Complainant is American Council on Education of Washington, D.C, United States of America, GED Testing Service LLC of Bloomington, Minnesota, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
Respondent is Registrant [4065093]: Domain Manager, Technology Online LLC Services of Las Vegas, Nevada, United States of America, represented by Rome & Associates, A.P.C., United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2012. On November 21, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2012, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on November 28, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 3, 2012.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on December 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2012. The Response was filed with the Center on December 22, 2012.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 9, 2013. 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.
On January 11, 2013, Complainant filed a motion for leave to file a Reply to the Response, and submitted a Reply instanter. On January 15, 2013, Respondent filed an opposition to the motion for leave to file a Reply. These submissions were considered by the Panel. 4. Factual Background
Complainant, founded in 1918, represents presidents and chancellors of colleges and universities throughout the United States. Through a division (now a joint venture under Complainant’s control), Complainant publishes, markets, and licenses the GED test. The test has its origins in World War II, during which many American men joined the armed services before completing high school. Complainant developed the GED test in order to permit returning war veterans to demonstrate that their educational level was equivalent to that of a high school graduate, and thereby allow such veterans to avail themselves of the equivalent of a high school diploma. The first GED test was administered in 1947.
The GED test has been used in all 50 states of the United States as an accepted method for obtaining a high school equivalency credential. Today, many Americans who drop out of high school eventually take the GED test.
Complainant holds several registered service marks, registered with the United States Patent & Trademark Office (“USPTO”) at various times between 1985 and 2002, of the term GED – either as a word mark (2002) or stylized (1985 and 2002). The GED mark is registered in connection with educational testing services. According to the USPTO registrations, Complainant made first use in commerce of GED as a word mark in 1999, and made first use of GED as a stylized mark in 1971.
The Domain Name was registered by Respondent on June 12, 2011. It appears that Respondent acquired the Domain Name from another party, and according to Respondent the acquisition of the Domain Name was accompanied by a fully developed website which Respondent has not yet changed.
The website contains considerable information about the GED test and offers various services – at various price points – for people interested in preparing for the GED test. Among the content at the website Respondent now controls are the following statements:
- “Currently, there are over thirty variations of the GED test in circulation in an effort to discourage those who want to cheat or profit on cheating schemes.”
- “The GED test was revised in 2002.”
- “GED.net is proud to have been awarded the 2009 education achievement award by the American Accreditation Council for Higher Education. Our organization was selected because of our unique offering of updated services and products for GED applicants.”
- “GED.net is proud to offer the most current free GED online practice test program available today. This short course is designed to quickly give the applicant an idea of how they may perform when they take the official GED test.”
- “GED.net is the original portal for all your online GED needs…”
- “The GED is made up of 5 tests that have been developed and are administered by the American Council on Education (ACE).”
At the bottom of some pages at the site is the statement: “GED.net is an independently owned and operated website since 1997.” Also at the bottom of some pages is the following disclaimer: “GED.net is not associated or affiliated with the American Council on Education or any related entities.”
Respondent claims that it intends to provide services similar to those already offered on the website it apparently purchased along with the Domain Name. It appears further that, by Respondent’s account, the website has been inactive for more than a year, despite the content one sees at the website, and the hyperlinks are inoperative. Respondent asserts that it has not realized any revenue to date from the website.
Respondent has not provided any documentation of its alleged plans to offer GED test preparation services.
Complainant asserts in an affidavit annexed to its Reply that the “award purportedly given to GED.NET” was from “a non-existent accreditation entity.” In Respondent’s opposition to the motion for leave to file a Reply, Respondent did not dispute the veracity of this statement.
Complainant’s counsel further states in the affidavit that, on December 21, 2012, Respondent’s counsel left him a voice-mail message seeking to discuss a resolution of the dispute. The two counsel spoke again on December 24, 2012, at which time Respondent offered to sell the Domain Name for $50,000. Complainant did not accept this offer. In its opposition to the motion for leave to file a Reply, Respondent stated that it had paid $60,000 to acquire the Domain Name. It is not clear from the opposition paper whether other assets or consideration were acquired along with the Domain Name.
