The Complainant is Udemy Inc. of San Francisco, California, United States of America ("US"), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Udemy Ripper of Taita, New Zealand. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with D, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 28, 2016. On November 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 29, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 27, 2016.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on January 13, 2017. 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 Complainant is a US company founded in 2010. It operates a platform for online learning and unlike many other academic programs, provides tools which enable users to create a course, promote it and earn money from student tuition charges and offers over 40,000 courses for over 12 million students.
The Complainant has also developed a successful app for tablet and mobile phones, meaning that courses are easily accessible on-demand.
The Complainant is using "UDEMY" as company name and trademark and owns several trademarks for UDEMY, with the earliest registration dating back to 2012, and domain names.
The Domain Name was registered on May 5, 2016. The Complainant alleges that the Domain Name resolves to a website which offers ripped copies of the Complainant's e-learning materials. 5. Parties' Contentions A. Complainant
The Complainant contends the following:
a) The Domain Name is confusingly similar to the trademark of the Complainant because:
- it reproduces the Complainant's trademark in its entirety;
- the addition of a generic term such as "ripper" and the generic Top-Level Domain ("gTLD") ".com" are insufficient to distinguish it from the mark.
b) The Respondent has no rights or legitimate interests in respect of the Domain Name because:
- the Respondent has not been commonly known as "UDEMY" and it does not appear to own any trademark or rights in those terms;
- the Complainant has never given to the Respondent any license or authorization to register or use the Domain Name;
- the Respondent has no relationship whatsoever to the Complainant nor did it ever have any relationship with the Complainant;
- the Respondent offers ripped copies of the Complainant's e-learning materials on the website at the Domain Name;
- the Domain Name is being used for "ransomware websites", versions of malware and can usually be identified by trapping users in an alert box, which cannot be closed unless substantial fees are paid.
c) The Domain Name was registered and is being used in bad faith because:
- the Respondent was aware of the Complainant's trademark when it registered the Domain Name;
- the Respondent is not using the Domain Name in a bona fide manner; the Respondent has intentionally chosen the Domain Name based on the registered trademark in order lead Internet users to its website which offers e-learning material found on the Complainant's website.
- the Respondent had provided its name as "Udemy Ripper" for the purpose of registering the Domain Name, while using other names in registering other domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has trademark and domain names registrations for UDEMY in various jurisdictions. Moreover, UDEMY is also the company name of the Complainant. Therefore, it has been proven that the Complainant has rights in the UDEMY trademark.
The Domain Name incorporates the Complainant's trademark and company name in its entirety.
The Panel finds that the combination of the Complainant's trademark with the generic word "ripper" does not render the Domain Name dissimilar to the trademark of the Complainant.
There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark even if it is added to another term. In particular, there are UDRP decisions stating that the incorporation of the trademark and a generic word in a domain name is misleading and confusingly similar to the trademark owned by the complainant (LEGO Juris A/S v. Devin Steenberg,WIPO Case No. D2015-0394; QVC Inc. and ER Marks Inc. v. WhoisGuard,WIPO Case No. D2007-1872).
Additionally, the Panel does not typically consider, when analyzing the identity or similarity, the gTLD suffix – in this case ".com" – because it is a necessary component of the disputed domain name and does not give any distinctiveness (see, Crédit Industriel et Commercial S.A v. Name Privacy,WIPO Case No. D2005-0457).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Respondent has not filed any response in this case. There is prima facie indication in the evidence provided to the Panel that there are no rights or legitimate interests on the part of the Respondent in the Domain Name.
On the contrary, the Complainant has submitted several documents to prove its right in the UDEMY trademark and its use.
The Respondent has not received any license or authorization from the Complainant to register and use the Domain Name. There is no evidence that the Respondent is commonly known by the Domain Name, nor does the Complainant have any type of business relationship with the Respondent. It would appear from the evidence submitted in the Complaint that the website at the Domain Name does not include a disclaimer that accurately and prominently describes the relationship with the Complainant (or lack thereof). Moreover, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The Panel also notes the Complainant's contention that the Domain Name is used for ransomware websites.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Domain Name is exploited by the Respondent to trap unsuspecting users interested in the Complainant's brand and products.
At the moment of the registration of the Domain Name, the Respondent must have been aware of the existence of the UDEMY mark which is not a common word. It is quite predictable that only someone who was familiar with the Complainant's mark would have registered a domain name inclusive of such mark.
Moreover, the Internet users who were looking for the Complainant products, arriving on the Respondent's website, will receive offers from the Respondent about e-learning material which correspond to the business of the Complainant.
The Panel is of the opinion that the Respondent has registered the Domain Name with the intent to profit from the reputation of the Complainant's trademark by choosing a domain name that is confusingly similar to the Complainant's mark and confusing Internet users as to the association or sponsorship of the website at the Domain Name.
Taken together with the fact that the Respondent has not filed any response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the Domain Name has been registered and is being used in bad faith. 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 the Complainant.
Nicoletta Colombo
Sole Panelist
Date: January 27, 2017
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