Complainant is NCS Pearson, Inc. of Bloomington, Minnesota, United States of America ("United States" or "U.S."), represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Zey K of Albania. 2. The Domain Name and Registrar
The disputed 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 November 20, 2015. On November 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing Respondent's 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 21, 2015.
The Center appointed David Perkins as the sole panelist in this matter on December 23, 2015. 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 4.A. Complainant
4.A.1 Complainant is the owner of the Wechsler Tests, which have been used extensively since the 1950s. The Complaint explains that the Wechsler Tests are psychological assessments developed by psychometricians and experts, and subject to years of clinical research and development of sound, reliable, and predicative normative data. Wechsler Tests are individually administered by trained psychologists using a combination of verbal and performance tasks. Complainant restricts the sale, distribution and administration of the tests to professionals, as specific normative data is required to convert raw scores to scaled scores. Wechsler Tests cannot be taken online except within a secure network environment under supervision of a qualified professional.
4.A.2 Complainant asserts that its Wechsler Tests are some of the most widely used neurological tests available to assess intelligence in adults and older adolescents. The tests were first administered in 1953. Complainant states that the tests are administered to tens of thousands of people each year. They are designed to measure verbal comprehension, perceptual reasoning, working memory, and processing speed, and are the instrument of choice of qualified testing professionals for measuring intelligence in adults and older adolescents. There are different versions of the Wechsler Tests for each age level in order to reflect the natural learning curve, so that a particular score at one age should roughly correlate to the same score for a person at another age.
4.A.3 In order to protect the integrity of the Wechsler Tests, actual test questions are closely guarded and not made generally available. Professionals qualified to give Wechsler Tests are required to sign agreements that prohibit them from sharing the test questions except under very controlled circumstances. The WECHSLER trade marks
4.A.4 Complainant is the proprietor of the following U.S. registered trade marks (collectively the "WECHSLER marks").
Registration No.
Mark
Classes of goods/services
Dates of application/registration
2,808,520
WECHSLER ABBREVIATED SCALE OF INTELLIGENCE
16
Filed: August 13, 2002
Registered: January 27, 2003
2,033,953
WECHSLER MEMORY SCALE
16
Filed: March 16, 1996
Registered: January 28, 1997
1,956,456
WECHSLER INTELLIGENCE SCALE FOR CHILDREN
9
Filed: April 7, 1995
Registered: February 13, 1996
1,768,960
WECHSLER INTELLIGENCE SCALE FOR CHILDREN
42
Filed: August 26, 1991
Registered: May 4, 1993
1,768,593
WECHSLER INTELLIGENCE SCALE FOR CHILDREN
16
Filed: July 15, 1991
Registered: May 4, 1993
1,768,631
WECHSLER
16
Filed: August 28, 1992
Registered: May 4, 1993
1,788,112
WECHSLER ADULT INTELLIGENCE SCALE
16
Filed: August 17, 1992
Registered: May 25, 1993
1,788,100
WECHSLER INDIVIDUAL ACHIEVEMENT TEST
16
Filed: May 11, 1992
Registered: August 17, 1993
4.A.5 First use of those registrations was as follows:
U.S. 2,808,502: January 22, 1999
U.S. 2,033,953: December 1, 1945
U.S. 1,956,456: July 18, 1994
U.S. 1,768,960: May, 1949
U.S. 1,768,593: May, 1949
U.S. 1,768,631: 1939
U.S. 1,788,112: April 30, 1953
U.S. 1,788,100: March 1, 1990
4.A.6 For all the above registrations, other than U.S. 1,758,631 and 2,033,953 the words other than WECHSLER are disclaimed. 4.B. Respondent
4.B.1 In the absence of a Response, what is known about Respondent appears from the Complaint and its Exhibits.
4.B.2 The disputed domain name was registered on December 5, 2012. As Respondent used WhoIs Privacy Protection, Inc. Respondent's identity was unknown until the privacy shield was lifted by the Registrar.
