The Complainant is Graduate Management Admission Council, McLean, Virginia, United States of America, represented by Lall Lahiri & Salhotra, India.
The Respondent is Climb First Consultancy Pvt Ltd, Borivali (West), Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2013. On July 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 July 24, 2013. The Respondent emailed the Center on July 24, 2013 seeking directions as to settlement of the case. By email of July 24, 2013, the Center invited the Respondent to contact the Complainant directly for possible settlement negotiations. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2013. The Respondent did not submit a response. The Center notified the Respondent’s default on August 15, 2013.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 27, 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
The Complainant is a not-for-profit organization established under the laws of the State of Virginia, United States of America (“USA”). The Complainant originated in 1953 as an association of nine business schools, whose goal was to develop a standardized test to assist in the selection of qualified applicants. In 1975, this test became known as “GMAT”, which is an acronym for “Graduate Management Admission Test”. The “GMAT” test is now taken in more than 83 countries worldwide, including India, and is used by more than 4,800 graduate management education programs offered by more than 1,500 business schools. The Complainant states that it is the only body offering such a standardized exam specifically designed as a factor for business school entry. Over 21,000 “GMAT” exams were taken in India and 30,633 Indian citizens sat the “GMAT” exam in the year 2009.
The Complainant is the owner of a large number of registered trademarks in multiple jurisdictions for the word mark GMAT and variations thereof. For example, the Complainant is the owner of Indian registered trademark no. 385853 for the word mark GMAT registered on February 1, 1982 in international class 16.
The Respondent is an entity with an address in India. The disputed domain name was created on November 12, 2011. The screenshot of the website associated with the disputed domain name indicates that it appears to be a commercial portal site for information, resources, coaching and test reservations relating to the “GMAT” test. The said website invites visitors to “Register at GMAT India Portal” and also features a button bearing the legend “Pay Now” together with associated credit card images. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no right or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.
The Complainant states that it adopted the trademark GMAT in 1975 in respect of its assessment test for business school candidates throughout the world and that the word GMAT has become distinctive of the Complainant’s assessment test, such that any reference thereto is immediately associated with the Complainant. The Complainant notes that the disputed domain name incorporates the Complainant’s GMAT trademark and asserts that this is sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant adds that the suffix “portal” is unlikely to be sufficient to distinguish the disputed domain name from the Complainant’s trademark in that the addition of a descriptive or non-distinctive term to a trademark in a domain name does not dispel confusing similarity.
The Complainant asserts that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Complainant notes that the Respondent bears no relationship to the business of the Complainant and is neither a licensee nor has obtained authorization of any kind to use the Complainant's mark in a domain name. The Complainant submits that the Respondent is not commonly known by the disputed domain name. The Complainant states that its trademark is so well-known and that as the Respondent has no rights therein the only reason that the Respondent could have for registering and using the disputed domain name would be to trade on the Complainant’s renown and to lure consumers to the Respondent’s website. The Complainant contends that rights or legitimate interests cannot be created where the user of the disputed domain name would not choose such a name unless seeking to create an impression of association with the Complainant. The Complainant states that the disputed domain name trades on the fame of Complainant's GMAT trademark and as such cannot constitute a bona fide use.
