The Complainant is The Teaching Company, LLC, d/b/a The Great Courses of Chantilly, Virginia, United States of America ("US"), represented by the law firm Venable, LLP, US.
The Respondent is Brendhan Hight, Marchex Sales, LLC of Las Vegas, Nevada, US, represented by John Berryhill, Ph.D., Esq., US. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 21, 2014. On March 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2014, 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 April 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response April 24, 2014. The Response was filed with the Center April 24, 2014.
On May 2, 2014, the Center received a Supplemental Filing from the Complainant.
The Complainant requested that the dispute be decided by a single-member Panel. Exercising its right under the Rules, paragraph 4(b)(iv) and (v), the Respondent requested a three-member Panel. In accordance with the Supplemental Rules, paragraph 8, the Center accordingly appointed Maxim H. Waldbaum (Presiding Panelist), Richard G. Lyon, and The Hon Neil Brown Q.C. as panelists in this matter on May 22, 2014. As more fully explicated in the addendum below, the Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. Each member of the Panel has submitted his 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 produces audio and video high school and college courses and "lifelong learning and personal and professional enrichment" courses through various media and downloadable formats. Many of these courses are developed in collaboration with educational, technical, or professional institutions and other experts. The Complainant heavily advertises its course offering in print and electronic media. The Complainant holds trademarks for THE GREAT COURSES duly registered "in numerous countries." Its first US trademark was registered in October 2004, claiming a first use in commerce in 1998. The Complainant's principal website since 1999 has been "www.the".
The Respondent registered the disputed domain name in 2004 after acquiring it from a third party. Since registration, the Respondent has used the disputed domain name for a website that contains "an advertising directory of educational resources" (the Respondent's characterization) or "to redirect people . . [to] , which contains links to higher and continuing education, including online education courses, as well as totally unrelated material" (the Complainant's characterization). The Panel verified that both descriptions are accurate. 5. Parties' Contentions A. Complainant
The Complainant contends as follows:
1. The Complainant has rights in THE GREAT COURSES by virtue of its US and other registered trademarks. The disputed domain name is identical but for deletion of the definite article "the" and therefore confusingly similar.
2. The Complainant has never authorized the Respondent to use its marks, and the Respondent has never been commonly known by any phrase containing GREAT COURSES. The Respondent is a domain name aggregator and advertiser, and its use of the Complainant's marks is not legitimate.
3. Relying upon the panel decision in Administradora de Marcas y Franquicias, S. A. de C. V. v. Marchex Sales, Inc./Brendhan Hight,WIPO Case No. D2012-1572,1 involving the same Respondent, the Complainant asserts that, despite some use in the descriptive sense, because many of the links and advertisements on the Respondent's site are unrelated to courses of any kind the predominant use is not in the descriptive sense: "These other links prove that Respondent is not using this domain name to describe the website for which it is used, but rather is trading on Complainant's reputation to divert Complainant's customers to its website." Further, the Respondent ignored the Complainant's cease-and-desist letter. B. Respondent
The Respondent contests the Complainant's contentions under each Policy head, asserting as follows:
1. While not challenging the validity of the Complainant's US registered mark, the Respondent notes that the application for this mark was initially denied on the basis of its being descriptive and a later declaration of distinctiveness was rejected, the application proceeding to registration only after "protracted prosecution." By invoking Section 2(f) of the Lanham Act, the Complainant made a "binding admission the underlying term is inherently descriptive", and therefore its trademark rights are necessarily circumscribed. For one thing it somehow limits the Complainant's ability to argue confusing similarity of the disputed domain name, which does not match the mark exactly. It definitely precludes the Complainant's argument that its mark is other than descriptive in this proceeding.
2. The Respondent first notes that the transfer ordered in the Price Shoes decision relied upon by the Complainant was "nullif[ied]" by the respondent's subsequent commencement of a civil action in federal court to contest the panel decision. The Respondent uses the disputed domain name in its descriptive sense, advertising for educational resources. The Complainant has not supported with evidence its claims of secondary meaning in, fame of, or exclusive right to use "great courses", except perhaps with the word "the." Many other entities, some prominent universities included, use the phrase "great courses" in advertising. Thus the Respondent's use is bona fide.
3. The disputed domain name was initially created, and registered by the Respondent, before the Complainant's even limited mark matured to registration. As noted above, the Complainant's assertions of earlier common law rights are unsupported. 6. Discussion and Findings
Before addressing the merits of this dispute the Panel must address two procedural matters raised by the Complainant's Supplemental Filing. This document addressed three subjects: additional argument on cases and arguments in the Response (part I), the Complainant's panel nominees (part II),2 and the request to disqualify one of the panelists (part III). A. The Complainant's Supplemental Filing.