4.B.3 The disputed domain name resolves to a website that purports to provide Complainant's Wechsler Tests online. After completing the tests at that website, users are told that they can order their results upon payment of EUR 19.93, which is approximately USD 20.00. A print out of that website is exhibited to the Complaint. As noted in paragraph 4.A.1 above, the authentic Wechsler Tests are never offered through an online forum except within a secure environment under the supervision of a qualified professional, and are specialised tests only offered by professional clinicians in clinical, educational, and research settings. 5. Parties' Contentions 5.A. Complainant Identical or Confusingly Similar
5.A.1 Complainant's case is that the disputed domain name is identical to its U.S. registered trade mark no. 1,788,112 WECHSLER ADULT INTELLIGENCE SCALE, which has been used since 1953 (see, paragraph 4.A.5 above). Further, the context in which the disputed domain name is used — namely, resolving to a website which offers what purport to be Complainant's genuine Wechsler Tests — is likely to create confusion among consumers by indicating a (false) affiliation of that website to Complainant. Rights or Legitimate Interests
5.A.2 Here, Complainant's case is based on the following four propositions. First, because Complainant's WECHSLER marks are so well known in their field and were established long before the disputed domain name was registered, Complainant says there cannot be any legitimate use of that domain name by Respondent. In support of that contention, Complainant cites the decisions in Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; and Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397.
5.A.3 Second, Complainant has neither licensed nor otherwise authorised Respondent to use its WECHSLER marks.
5.A.4 Third, Respondent is not commonly known by the disputed domain name (see Policy paragraph 4(c)(ii)).
5.A.5 Fourth, Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services (Policy paragraph 4(c)(i), nor is Respondent making a legitimate noncommercial or fair use of that domain name (Policy paragraph 4(c)(iii)). In the latter respect, Complainant's case is that Respondent is using the disputed domain name to profit from web traffic generated by potential customers of Complainant seeking to obtain information about Complainant's Wechsler Tests and/or from the association and goodwill with Complainant's WECHSLER trade marks. The Complainant cites in that respect the decision in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847. Registered and Used in Bad Faith
5.A.6 Complainant's case is based on the following four propositions which Complainant asserts demonstrate circumstances evidencing bad faith under paragraph 4(b)(iv) of the Policy. First, Complainant says that the fact that the disputed domain name is identical to its WECHSLER ADULT INTELLIGENCE SCALE trade mark, which was registered and its use established many years before registration of that domain name, is a form of opportunistic bad faith. Complainant cites various decisions under the Policy in support of this contention, including Veuve Clicquot Ponsardin, supra..
5.A.7 Second, Complainant cites as demonstrating use in bad faith Respondent's use of the disputed domain name in connection with a website which, as summarised in paragraph 4.B.3 above, prominently features Complainant's WECHSLER marks and misleads consumers by purporting to offer identical products and services to those offered by Complainant under those trade marks — namely, Complainant's Wechsler Tests — in order to profit off its purported affiliation with Complainant and Complainant's products and services. In this connection, Complainant cites decisions under the Policy where use of a domain name to attract users for commercial gain has been held to constitute bad faith use. Namely, Hilton Group plc v. Forum LLC,WIPO Case No. D2005-0244; Caesars World, Inc. v. Mark Stephens,WIPO Case No. D2001-0553; and Caesars World, Inc. v Universalinteractives,WIPO Case No. D2001-0951.
5.A.8 Third, Complainant points — as also demonstrating bad faith use — to Respondent's use of the disputed domain name as free-riding on the reputation and goodwill of Complainant's WECHSLER trade marks to divert Internet users to Respondent's website for commercial gain by offering goods and services which compete with those offered by Complainant.
5.A.9 Fourth, as another demonstration of Respondent's bad faith, Complainant points to Respondent's concealment of its identity by using an identity protection service in connection with the disputed domain name, coupled with Respondent's exploitation for commercial gain of Complainant's WECHSLER trade marks. 5.B. Respondent
5.B.1 As noted, no Response has been filed. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the 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.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent's rights or legitimate interests in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 First, Complainant has established rights in the WECHSLER ADULT INTELLIGENCE SCALE mark and other WECHSLER marks.
6.6 Second, the disputed domain name is identical or confusingly similar to Complainant's WECHSLER marks.
6.7 Consequently, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.8 The Panel also finds Complainant's case summarised in paragraphs 5.A.2 to 5.A.5 above well made out and not rebutted by Respondent. Therefore, the Complaint satisfies paragraph 4(a) (ii) of the Policy. Registered and Used in Bad Faith
6.9 The Panel accepts Complainant's assertions about the facts relating to the registration and use of the disputed domain name — summarised in Sections 5.A.6 to 5.A.9 above — as demonstrating bad faith under paragraph 4(b)(iv) of the Policy. In the circumstances, the Panel finds that the Complainant satisfies paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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.
David Perkins
Sole Panelist
Dated: January 4, 2016
Full & Egal Universal Law Academy