Complainant is Bridgepoint Education, Inc. of San Diego, Calilfornia, United States of America ("US") / Ashford University, LLC of Clinton, Iowa, US, represented by Sheppard, Mullin, Richter & Hampton, US.
Respondent is Whois Agent, Whois Privacy Protection Service Inc. of Kirkland, Washington / Nguyen Linh of Ho Chi Minh, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name ("the Domain Name") is registered with N LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 27, 2014. On October 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 2, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 4, 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 November 6, 2014.
The Center verified that the Complaint together with the amended 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 November 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 1, 2014.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on December 4, 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
The Domain Name was registered on February 22, 2014, according to the relevant WhoIs. 5. Parties' Contentions A. Complainant
Complainant advises that it owns numerous U.S. and international registrations for the marks ASHFORD and ASHFORD UNIVERSITY (collectively, the "ASHFORD marks"), as well as U.S. trademarks for the ASHFORD marks in connection with educational services; namely, providing courses of instruction at the post-secondary and graduate levels. Complainant states that it first began using these marks at least as early as March 2005.
Complainant advises that it is the sole member of Ashford University, LLC ("Ashford"), with Ashford being the exclusive licensee of the ASHFORD® marks, upon which this Complaint is based.
Complainant also advises that its regionally accredited universities, Ashford University and the University of the Rockies, offer post-secondary educational courses online and through traditional campuses located in Clinton, Iowa and Colorado Springs, Colorado. Collectively the institutions offer associate, bachelor, master, and doctoral programs in the disciplines of business, education, psychology, social sciences, and health sciences. Complainant points out that these institutions offer over 1,700 courses, 85 degree programs and 150 specializations, and in September 2008 it was recognized by Inc. Magazine as the fastest-growing private education company in the United States.
Complainant goes on to advise that as at June 30, 2014, enrollment at the traditional campus and online universities totaled over 61,000 students and that in connection with these online courses, Complainant and Ashford have created original educational materials, including syllabi, quizzes, assignments, exams, course guides and worksheets, which are accessible online for enrolled students. Complainant asserts that it and Ashford own copyrights in these educational course materials.
Complainant states that Ashford University's predecessor was founded in 1918 and that it acquired the institution in 2005 and then changed its name to Ashford University. Complainant claims that its mission, together with Ashford University, is to provide accessible, affordable, innovative, high-quality learning opportunities and degree programs that meet the diverse needs of individuals pursuing integrity in their lives, professions, and communities, and that on November 8, 2013, the U.S. Department of Education formally recognized Ashford University's accreditation with the Western Association of Schools and Colleges.
Complainant contends that Ashford University's educational services are offered under the federally-registered ASHFORD marks and that both of the trade mark registrations are in full force and effect. Each is the property of Complainant, with Ashford being the exclusive licensee of the marks, and Complainant and Ashford (collectively, "Complainants") own all rights to the business and goodwill appurtenant to these registrations. Complainant asserts that such registrations provide constructive notice to others of its ownership of the ASHFORD marks, and serve as prima facie evidence of the validity of the marks and of its exclusive right to use such marks in connection with the services specified in the registrations.
Complainants claim that they have extensively advertised and promoted the ASHFORD marks, and that Ashford owns the domain name , which serves as the primary online presence for Ashford University. Complainants state that they have operated the "www." website, which incorporates the ASHFORD mark, since at least as early as September 2005 and receive hundreds of thousands of unique visitors each month, and, on occasion, the website has averaged over approximately 1 million visits per month.
Complainants assert that as a result of the care and skill exercised by it in operating Ashford University, and because of the extensive advertising, enrollment/sales, and public recognition of the ASHFORD marks, products and services sold in connection with the ASHFORD marks, they have acquired a valuable reputation. Complainants further assert that the public recognizes that the ASHFORD marks identify products and services of Complainants' Ashford University, exclusively.
Complainants state that it uses a unique color scheme, comprised of the colors purple, gold and orange, in connection with the educational services offered under the ASHFORD marks, and claim that they have built substantial goodwill in connection with this color scheme, so that it has come to signify Complainants' educational services exclusively.
Complainants contend that Respondent has registered and is using the Domain Name in connection with unauthorized online sales of Complainants' copyrighted educational course materials, including without limitation syllabi, quizzes, exams and course guides, and that Respondent registered the Domain Name in February, 2014, nearly 9 years after Complainants applied for federal registration of, and began using the ASHFORD® marks.
Complainants claim that the Domain Name is nearly identical and is confusingly similar to its registered trade marks ASHFORD and ASHFORD UNIVERSITY® because the Domain Name wholly incorporates the ASHFORD mark and merely adds the generic term "homeworks", and the generic Top-Level Domain ("gTLD") name indicator ".com" to the end of the Domain Name. Complainants further claim that because "homeworks" describes the products sold by Respondent via the Domain Name website, and because "ashford" is the dominant textual element of the Domain Name, it is confusingly similar to Complainants' ASHFORD marks.
Complainants submit that Respondent has no right to use the ASHFORD mark in the Domain Name and based on a review of the records available online from the United States Patent and Trademark Office ("USPTO"), Complainants claim that Respondent owns no federal trade mark or service mark registration for any mark incorporating the ASHFORD marks. Complainants also state that Respondent is not a representative of either Complainant, nor does it have a license to use the ASHFORD marks, nor is it authorized to register any domain name incorporating the marks.
