Complainant is Higher Education Loan Authority of the State of Missouri of Chesterfield, Missouri, United States of America (“US”), represented by Thompson Coburn LLP, US.
Respondent is Kanter Associates SA of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2012. On November 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 30, 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.
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 December 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 27, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 17, 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. 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 US. 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 US trademark registration No. 2,461,671 for MOHELA in International Class 36 for providing student loan services. The date of first use and date of first use in commerce for MOHELA was October 1, 1999.
The Disputed Domain Name was registered on August 24, 2004. 5. Parties’ Contentions A. Complainant
First, Complainant claims that the Disputed Domain Name is confusingly similar to a trademark registration in which Complainant has rights. The fact that Respondent registered a domain name that incorporates a trademark owned by Complainant leads to the inevitable conclusion that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights. Complainant argues that the MOHELA trademark is incontestable under US law, 15 U.S.C. section 1065 and has been in continuous use for over thirty years. Complainant also owns and operates the domain name .
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 Name in connection with a bona fide offering of goods or services (the site does nothing more than offer sponsored links); (2) Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name; and (3) Respondent’s website feature various hyperlinks that divert consumers to sites that are not associated with Complainant, as well as hyperlinks to numerous competitors of Complainant.
Complainant asserts that the Disputed Domain Name was registered on August 24, 2004, more than 20 years subsequent to Complainant first use of its MOHELA trademark. The WhoIs records fail to establish that Respondent is commonly known by the name “mohela”.
Third, Complainant claims that Respondent has registered and is using the Disputed Domain Name in bad faith. Complainant states that:
(1) Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor: Respondent began operating a web site offering links to sites that provide information about identical services under the Disputed Domain Name: Respondent presumably obtains a commercial benefit by providing sponsored listings on its site, as operators of a web sites of this type generally receive revenue for each click through by online consumers.
(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 Name to prevent Complainant from reflecting the mark in a corresponding domain name: Respondent has registered the Disputed Domain Name to prevent Complainant from registering and using the Disputed Domain Name, which incorporates the famous MOHELA trademark. Respondent has engaged in a pattern of such conduct by registering domain names incorporating other famous trademarks. According to Complainant, uncontested evidence from other UDRP proceedings shows that Respondent has engaged in a pattern of registering domain names incorporating third parties’ famous trademarks. In all UDRP proceedings and one US district court case, Kanter Associates (Respondent) was the named respondent. All domain names at issue in those cases, except one, were ultimately transferred to the rightful trademark owners.
Complainant requests the transfer of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the 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 Name:
(i) That the Disputed Domain Name is 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 Name; and
(iii) That Respondent has registered and is using the Disputed Domain Name in bad faith.
These elements are discussed below. A. Identical or Confusingly Similar
Complainant has a valid and well established right in its MOHELA trademark. The Panel finds that the Disputed Domain Name is confusingly similar to the trademark MOHELA.
Furthermore, it has also been found that a domain name that comprises the “www” World Wide Web prefix with a complainant’s trademark and the generic top level domain suffix “.com” that is identical to one of the URLs leading to the complainant’s main website, is identical or confusingly similar to a trademark in which the complainant has rights. See, Raymond Weil SA v. Fancy Bandwith Inc.,WIPO Case No. D2012-1987; see also, Barclays Bank PLC v. Private Registration, WhoisGuardS,WIPO Case No. D2012-1662, finding that it is permissible for the panel to ignore the generic top level domain suffix and also that the addition of the descriptive and generic term “www,” one of the common server names which forms part of a website’s URL, does not negate the confusing similarity encouraged by the respondent’s complete integration of the complainant’s trademarks in the domain name.
In addition, “typosquatting” has consistently been regarded as creating domain names confusingly similar to the relevant trademark. See, e.g. Deutsche Bank AG v, New York TV Tickets Inc.,WIPO Case No. D2001-1314.
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 disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed 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 Name, 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 Name under the circumstances. The Panel finds further that Respondent was using the Disputed Domain Name for commercial gain.
The website to which the Disputed Domain Name resolves is a parking page that contains 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 website. 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 under paragraph 4(b) 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.
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 name in bad faith because Respondent was attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark. The Panel finds bad faith under Policy paragraph 4(b)(iv). Respondent’s site contains links to commercial sites of third parties, some of whom compete with Complainant. It is fair to infer that Respondent derives financial gain via click-through revenues. The Panel therefore concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion between Complainant’s mark and the Disputed Domain Name.
Second, the Panel also finds bad faith evidenced by the fact that the Respondent did not use the Disputed Domain Name in connection with a legitimate offering of any goods or services, and other UDRP panels have already determined typosquatting to be inherently parasitic and of itself evidence of bad faith. See e.g. Allstate Insurance Company v. Callum Macgregor/Privacy–P,WIPO Case No. D2011-0244, citing National Association of Professional Baseball Eagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011.
Finally, Complainant has presented evidence that Respondent has engaged in a pattern of conduct in which it registered several domain names incorporating well-known trademarks. This is evidenced by the cases attached to the Complaint. The list includes one UDRP case at WIPO, eleven at the National Arbitration Forum and one US district court case. In all these cases, Kanter Associates SA was named as Respondent and there was a finding of bad faith registration and use in dispute in numerous cases. 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 Name be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: January 30, 2013
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