Complainant is Nelnet Business Solutions, Inc. d/b/a FACTS Management Co. of Lincoln, Nebraska, United States of America, represented by Ridder, Costa & Johnstone LLP, United States of America.
Respondent is Andrew Goldberger of Woodbridge, New Jersey, United States of America, represented by Faegre Baker Daniels LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2013. On April 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2013, 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 May 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2013. The Response was filed with the Center on May 22, 2013.
The Center appointed Michael A. Albert as the sole panelist in this matter on May 30, 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 Netnet Business Solutions, Inc., doing business as F.A.C.T.S. Management Co., which is the owner of the following trademark registrations:
F.A.C.T.S., a character mark, US Reg. No. 1878869, filed December 20, 1993 and registered on February 14, 1995.
MY FACTS ACCOUNT, a character mark, US Reg. No. 2534064, filed January 16, 2001 and registered on January 29, 2002.
FACTS GRANT & AID ASSESSMENT, a character mark, US Reg. No. 3065633, filed February 3, 2005 and registered on March 7, 2006.
INSTAFACTS, a character mark, US Reg. No. 3073160, filed February 3, 2005 and registered on March 28, 2006.
FACTS, a character mark, US Reg. No. 3079107, filed February 3, 2005 and registered on April 11, 2006.
FACTS, a design mark, US Reg. No. 3122915, filed February 2, 2005 and registered on August 1, 2006.
Respondent owns a business under the name Smart, LLC.
The disputed domain was registered in February 2013. 5. Parties’ Contentions A. Complainant
In its Complaint, Complainant alleges:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
(a) Complainant asserts rights in six incontestable US trademark registrations directed to the FACTS mark and variations (US Reg. No. 1878869, 2534064, 3065633, 3073160, 3079107, and 3122915) (collectively, “the FACTS Family of Marks”), all used in connection with the sale of goods and services relating to tuition collection, the provision of financial information on tuition accounts and the calculation of student aid.
(b) Complainant alleges that it has used the FACTS Family of Marks since 1984 for its brand of tuition-related goods and services.
(c) Complainant provides WhoIs registration information showing that Complainant has owned the domain name since 1999.
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name.
(a) Complainant notes that Respondent does not have a license to use the FACTS Family of Marks.
(b) Complainant alleges that Respondent is not commonly known by the disputed domain name. Complainant further alleges that Respondent is a direct competitor of Complainant in the market for tuition-related goods and services, doing business under the SMART trademark.
(iii) The disputed domain name was registered and is being used in bad faith.
(a) Complainant alleges that Respondent is a direct competitor of Complainant, and that Respondent’s selection of the disputed domain name was an intentional attempt to create a likelihood of confusion with the FACTS Family of Marks in order to attract users to Respondent’s website.
(b) Complainant provides a copy of the “www.” webpage as of April 26, 2013, and alleges that the website falsely “purports to be a neutral informational website” that allows visitors to compare Respondent’s and Complainant’s products. Complainant alleges that visitors to the website are prompted to provide information to Respondent, to allow Respondent to solicit sales for its own tuition-related goods and services. Complainant alleges that the “www.” webpage offers money to any visitor whose school’s administrators “review a demo” of Respondent’s products.
(c) Complainant alleges that Respondent, as a direct competitor of Complainant, had notice of Complainant’s ownership and use of the FACTS Family of Marks.
(d) Complainant alleges that even if Respondent was using the “www.” website for legitimate comparative advertising, Respondent would not be entitled to use the disputed domain name for such advertising. B. Respondent
(i) Complainant has not demonstrated that the disputed domain is confusingly similar to a trademark in which Complainant has rights.
(a) Respondent alleges that the FACTS trademark deserves only narrow protection, as a “highly suggestive” dictionary word in the context of the factual information provided by Complainant’s tuition-related services. Respondent provides a dictionary definition of “fact”, and alleges that it uses the disputed domain name to communicate “factual information” in the form of product comparisons between Complainant’s and Respondent’s tuition-related services.
(b) Respondent provides the registration of a third-party trademark, KEYFACTS (US Reg. No. 3300483), also associated with tuition-related services. Respondent alleges that this third-party trademark illustrates the potential for usage of the word “facts” in conjunction with tuition-related services without confusing similarity to the FACTS trademark.
(c) Respondent asserts that the addition of a generic or descriptive term to a non-arbitrary and non-fanciful trademark can prevent a finding of confusing similarity, and that the addition of the term “tuition” after the term “facts” distinguishes the disputed domain from the FACTS trademark.
(ii) Complainant has not demonstrated Respondent’s lack of rights or interests in the disputed domain name.
(a) Respondent asserts that the existence of an uncontestable trademark does not foreclose the possibility of a right or legitimate interest in third-party use.
(b) Respondent alleges that its use of is a permissible nominative fair use. Respondent notes that the commercial nature of its use of the disputed domain name does not foreclose a nominative fair use defense.
(iii) Complainant has not demonstrated that Respondent registered and is using the disputed domain name in bad faith.