Complainants suggests that Respondent has not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, nor is it selling authorized goods or services, but rather, is using Complainants' ASHFORD mark to create a false impression of affiliation between itself and Complainants. Complainants note that the "www." website offers for sale copies of Complainants' copyrighted course materials, including syllabi, quizzes, exams, course guides, worksheets and assignments that Complainants use in connection with their provision of online courses. Moreover, Complainants argues that Respondent's nearly identical website creates the false impression that consumers have reached one of Complainants' websites and are thus purchasing course materials directly from Complainants. Also, Respondent's unauthorized use of Complainants' unique school color scheme exacerbates the likelihood that consumers encountering Respondent's website will be confused as to its source. Complainants have not authorized in any manner Respondent's offering for sale of these materials, use of their marks, or their unique color scheme.
Complainants contend that Respondent has not made a legitimate noncommercial or fair use of the Domain Name and that Respondent has used the Domain Name to sell, without authorization, Complainants' copyrighted course materials, thereby creating a false impression of affiliation between Respondent and Complainants to consumers.
Complainants submit that Respondent has irreparably harmed their reputation and goodwill by causing academic dishonesty among Complainants' students. By way of example Complainant claims that Respondent sells to students of Complainants, Ashford University coursework that has been completed by others, including the answers to tests and solutions to problems that have been specifically designed by Complainants to foster learning. By causing academic dishonesty among Complainants' students, Complainants submit that Respondent has undermined Complainants' business and academic reputations. B. Respondent
Respondent did not reply to Complainants' contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainants assert that Ashford University's predecessor was founded in 1918 and that the institution was acquired in 2005. It then changed its name to Ashford University and has since then provided, together with Ashford University, a range of high-quality learning opportunities and degree programs. It is further asserted that Complainants have created original educational materials, including syllabi, quizzes, assignments, exams, course guides and worksheets, which are accessible online for enrolled students.
These educational services are offered under the ASHFORD marks. It is asserted, and not disputed, that Complainants have individually or together built up substantial goodwill in relation to or under the ASHFORD marks, which have come to signify Complainants' educational services exclusively. It has also secured registration of the ASHFORD marks.
The Panel accepts that the ASHFORD marks are exclusively associated with Complainants. It is clear that by virtue of such use that an unrelated entity or person using a domain name containing or comprising as a material part the ASHFORD marks is likely to lead the members of the public being confused and deceived.
The Domain Name is confusingly similar to the ASHFORD marks. The Domain Name wholly incorporates the ASHFORD marks and adds the descriptive term "homeworks". Complainants argue that because "homeworks" describes the products sold by Respondent via the Domain Name website, and because "ashford" is the dominant textual element of the Domain Name, it is confusingly similar to Complainants' ASHFORD marks. There is merit in this argument.
The Domain Name is a combination of the descriptive term "homeworks" and the characterizing mark or name ASHFORD. The addition of the descriptive term "homeworks" (identified with the well-known activity of "homework", something closely connected with educational products and services) does not reduce or prevent likelihood of confusion in the minds of Internet users. The Domain Name is confusingly similar to the ASHFORD marks in so far as it incorporates ASHFORD in its entirety with the addition of a descriptive term, which fails to distinguish the Domain Name from the ASHFORD marks.
On this basis, the Panel finds:
a) Complainants have rights in respect of the ASHFORD marks.
b) The Domain Name is confusingly similar to the ASHFORD marks.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
As noted above, Complainants contend that they have created original educational materials, including syllabi, quizzes, assignments, exams, course guides and worksheets, which are accessible online for large numbers of enrolled students and that Respondent has been using the Domain Name in connection with unauthorized online sales of Complainants' said copyrighted materials, including syllabi, quizzes, exams and course guides.
It is not difficult to infer, in the absence of any denial that through these activities, Respondent is using or has used a deliberately similar version of the ASHFORD marks and Complainants' goodwill and reputation to attract Internet traffic and increase hits to its or other's website/s for purpose of the sale of Respondent's syllabi, quizzes, exams and course guides.
The Panel concludes that the Domain Name has been employed as a means of improperly diverting Internet customers and business. In those circumstances, it is difficult to see how Respondent's conduct could be characterized as legitimate and thus permissible.
On this basis, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
Having concluded that Respondent has attempted to attract Internet users to its or others website/s for commercial gain and in the process of doing so, creating confusion with Complainants and/or the ASHFORD marks, in the absence of any explanation from Respondent, the Panel finds that Respondent registered and is using the Domain Name in bad faith. That is, so as to take advantage of Complainant's marks by confusing Internet users who may wish to purchase educational materials having been attracted to the relevant website and been influenced by Complainants' reputation as a supplier of educational goods and/or services.
Further, the Panel is satisfied that bad faith registration is supported by the fact that the ASHFORD marks pre-date Respondent's registration of the Domain Name and in light of the prior use and reputation that Respondent knew or ought to have known of Complainants' prior rights.
The Panel thus concludes that the third element of the Policy is 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 Domain Name be transferred to Complainants.
Clive L. Elliott QC
Sole Panelist
Date: December 16, 2014
Full & Egal Universal Law Academy