The Complainant asserts that, should the Respondent argue that it has a legitimate interest in the disputed domain name in relation to genuine products, it is incumbent upon the Respondent to bring evidence before the Panel to the effect that the disputed domain name has been or will be used in a manner that satisfies the conditions of use as upheld in several cases under the Policy.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith for commercial gain and to benefit, first, from the goodwill and fame associated with Complainant's GMAT trademark and, secondly, from the likelihood that Internet users will mistakenly believe the disputed domain name and associated website are connected with the Complainant. The Complainant states that the Respondent has registered and is using the disputed domain name without the Complainant’s authorization and primarily for the purpose of disrupting the business of the Complainant. The Complainant states that the offering of other products and services on the website associated with the disputed domain name manifests the Respondent's intention to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's products. The Complainant contends that a consumer searching for information regarding the Complainant is likely to be confused by the disputed domain name as to whether the Respondent is connected with, affiliated to, sponsored by or associated with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of 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
On this topic, the Complainant relies upon its extensive portfolio of registered trademarks for the word mark GMAT, an example of which is cited in the Factual Background above. The Panel is satisfied that the first, distinctive and most dominant element of the disputed domain name is the Complainant’s GMAT trademark which is reproduced in its entirety. The second element of the disputed domain name is the generic word “portal”. It is well established in cases under the Policy that the addition of one or more generic words to a trademark in a domain name does not prevent the domain name from creating a likelihood of confusion. Such elements cannot remove the overall impression made on the public by the trademark, which in the present case is the dominant element of the disputed domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409). The third element of the disputed domain name is the generic top level domain “.com”, which is disregarded for the purposes of comparison as is customary in cases under the Policy.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. Accordingly, the Complainant has established the first element under the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Complainant contends that the Respondent bears no relationship to the business of the Complainant and is neither a licensee nor has obtained authorization of any kind to use the Complainant’s mark in a domain name. The Complainant also asserts that the Respondent is not commonly known by the disputed domain name and that the use of the disputed domain name does not constitute a bona fide offering of goods or services. The Panel is satisfied that this constitutes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
There is no evidence before the Panel that the Respondent has been commonly known by the disputed domain name or that the Respondent is making a legitimate noncommercial or fair use thereof. Having considered the screenshot of the website associated with the disputed domain name, the Panel notes that the content appears to be commercial in nature and closely related to the Complainant and its trademark in that the said website claims to offer resources to support those taking or intending to take the Complainant’s GMAT test.
It is not entirely clear to the Panel whether the services offered on the Respondent’s website are competitive or ancillary to the Complainant’s GMAT testing services, or in fact amount to the business of an unauthorised reseller of those services. In the former case, the Panel does not consider that the Respondent’s use of the disputed domain name could be described as a bona fide offering of goods or services. In the latter case, the Panel agrees with the Complainant that the business of an unauthorised reseller of the Complainant’s services would require meeting certain criteria. These criteria are set out in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which states, inter alia, “These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark.” In the present case, the Respondent’s website does not accurately and prominently disclose the registrant’s relationship with the Complainant. Nor, as noted above, is it clear to the Panel that the site is used to sell only the trademarked services. Consequently, in the Panel’s view, the disputed domain name does not meet the relevant criteria to constitute a bona fide offering of services.
The Panel notes that the Respondent did not respond to the Complaint, and therefore did not submit any evidence regarding any alleged rights or legitimate interests in the disputed domain name. Based on the foregoing analysis and in the absence of any submissions to the contrary from the Respondent, the Panel considers that on the balance of probabilities the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In the present case, the Complainant’s submissions focus predominantly on paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. As regards paragraph 4(b)(iii), and as outlined in the preceding section, the Panel is not entirely clear as to whether the Respondent is in fact a competitor of the Complainant. However, the Panel finds the Complainant’s case under paragraph 4(b)(iv) of the Policy to be of greater force. The Panel considers that Internet users searching for a “GMAT portal” would be expecting to find an official website of the Complainant and that if such users reached the Respondent’s website they would be likely to believe that this was in some way authorized or endorsed by the Complainant as an official resource relating to the Complainant’s “GMAT” test. Given the manner in which the said website is targeted to the Complainant’s trademark the Panel is in no doubt that the Respondent was fully aware of the Complainant and its rights in the GMAT mark and intentionally set out to free-ride on the Complainant’s reputation and goodwill by diverting Internet users and customers to its website for commercial gain. As the Respondent has failed to file any response in these proceedings, it has not provided any alternative account of its conduct which might point in the direction of registration and use in good faith, nor can the Panel conceive of any such explanation which might have been tendered.
Accordingly, based on the record before it, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website, as contemplated by paragraph 4(b)(iv) of the Policy. The Panel therefore finds that the Complainant has proved that the Respondent has registered and used the disputed domain name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy have been 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 disputed domain name be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: September 10, 2013
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