(a) Respondent alleges that initial interest confusion alone does not preclude a finding of nominative fair use, and alleges that a reasonable user would not be confused as to the sponsorship or endorsement of the website at the disputed domain name, because of the website’s “unflattering factual information” about Complainant’s products. Respondent asserts that it uses the disputed domain name only as part of fair competition, to provide “factual information” about the differences between Respondent’s and Complainant’s tuition-related services, and that Complainant has not shown any way in which the website content at the disputed domain name would suggest sponsorship or endorsement by Complainant. 6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (“the UDRP”) requires that Complainant prove the following three elements: (A) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (B) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (C) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is . Complainant and Respondent agree that Complainant has a right to the FACTS Family of Marks, as well as to the website “www.”, and that the disputed domain name contains the word “facts.” Complainant’s trademark and the disputed domain name are not identical; the question therefore becomes whether they are confusingly similar.
Respondent contends that the addition of generic word “tuition” in the disputed domain name is sufficient to avoid a conclusion of confusing similarity, given the alleged weakness of the FACTS trademark. Even with the assumption that the FACTS trademark merits only weak protection, this argument is unpersuasive. While the addition of a generic or descriptive term can theoretically prevent confusion, such an added term makes a finding of confusing similarity practically “inevitable” in cases where the added term merely describes “those goods and services which the general public would associate with that trade mark.” Harrods Limited v. Peter Pierre,WIPO Case No. D2001-0456 (June 6, 2001) (describing a consensus view among UDRP cases).
The FACTS Family of Marks has been associated with tuition-related services since 1984. The addition of “tuition” to the FACTS trademark exacerbates the confusing similarity between the disputed domain name and the FACTS trademark. B. Rights or Legitimate Interests
Both parties agree that Respondent has not done business under a name corresponding to the disputed domain name, is not known by the disputed domain name, and does not have a license to use the FACTS trademark. Respondent is, in fact, a direct competitor of the FACTS brand of tuition-related products, using the disputed domain name commercially. Respondent is therefore unable to show a right or legitimate interest under Policy paragraph 4(c)(i) or 4(c)(ii). Under Policy paragraph 4(c)(iii), Respondent must show that its use of the disputed domain name is “a legitimate… fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.” Id. (emphasis added).
Respondent asserts that its use of constitutes nominative fair use. This assertion is implausible. Under the three-pronged test for nominative fair use, Respondent would need to show that (1) the Complainant’s tuition-related products are not identifiable without the use of the mark; (2) only so much of the mark was used as was reasonably necessary to identify the product; and (3) Respondent did nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
Even assuming that Respondent could not have identified Complainant’s products without using the FACTS trademark, and even further assuming that the extent of Respondent’s use of the mark was limited and reasonably necessary, Respondent still cannot show the third element required for nominative fair use. To determine whether a respondent’s use of a mark would suggest sponsorship and endorsement by the trademark holder, previous UDRP panels have consistently looked to the design of the website at the disputed domain name, with a particular focus on the presence of disclaimers or other unambiguous indicators of third-party sponsorship. See, e.g., Amylin Pharmaceuticals, Inc. v. Watts Guerra Craft LLP,WIPO Case No. D2012-0486 (April 29, 2012) (noting “prominent placement of the law firm name”); Pfizer Inc v. Van Robichaux,WIPO Case No. D2003-0399 (July 16, 2003) (holding that nominative fair use requirements would be satisfied by “an express disclaimer of affiliation with the [trademark holder]”).
Respondent’s website hosted at features neither an express disclaimer of affiliation with Complainant nor an express indication of sponsorship by Respondent. It features a modified version of the FACTS design trademark and a Twitter feed featuring comments by FACTS users. In combination with the confusingly similar disputed domain name, these features and the absence of any other reasonable attempt to clarify sponsorship strongly imply a deliberate attempt by Respondent to suggest sponsorship and endorsement by Complainant. Respondent’s use of the FACTS trademark is therefore not nominative fair use.
Furthermore, even if Respondent’s use of the FACTS Family of Marks did constitute nominative fair use, an “intent for commercial gain to misleadingly divert consumers” negates the presence of rights or legitimate interests. Policy paragraph 4(c)(iii); see Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014 (April 22, 2004). Respondent does not dispute its awareness of Complainant’s use of the FACTS mark. The similarity between the disputed domain name and Complainant’s domain name , as well as the indications of sponsorship discussed above, strongly suggest an attempt by Respondent to mislead and divert potential Complainant’s consumers for commercial gain. C. Registered and Used in Bad Faith
Complainant alleges that Respondent’s use of the disputed domain name was an intentional attempt to attract users for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Respondent’s website. Under Policy paragraph 4(b)(iv), such an attempt is evidence of the registration and use of a domain name in bad faith.
Respondent claims that its website exists only for the purpose of good-faith comparative advertising not intended to mislead users. Even if this dubious assertion were true, and even if the website hosted at the disputed domain name did not appear to be deliberately designed to obscure sponsorship, Respondent’s assertion would be insufficient to show good faith for the purposes of Policy paragraph 4(a)(iii). The confusing similarity between the disputed domain name and the FACTS trademark creates the risk that users will accidentally visit Respondent’s site in the belief that the disputed domain name is associated with Complainant. While such initial interest confusion is not sufficient to show bad faith in every case, see, e.g., Pfizer Inc v. Van Robichaux, supra, the deliberate creation of initial interest confusion by a party directly “in competition with the Complainant for the provision of goods or services” is an archetypical example of bad faith registration and use. See, e.g., Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014 (April 22, 2004). 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 Complainant.
Michael A. Albert
Sole Panelist
Date: June 13, 2013
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