Complainant is Udemy, Inc. of San Francisco, California, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
Respondent is Mike Morgan of Elmsdale, Nova Scotia Canada / Moniker Privacy Services, Portland, Oregon, United States of America. 2. The Domain Name and Registrar
The disputed 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 April 29, 2014. On April 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 9, 2014 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 May 15, 2015.
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 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 11, 2014.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 23, 2014. 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 company with legal domicile in the United States offering a wide range of online courses for e-learning purposes. Complainant has provided evidence that it is the registered owner of various trademarks relating to the designation "Udemy", including the following:
- Word mark UDEMY, United States Patent and Trademark Office (USPTO), Registration No.: 4314406, Publication Date: July 17, 2012, Registration Date: April 2, 2013, First Use in Commerce: May 11, 2010, Status: Active;
- Word mark UDEMY, Office for Harmonization in the Internal Market (OHIM), Registration No.:011006319, Filing Date: July 1, 2012, Registration Date: November 28, 2012, Status: Active.
The disputed domain name was created on October 12, 2011; it resolves to a website at "www.", which is a typical pay-per-click ("PPC") site with, inter alia, hyperlinks to commercially active websites of numerous third parties.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties' Contentions A. Complainant
Complainant asserts that it is the world's largest destination for on-demand online courses with about 2 million students in more than 190 countries.
Complainant claims that its UDEMY trademark was first used in commerce in 2009 and that the official launch of this online educational platform was on May 11, 2010. Since that date, Complainant recites to have built up an unrivaled reputation on the online educational market with regular articles in news carriers such as FORBES, CNBC, The New York Times, The Financial Times, etc.
Complainant suggests that the disputed domain name is identical or at least confusingly similar to Complainant's UDEMY trademark on a visual, as well as on a phonetic and conceptual level.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name, because (1) Respondent has never been known, and is not commonly known, by the disputed domain name nor has Respondent registered the disputed domain name as a trademark or acquired common law trademark rights through continuous use, (2) Respondent has not been authorized or licensed to use Complainant's UDEMY trademark nor has there been any relationship that would give rise to such permission, and (3) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since it is currently being used by Respondent for a PPC parking page with links diverting Internet users to competing goods and services.
Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith since (1) Complainant's UDEMY trademark is not a generic term and simply does not exist in the English or other language dictionaries, (2) Respondent has used the proxy service offered by the Registrar to conceal its true identity which under the circumstances to the case at hand cannot be viewed as a good faith practice, given the fact that Complainant's UDEMY trademark is inherently distinctive and the disputed domain name is used to redirect to a PPC parking page and, finally, (3) Respondent is the owner of numerous domain names relating to third parties' trademarks (inclusive of typo-squatted versions of the legitimate trademark) and, therefore, frequently engages in a pattern of such conduct with clear disregard of the exclusive rights of trademark owners (e.g. , , ). B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(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 the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is identical with the UDEMY trademark in which Complainant has shown to have rights.
The disputed domain name incorporates Complainant's UDEMY trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the domain name is identical or at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I. and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant's undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain.
Complainant has produced evidence that the disputed domain name resolves to a typical PPC parking page at "www." which in turn redirects Internet users to a variety of third parties' websites which are not at all specifically tailored to Complainant but connect, inter alia, to some of Complainant's (direct) competitors on the online education market.
The Panel, therefore, concludes that the disputed domain name – irrespective of the alleged reputation of the UDEMY trademark throughout the world – obviously alludes to Complainant's UDEMY trademark and its online education business. Such use of the disputed domain name to seek "pay-per-clicks" from those diverted Internet users who are trying to reach Complainant but due to the identity of the disputed domain name with Complainant's UDEMY trademark end up with Respondent's Internet presence at "www." is neither non-commercial because it has predominantly the purpose of generating advertising revenues, nor it is fair because Internet users by confusion are brought to a general website with information about a variety of (online education) matters that are not specifically tailored to Complainant.
Moreover, the Panel notes that (1) Respondent obviously has not at all been authorized to use Complainant's UDEMY trademark as a domain name or on Respondent's website or in any other way and (2) Respondent's name apparently does not correspond to Complainant's UDEMY trademark nor is any other reasonable explanation apparent why Respondent should rely on the designation "udemy" as it is contained in the disputed domain name, especially given the fact that the UDEMY trademark obviously is neither a common noun nor a common name, but rather a pure coined word.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview of Panel Views on Selected UDRP Questions, 2nd Edition ("WIPO Overview 2.0"), paragraph 2.1). In the case at hand, Respondent did not reply to Complainant's allegations as they were included in the Complaint duly notified to Respondent by the Center on May 15, 2014.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is identical with Complainant's UDEMY trademark, to a standardized PPC parking page in order to generate "pay-per-click" commissions without Complainant's permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant's UDEMY trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent not only made use of a privacy service in order to conceal its true identity, but that Respondent apparently is constantly engaged in the business of registering domain names which reflect the trademarks of third parties, often in typo-squatted versions (e.g. , ). Those circumstances taken altogether throw a light on Respondent's behavior which at least supports the finding of a registration and use of the disputed domain name in bad faith.
The Panel notes that the disputed domain name was created already on October 12, 2011, while Complainant's UDEMY trademarks were only registered on November 28, 2012 (OHIM) and April 2, 2013 (USPTO), respectively. Complainant, however, has also provided evidence that its UDEMY trademark was used in commerce already since at least May 11, 2010, and, thus, well before the creation of the disputed domain name took place. Under these circumstances, it is appropriate for the Panel to decide against Respondent (see WIPO Overview 2.0, paragraph 3.1).
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) under the Policy. 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.
Stephanie G. Hartung
Sole Panelist
Date: June 27, 2014
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