2004 for and July 14, 2009 for ).
Accordingly, Complainant has established rights in its NEW HORIZONS mark pursuant to the Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The disputed domain name, , is confusingly similar to Complainant’s NEW HORIZONS trademark. This disputed domain name incorporates the entirety of Complainant’s NEW HORIZONS trademark and merely adds a generic geographic location (i.e., “Minnesota”) and a top-level “.com” domain suffix. Neither the addition of a purely descriptive/generic or geographic term to a well-known mark nor the addition of a generic top-level domain suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY and thus Policy, paragraph 4(a)(i) is satisfied).
The same analysis applies to the disputed domain name , where the “mn” portion of the disputed domain name is the two letter equivalent of the State of Minnesota. Accordingly, the disputed domain name is also confusingly similar to Complainant’s NEW HORIZONS trademark.
Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent has failed to file a formal Response, which in the opinion of the Panel can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by either of the disputed domain names, or that it is commonly known by any name consisting of, or incorporating the words “new,” “horizons,” “Minnesota,” or the abbreviation for the State of Minnesota, “mn,” or any combination of these words/letters. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its NEW HORIZONS mark.
Respondent is maintaining passive and undeveloped websites at “www.” and at “www.”. In the Panel’s view, Respondent’s failure to develop an active website corresponding to either of the disputed domain names is evidence supporting the conclusion that Respondent has no right or legitimate interests in the disputed domain names. See Pharmacia & Upjohn AB v. Dario H. Romero,WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the Complaint and made no use of the domain name in question); see also Melbourne IT Limited v. Grant Matthew Stafford,WIPO Case No. D2000-1167 (finding no rights or legitimate interest in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
Accordingly, the Panel concludes Respondent is not using the or disputed domain names in association with a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(iii).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain names in bad faith.
The Panel finds that Respondent likely chose the disputed domain names with full knowledge of Complainant’s rights in the NEW HORIZONS trademark. Complainant has alleged that Respondent was aware of the rights owned by Complainant in NEW HORIZONS when Respondent registered the disputed domain names. Complainant further alleges that Respondent was a former owner of one of Complainant's franchisees, and at one time had a business relationship with Complainant. The Panel finds these unrebutted allegations to be convincing and sufficient to establish the bad faith registration and use of the disputed domain names.
Respondent’s awareness of Complainant’s NEW HORIZONS trademark may also be inferred because the mark was registered with the United States Patent and Trademark Office prior to Respondent’s registration of the disputed domain names. See T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Respondent is maintaining the disputed domain names as passive websites. Given the circumstances of this case, this is further evidence that Respondent registered and is using the disputed domain names in bad faith. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital,WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose). See also, Red Bull GmbH v. Harold Gutch,WIPO Case No. D2000-0766 (finding that respondent’s expected use of the domain name would lead people to believe that the domain name was connected with complainant, and thus is the equivalent to bad faith use).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, and be transferred to Complainant.
Gary J. Nelson
Sole Panelist
Dated: June 16, 2012
Full & Egal Universal Law Academy