Recognizing that paragraph 12 of the Rules leaves to the Panel's discretion any pleadings or other submissions other than the two (Complaint and Response) expressly authorized by the Rules, the Complainant followed proper procedure in seeking leave to submit its Supplemental Filing. The stated basis for this request was "to reply to certain issues raised in the Response which were not available or known to Complainant at the time of filing the Complaint." This reason is the one upon which such requests are most frequently granted; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2 ("The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response."); Mani Brothers, LLC v. Lincoln Gasking,WIPO Case No. D2008-0097 ("Panels that have allowed additional pleadings generally do so only when the response includes a matter that the complainant could not reasonably have anticipated when the complaint was filed."); Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com,WIPO Case No. D2008-0103 (requiring "exceptional circumstances").
The Complainant's additional argument on the merits in part I includes nothing that the Complainant could not have anticipated at the date the Complaint was filed and nothing otherwise exceptional. Rather, part I is standard reply brief stuff: taking issue with the Respondent's case citations and characterization of the Complainant's trademark filings, presenting additional argument or repeating argument made in the Complaint, and accusing the Respondent or its representative of "falsehood and deception." Reading and interpreting the evidence and cases is the Panel's duty, and the three Panelists in this case are fully capable of discharging that obligation without unauthorized assistance from the Complainant. In any event, applying long established Policy precedent the Panel denies the Complainant's request to submit part I of its Supplemental Filing.3 B. The Complainant's Request to Disqualify.
Part III of the Supplemental Filing is captioned "Request to Disqualify Neil Brown as Not Impartial." Each Panel member firmly believes that even the Member sought to be disqualified may participate in considering the Complainant's application and that indeed he is the ultimate arbiter on this question.4 Because of the gravity of the charge, however, Mr. Brown has chosen to recuse himself on this issue. The Complainant's request is denied for reasons given in the addendum by the other two Panel members. C. Registered and Used in Bad Faith.
The requirements of paragraph 4(a) of the Policy are conjunctive. Failure to prove any of them results in a denial of the Complaint. In this case the Complainant has not proven that the Respondent registered the disputed domain name in bad faith as required by paragraph 4(a)(iii), so the Complaint fails. The Panel will discuss that element only, leaving to other panels in other cases the interesting and even novel contentions under the other Policy heads raised by the parties.
Ordinarily to establish registration in bad faith, the Complainant must demonstrate both that the Respondent had actual knowledge of the mark at issue and that the Respondent selected it to take advantage of the mark's value or goodwill (sometimes called targeting). These may be proven directly or inferentially, and when as here the Respondent is a domainer, these principles may be relaxed in certain respects. See WIPO Overview 2.0, paragraph 3.4. Whatever the standard, however, proof is required, not merely conclusionary allegations in the Complaint or supporting evidence.
The Complainant appears to acknowledge that its contentions under paragraphs 4(a)(ii) and 4(a)(iii) depend upon considerable renown of its mark and general association of it with the Complainant at the date the disputed domain name was registered. Accordingly it pleads (Complaint, paragraph III-D) that "the Complainant's trademark vastly predates the registration of the domain name and enjoys great reputation which provides brand recognition." The only evidence of such rights in 2004 are inclusion of an earlier date as first use in commerce in a trademark application, and some very general unspecific statements in the declaration of the Complainant's chief marketing officer. There is nothing to indicate that the phrase GREAT COURSES -- a common and descriptive phrase that as the Respondent's evidence shows is used by many other unrelated entities in its descriptive sense -- was generally associated with the Complainant.
This of course does not mean that the Complaint lacks trademark rights in THE GREAT COURSES, or lacked them even before its mark was registered or before the Respondent registered the disputed domain name. Trademark rights alone do not demonstrate the Respondent's requisite knowledge or targeting. Especially is that so when the mark is descriptive. In such a case there must be some showing, backed up with evidence, that targeting was more likely than not the Respondent's reason for registering the disputed domain name. Satisfactory proof of this, or of facts from which the Panel might infer this, is lacking in the record. D. Reverse Domain Name Hijacking.
