Complainant is Higher Education Loan Authority of the State of Missouri of Chesterfield, Missouri, United States of America.
Respondent is Andrew Dennis of Brooklyn, New York, United States of America. 2. The Domain Names and Registrar
The disputed domain names , and (the “Disputed Domain Names”) are registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2012. On September 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 20, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Disputed Domain Names.
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 Respondent of the Complaint, and the proceedings commenced on October 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 31, 2012.
The Center appointed Lynda M. Braun as the sole panelist in this matter on November 9, 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 a student loan servicer with more than thirty years of experience working with students and families in Missouri. It is among the ten largest student loan servicers in the United States. Created in 1981 by statute, Complainant is commonly known as “Mohela”. Mohela currently operates in the not-for-profit sector and participated in the Federal Family Education Loan Program for nearly three decades.
Complainant owns United States Servicemark Registration No. 2,461,671 for MOHELA in International Class 036 for providing student loan services. The date of first use and date of first use in commerce for MOHELA was October 1, 1999. The trademark is incontestable under United States law, 15 U.S.C. section 1065 and has been in continuous use for over thirty years. Complainant owns the domain name .
The Disputed Domain Names, , and , were all registered on May 19, 2012. 5. Parties’ Contentions A. Complainant
First, Complainant claims that the Disputed Domain Names are confusingly similar to a trademark registration in which Complainant has rights. The fact that Respondent registered domain names that incorporate a trademark owned by Complainant leads to the inevitable conclusion that the Disputed Domain Names are confusingly similar to a trademark in which Complainant has rights.
Second, Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Names. Complainant states that: (1) there is no evidence of Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names or names corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; (2) Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names; and (3) Respondent’s websites feature various hyperlinks that divert consumers to sites that are not associated with Complainant, as well as hyperlinks to numerous competitors of Complainant.
Third, Complainant claims that Respondent has registered and is using the Disputed Domain Names in bad faith. Complainant states that: (1) Respondent registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; (2) Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website; and (3) Respondent acquired the Disputed Domain Names to prevent Complainant from reflecting the mark in a corresponding domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Disputed Domain Names:
i) That the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) That Respondent has registered and is using the Disputed Domain Names in bad faith.
These elements are discussed below. A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Names, , and , which incorporate Complainant’s trademark in its entirety,1 are confusingly similar to that trademark.
Complainant has valid and well established rights in its MOHELA trademark. The words “loans” and “student loans” in the Disputed Domain Names are descriptive and indicate that the websites, to which the Disputed Domain Names direct, contain student loan services. The addition of the words “loans” and “student loans” in the Disputed Domain Names do not remove the similarity but increase the risk of confusion for consumers. The Panel finds that consumers would likely believe that the websites to which the Disputed Domain Names resolve offer Complainant’s well known loan services.
It is well established that the addition of descriptive or generic words to a trademark does nothing to change an otherwise identical or confusingly similar domain name. Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191 (the panel found confusing similarity where “shop” and a hyphen were added to the trademark of the complainant in the disputed domain name). See also PRL USA Holdings, Inc. v. Unasi Management Inc.,WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity).
Accordingly, the first element of paragraph 4(a) of the Policy has been met by Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Respondent’s lack of reply notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant, that Respondent is now or was ever known by the Disputed Domain Names, or that Respondent had any authority, license or permission to use Complainant’s trademark. Nor was Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names. The Panel finds further that Respondent was using the Disputed Domain Names for commercial gain.
The websites to which the Disputed Domain Names resolve are parking pages that contain sponsored links to a variety of third party sites that promote loan-related services. Respondent undoubtedly collects referral fees for these links on the pay-per-click websites. Prior UDRP decisions have made it clear that such use does not constitute a legitimate use of a domain name or the legitimate offering of goods or services. PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162.
Although there is nothing per se illegitimate in using a domain parking service, linking a domain name to such a service with a trademark owner’s name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking page, is a different matter. Such activity does not provide a legitimate interest in that domain name under the Policy. See Express Scripts, Inc. v. Windgather Investments LTD / Mr. Cartwright,WIPO Case No. D2007-0267.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by Complainant. C. Registered and Used in Bad Faith
The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that a respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to he domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product on respondent’s website or location.
Policy, paragraph 4(b).
This Panel finds that based on the record, Complainant has demonstrated the existence of Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, Respondent registered and used the Disputed Domain Names in bad faith because Respondent was attempting to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s trademark. Respondent was also preventing Complainant from making a legitimate use of the Disputed Domain Names. Respondent’s registration and use of the Disputed Domain Names indicate that such registration and use was done for the specific purpose of trading on the name and reputation of Complainant and its trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”).
Second, Respondent’s action of registering the Disputed Domain Names and using them to direct Internet traffic to their websites evidences a clear intent to disrupt Complainant’s business, deceive customers and trade off Complainant’s goodwill by creating an unauthorized association between Respondent and Complainant’s trademark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552.
Third, the websites to which the Disputed Domain Names currently resolve contain sponsored ads to various websites that promote loan services, including those of Complainant’s competitors. As such, Respondent is not only trading on consumer interest in Complainant in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the websites, but Respondent also derives commercial advantage in the form of referral fees. This constitutes bad faith. Fox News Network, LLC v. Warren Reid,WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556; and Lewis Black v. Burke Advertising, LLC,WIPO Case No. D2006-1128. Further, when the links on pay-per-click landing pages are based on the trademark value of the domain name, the trend in UDRP decisions is to recognize that such practices constitute abusive cybersquatting. See, e.g., Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340 (same); and Brink’s Network, Inc. v. Asproductions,WIPO Case No. D2007-0353 (same).
Fourth, Respondent knew or should have known of Complainant’s rights in its trademark when registering the Disputed Domain Names and creating websites that appeared to be legitimate websites promoting loan services. The fact that Respondent registered domain names that incorporated Complainant’s trademark along with terms descriptive of its services (“loans” and “student loans”) suggests that Respondent was certainly aware of Complainant’s trademark and services. See Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications,WIPO Case No. D2003-0602 (finding that use of the descriptor “cosmetics” points to a certainty of knowledge of the REVLON mark on the part of the respondent).
Further, when a domain name contains a well known trademark, no other action, aside from registering the domain name, is required for a finding of bad faith. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name). Complainant’s trademark is well known, widely used and had been in use by Complainant for decades. Given the widespread and continuous use of the MOHELA trademark, it is very unlikely that Respondent was unaware of the trademark when it registered the Disputed Domain Names. But even if Respondent did not know of Complainant’s trademark when he registered the Disputed Domain Names, he is deemed to have had constructive knowledge of the trademark. This conduct is indicative of bad faith. See Champion Broadcasting System, Inc. v. Nokta Internet Technologies,WIPO Case No. D2006-0128.
Finally, Complainant has presented evidence that Respondent has engaged in a pattern of conduct in which he registered many other domain names incorporating well known trademarks. Like the Disputed Domain Names in this case, the other domain names that Respondent registered are used in connection with websites that resolve to parking pages containing sponsored listings. This is additional evidence of bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: November 13, 2012
1 Although one of the Disputed Domain Names, , does not incorporate Complainant’s trademark in its entirety, it is also confusingly similar to Complainant’s trademark. Respondent merely omitted the letter “o” from the Disputed Domain Name, which, for the purposes of section 4(a)(1) of the UDRP, is considered to be confusingly similar. Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. ./ Domaindeals, Domain Administrator,WIPO Case No. D2008-1302.
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