The Complainant is Mascot Media Circle, LLC dba OnlineMBA of Austin, Texas, United States of America, represented by DuBois, Bryant & Campbell, LLP, United States of America.
The Respondent is WhoIsGuard, Inc. of Panama City, Panama / Ahmed Guettouche of Algiers, Algeria. 2. The Domain Name and Registrar
The disputed domain name ("Disputed Domain Name") is registered with eNom (the "Registar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 13, 2015. On July 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 the Complainant on July 16, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 17, 2015.
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 the Respondent of the Complaint, and the proceedings commenced on July 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 14, 2015.
The Center appointed Gabriela Kennedy, David H. Bernstein and Wilson Pinheiro Jabur as panelists in this matter on August 31, 2015. The Panel finds that it was properly constituted. Each member of 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 was the original registrant of the Disputed Domain Name, which resolved to a website that provided information on online MBA programmes. 5. Parties' Contentions A. Complainant
The Complainant's contentions may be summarized as follows:
(a) The Disputed Domain Name was registered by the Complainant in 2010. On July 9, 2015, the Complainant discovered that the Disputed Domain Name was no longer registered under the Complainant's name, but had been transferred to the Respondent on February 20, 2015 and registered with a new registrar. The Complainant had never consented to the transfer of the Disputed Domain Name to the Respondent and the transfer happened without its knowledge or sanction. On July 9, 2015, the Complainant issued letters to both the Registrar and the previous registrar (Moniker Online Services, LLC) asking that the Disputed Domain Name be returned to the Complainant. No response was ever received.
(b) On July 9, 2015, the Complainant discovered that without its authorization the Disputed Domain Name was being offered for sale via the website operated by S, Inc. The Respondent was trying to sell the Disputed Domain Name for profit.
(c) The Disputed Domain Name is identical to the Complainant's unregistered ONLINEMBA mark. The Complainant's ONLINEMBA mark has been used by the Complainant in the course of its business. Such use was made through the use of the Disputed Domain Name and the website to which it resolves ("Complainant's Website"), since September 10, 2010. Due to the length of time that the Complainant has been operating the Complainant's Website, the number of resources available through the Complainant's Website and unique resources consolidated into a single location, and the wide recognition of the Complainant's Website in the media, the ONLINEMBA mark is now recognized by the public and industry as originating from the Complainant, and therefore distinguishes the Complainant's services from any other person.
(d) The Disputed Domain Name still resolves to the Complainant's Website, which cannot amount to a bona fide offering of services, or a legitimate noncommercial or fair use. The Complainant has never authorized the Respondent to use its ONLINEMBA mark, and the Disputed Domain Name does not reflect the Respondent's name.
(e) The Complainant did not consent to the sale, transfer or licence of the Disputed Domain Name to the Respondent. The Respondent hijacked the Disputed Domain Name, which is in itself evidence of bad faith registration and use. Further, by continuing to allow the Disputed Domain Name to resolve to the Complainant's Website, the Respondent is trying to pass himself off as the Complainant. Lastly, the Disputed Domain Name has been listed for sale on the website operated by Sedo, Inc., which shows that the Respondent intends to profit from the sale of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the Respondent's failure to file a Response may result in the Panel drawing certain inferences from the Complainant's evidence, and the Panel may accept all reasonable and supported allegations and inferences flowing from the Complainant's submissions as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
The Policy provides, at Paragraph 4(a), that each of three findings must be made in order for the Complainant to prevail:
i. the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
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
The Complainant contends that it has unregistered rights in the ONLINEMBA mark by virtue of its use of the mark since 2010 as a domain name and in connection with the Complainant's Website.
In order to establish that unregistered trade mark rights exist, the Complainant must show that its use of the word has been such that it has become a distinctive identifier for the Complainant or its services (see Paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview"); Tough Traveler, Ltd. v. Kelty Pack, Inc.,WIPO Case No. D2000-0783; and Amsec Enterprises, L.C. v. Sharon McCall,WIPO Case No. D2001-0083). Where a complainant is seeking to claim unregistered rights, it has the burden of proving that its claimed mark is inherently distinctive or has acquired distinctiveness, rather than being a generic or merely descriptive word (see Essential Travel Ltd v. and Underground Digital Media Ltd,WIPO Case No. D2004-0205).
The Complainant is claiming unregistered rights in ONLINEMBA, which is made up of the generic words "online" and "MBA". The word "MBA" is a well-known common acronym for Master of Business Administration. The Complainant's Website (to which the Disputed Domain Name still resolves), uses "online MBA" to refer to its generic and dictionary meaning, i.e. to online MBA courses. The Complainant's Website even describes itself as providing "comprehensive resources and up-to-date information on how to choose the best online MBA program".
The Panel notes that the Complainant never filed trade mark applications to register ONLINEMBA or any related marks, even though it has been in operation since 2010. This may indicate that the Complainant itself did not believe it had any protectable rights in the mark, though the Panel does not draw any negative inference from the absence of an application or registration. However, the absence of a registration does mean that the Complainant cannot rely on a registration as prima facie evidence of trade mark rights.
Further, although evidence has been provided to show that the Complainant's Website has been in use for five years, and has been cited in various articles, no evidence has been provided that would demonstrate by a preponderance of the evidence, that, by virtue of such use, the public has come to perceive ONLINEMBA as a badge of origin, rather than as a generic or mere descriptive reference to a service that provides information about MBA courses that are offered online. ONLINEMBA is at least descriptive of the services being provided via the Complainant's Website, if not generic, and based on the evidence submitted, it is difficult to see how the public around the world would be associating the use of the words "online MBA" with the Complainant uniquely (see Keystone Publishing, Inc. v. UtahB,WIPO Case No. D2004-0725).
The Panel is therefore unable to find that the Complainant has generated sufficient goodwill in the ONLINEMBA mark so as to amount to unregistered trade mark rights.
The Panel accordingly finds that the Complainant has failed to establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
As the Complainant has failed to satisfy paragraph 4(a)(i) of the Policy, the Panel does not need to consider the second requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As the Complainant has failed to satisfy paragraph 4(a)(i) of the Policy, the Panel does not need to consider the third requirement under paragraph 4(a)(iii) of the Policy.
The Panel notes that the evidence provided by the Complainant does appear to show that the Respondent acquired the Disputed Domain Name in bad faith through what appears to be a hijacking and unauthorised transfer of the Disputed Domain Name. However, the Panel is bound by the Policy, and can only determine a case in favour of the Complainant if all three elements of paragraph 4(a) of the Policy are satisfied. Unfortunately, the Complainant has failed to establish paragraph 4(a)(i). This decision, however, does not preclude the Complainant from bringing court proceedings against the Respondent. 7. Decision
For the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Presiding Panelist
David H. Bernstein
Panelist
Wilson Pinheiro Jabur
Panelist
Date: September 14, 2015
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