"For a finding of Reverse Domain Name Hijacking ('RDNH') it is not necessary that the Respondent should have sought such a finding. As can be seen from paragraph 15(e) of the Rules, if the Panel finds that the Complaint was brought in bad faith, he is under an obligation to so declare in his decision." Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork,WIPO Case No. D2013-1603; see also WIPO Overview 2.0, paragraph 4.17. However a finding of RDNH or other abuse of the Policy is always within the Panel's sound discretion, see JJGC Industria E Comercio de Materiais Dentarios S.A. v. Yun-Ki Kim,WIPO Case No. D2013-1838. While here one Panel member might find an abuse, in part because of the Complainant's spurious disqualification motion, the Panel unanimously determines not to include a finding of RDNH. The Panel does call out and rebuke each party's representative for intemperate language and gratuitous and unjustified personal attacks in filings and email correspondence with the Center. 7. Decision
For the foregoing reasons, the Complaint is denied.
Maxim H. Waldbaum
Presiding Panelist
Richard G. Lyon
Panelist
The Hon Neil Brown Q.C.
Panelist Addendum
Part III of the Supplemental Filing is captioned "Request to Disqualify Neil Brown as Not Impartial." We, the Panel members not challenged, take this opportunity to address the Complainant's request.
The Complainant's only basis for its serious allegation of bias is that when in prior UDRP proceedings Mr. Brown has been nominated by the Respondent Marchex Sales, LLC, he has consistently voted in favor of the Respondent and has voted for the Respondent's counsel's client in 15 of 16 instances. In three of the 15 cases, Mr. Brown dissented from a panel order of transfer; in the other 12, the panels unanimously voted in favor of the Respondent's counsel's client.
One of the reasons a UDRP party is given the opportunity to request (at additional expense) a three-member panel is to include a panelist likely to sympathize with each party's desired interpretation of an issue of Policy precedent, see Yellowstone Mountain Club LLC v. Offshore Limited D and PCI,WIPO Case No. D2013-0097. Following that election in this case, the Complainant presumably exercised that same opportunity at least in part for the same reasons when nominating its panelist choices.
However this may be, we note that the selection of a three-member panel in this case proceeded under paragraph 6(e) of the Rules and paragraph 8 of the Supplemental Rules. The latter provision states in pertinent part:
"8. Panelist Appointment Procedures
(a) Party Candidates. Where a Party is required to submit the names of three (3) candidates for consideration for appointment by the Center as a Panelist (i.e., in accordance with paragraphs 3(b)(iv), 5(b)(v) and 6(d) of the Rules), that Party shall provide the names and contact details of its three candidates in the order of its preference. In appointing a Panelist, the Center shall, subject to availability, respect the order of preference indicated by a Party.
(b) Presiding Panelist
(i) The third Panelist appointed in accordance with Paragraph 6(e) of the Rules shall be the Presiding Panelist.
(ii) Where, under Paragraph 6(e) of the Rules, a Party fails to indicate its order of preference for the Presiding Panelist to the Center, the Center shall nevertheless proceed to appoint the Presiding Panelist.
(iii) Notwithstanding the procedure provided for in Paragraph 6(e) of the Rules, the Parties may jointly agree on the identity of the Presiding Panelist, in which case they shall notify the Center in writing of such agreement no later than five (5) calendar days after receiving the list of candidates provided for in Paragraph 6(e) of the Rules".
These procedures were followed to the letter in this case. The Response included the Respondent's three nominees and the Complainant's Supplemental Filing, part II, included its three nominees. In each case each party's first-requested candidate accepted the Center's invitation to participate and after declaring his independence became a member of the Panel.
Independence is addressed by paragraph 7 of the Rules, under which a prospective panelist must disclose to the Center any circumstances that might raise justifiable doubt as to his or her impartiality5 or independence or must confirm in writing that no such circumstances exist. In this case, each member of the Panel has signed the required written statement of impartiality.
Consistently with the Policy's stated objectives of expeditious resolution, none of the Policy, Rules, or Supplemental Rules expressly provides for a party to challenge selection of a UDRP panelist. Noting that this applies a fortiori where it concerns a party-nominated panelist, the Center apprised the parties of this fact upon receipt of the Complainant's Supplemental filing.
Maxim H. Waldbaum
Presiding Panelist
Richard G. Lyon
Panelist
Date: June 4, 2014
1 The Panel refers to this decision as the "Price Shoes case," after the domain name at issue in that case.
2 Part II was the only subject requested by the Center in the communication to which the Supplemental Filing was a reply.
3 Each Panel member notes that he has read the entire Supplemental Filing and notes that admitting part I would not alter the Panel's decision under paragraph 4(a)(iii) of the Policy.
4 See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; see also Rules, paragraph 7 (requiring disclosure of circumstances that might raise a question regarding impartiality).
5 From long experience the two of us signing this addendum know that the Center tends to be conservative in its evaluation of anything but an unqualified statement of independence, requesting recusal in circumstances that would not, for example, disqualify a panelist under the more stringent Arbitration Rules.
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