Respondent admits to having initiated discussions with Complainant to seek resolution of the dispute for a $50,000 sale. Respondent also states in the opposition paper that Complainant’s counsel told Respondent’s counsel that Complainant would consider buying the Domain Name at the purchase price (then believed to be $50,000, not $60,000) if Respondent would provide a copy of the purchase agreement. Respondent said in its opposition paper that it was willing to provide a copy of the purchase agreement, and telephoned Complainant’s counsel at least three times to advise Complainant of this willingness. Complainant’s counsel, however, never returned these calls. In any event, no copy of the purchase agreement by which Respondent purportedly acquired the Domain Name was annexed to the Response or to the opposition paper Respondent filed. 5. Parties’ Contentions A. Complainant
Complainant’s salient contentions are set forth in the Factual Background above or will be taken up in context in the Discussion and Findings section below. B. Respondent
Respondent’s salient contentions are set forth in the Factual Background above or will be taken up in context in the Discussion and Findings section below. Respondent raised numerous points in this proceeding, but many of them are extraneous or irrelevant and the Panel will not repeat and address all of them here, other than to say they were either unavailing or not germane. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant holds several USPTO registrations for the mark GED, both in stylized and word format. These registrations are valid, subsisting, and, indeed, incontestable at this juncture. The Domain Name is identical to Complainant’s mark for purposes of the Policy. Respondent has made various arguments regarding Complainant’s mark, including the argument that GED has become generic (and hence uprotectable as a mark), but the Panel need not address those points in view of the valid and subsisting rights currently recognized by the USPTO.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 trademark or service mark at issue.
The Panel concludes that Respondent lacks any rights or legitimate interests in respect of the Domain Name. In this vein, it is important to note that Respondent has disavowed the content at the website, which content is fairly well developed and undoubtedly appears directed at consumers who wish to pass the GED test insofar as that content currently relates to the offering of products or services for commercial gain.
Notwithstanding the above, the Respondent claims that it intends to enter the business of offering test preparation materials for the GED test. However, Respondent has not provided any evidence of this alleged plan. In the Panel’s view, it would have been rather easy to provide some evidence of such a plan, and a party trying to establish its bona fides would naturally to back up one’s claims along these lines with some proof. Moreover, it would have been seemingly very simple for one intending to launch into a field where some expertise is needed to state one’s own credentials, as well as the contours of one’s business plan. Respondent’s failure to offer the foregoing information and evidence as well as its apparent contradictory plans with regards to use of the website defeats its claim to a right or legitimate interest under any element of this head of the Policy, and undermines Respondent’s credibility in general in this proceeding.
The Panel also finds it implausible that a party with actual plans to get into the test preparation business would let its website essentially idle for more than a year with old (as well as inaccurate or misleading) content from the prior owner of the site.
In its consideration of the above, the Panel has taken note of the existence of Google ads on the website at the Domain Name (Exhibit F to the Complaint) and the effect of a disclaimer in making the determination that Respondent lacks rights or legitimate in the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, 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 or service on Respondent’s website or location.
The Panel finds bad faith under Policy paragraph 4(b)(iv). Much of Respondent’s argument on the issue of “bad faith” is based on the fact that there are numerous websites in existence which purport to offer GED materials and information, but which are unaffiliated with Complainant. That may be so, but it does not follow that Respondent is free to appropriate the GED mark as others may have done and violate Complainant’s rights under the Policy as the Panel has found here. On this record, it is impossible to know whether some of the other websites cited by Respondent are run with Complainant’s permission. It may well be, by contrast, that Complainant has more work to do to police its trademarks. In any event, the legitimacy of the operations behind these other websites is not at issue in this proceeding, and Respondent may not take refuge in an “everybody else is doing it” argument in this context.
Respondent also states: “no evidence has been presented by Complainant to suggest that Respondent would know or would have reason to know of Complainants’ claimed mark, and indeed, Respondent had no knowledge of Complainant’s mark.” The Panel does not believe the Respondent’s assertion. It is not credible for Respondent, who claims to want to get into the business of offering GED test preparation services or materials, to deny knowledge that GED is a trademark. Indeed, the website that Respondent claims to have purchased along with the Domain Name states: “The GED is made up of 5 tests that have been developed and are administered by the American Council on Education (ACE).” That site also contains a disclaimer: “GED.net is not associated or affiliated with the American Council on Education or any related entities.” The Panel finds it most likely that Respondent purchased the Domain Name with Complainant’s trademark in mind.
Respondent’s credibility problem in this proceeding also undermines Respondent’s denial that it has derived any revenue from the website it purchased. Even if that denial is to be believed, there is no doubt that Respondent, by its own account, intended to go into business. Under these circumstances, the Panel concludes on a balance of probabilities that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion between Complainant’s mark and the Domain Name. This constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Panel need not discuss whether bad faith may also be present under paragraph 4(b)(i).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: February 4, 2013
Full & Egal Universal Law Academy