The Complainant is All Answers Ltd, United Kingdom, represented internally.
The Respondent is Privacy Protected by Domains By Proxy, LLC, United States of America (“United States”) / Iaroslav Baklan, Ukraine, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2020. On February 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 18, 2020, 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 the Complainant on February 19, 2020, 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 amendment to the Complaint on February 19, 2020. The Center verified that the Complaint together with the amendment to 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 February 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2020. On March 5, 2020, the Respondent requested for an extension to submit a Response. On March 6, 2020, the Center granted the Respondent the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Response was filed with the Center on March 13, 2020. The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 20, 2020. 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 limited company formed under English law, with principal offices in Nottingham, England,the United Kingdom. According to the online database operated by Companies House, it was incorporated in November 2003. The Complainant’s website at “www.ukessays.com” shows that it has been offering essay and dissertation writing services, and related research and education services, since 2003. The Complainant’s website features a pen-and-paper logo with the name “UK Essays” and the tag line, “Trusted by thousands of students since 2003”. The website advertises over “500 expert essay writers”, with all work “written to order” and “no plagiarism, guaranteed”. The home page features a live chat service with customer support staff. The Complainant holds United Kingdom Trade mark Registration Number UK00003127485 (filed September 17, 2015, registered March 4, 2016) for the word mark UKESSAYS and United Kingdom Trade mark Registration Number UK00003436942 (filed October 16, 2019, registered January 10, 2020) for the word mark UKESSAY. The record shows that the Complainant has used the names “UKEssays” and “UKEssays.com” since 2004 for its online business, and that these names were mentioned in media stories about the “academic writing” industry in the United Kingdom. For example, The Independent published an article entitled “Parents and internet help middle-class pupils cheat exams” on January 2, 2004, mentioning the Complainant’s website: “Another site, www.ukessays.com, offers desperate university students next-day delivery of coursework essays for £70 per 500 words for an essay which would score a 2.1. A first costs an extra £52.50 per 500 words.” A January 14, 2008 BBC story, “Parents 'buy essays' for students”, quoted a “UKEssays.com” spokesman (http://news.bbc.co.uk/1/hi/education/7187936.stm). By May 2008, as shown in archived screenshots attached to the Complaint, the Complainant was quoting media articles referring to “UKEssays” on its website to promote its services. In 2011 (as also reflected on an archives screenshot of the website), the Complainant added a footer on website pages with this claim: “UK Essays is a trading name of All Answers Ltd.” The Registrar reports that the Domain Name was created on February 11, 2005 and registered in the name of a domain privacy service. After receiving notice of this dispute, the Registrar identified the registrant as the Respondent Mr. Baklan of Ukraine, with no organization listed. The Complainant asserts that the Domain Name was parked on various sites until 2017, when a change of registrant occurred. There is no information in the record as to when the Respondent acquired the Domain Name. However, the Panel notes that screenshots of the website associated with the Domain Name, found through the Internet Archive’s Wayback Machine, show parking sites with third-party, pay-per-click (“PPC”) advertising links through 2016, followed, beginning in July 2017, with a website similar to the Respondent’s current website. These display the same figurative logo consisting of the name “UKessay” beside a stylized image of London’s “Big Ben” clocktower in the Palace of Westminster. The Panel concludes, therefore, that the Respondent was probably not the original owner of the Domain Name in 2005 but likely acquired it by July 2017 and has used it since for the business described below. The Domain Name resolves to a website (the “Respondent website”) advertising a “Professional essay writing service for UK students”, with 727 writers (at present) who do original, “confidential” writing for college, university, and even post-graduate students for a fee, for “Assignments, Courseworks, Report Writings, Thesis Writings, Lab Reports, Research Proposals, Dissertations, Personal Statements”. “Academic writing is a tough chore”, the website commiserates; “Don’t let worries about homework spoil your mood!” The home page pops up a chat feature to communicate with a customer service agent, and the website allows users to create an account and select a writer for each assignment based on skill levels, areas of study, and price. The completed drafts are run through a “plagiarism checker” to make sure they have not been previously published or used by another customer. The Respondent is not mentioned on the Respondent’s Website. The Terms and Conditions page of the website state that the “contents” of the website are provided by Boosta LTD, “registered under law of Cyprus”. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Domain Name is confusingly similar to its registered UKESSAYS and UKESSAY trademarks and to its common law UKESSAYS, UKESSAYS.COM, and UK ESSAYS marks (collectively, the UKESSAYS marks). The Complainant denies that the Respondent has permission to use these marks in the Domain Name or any other rights or legitimate interests in the Domain Name, as it has not been known by a corresponding name except in deliberately creating a confusingly similar Domain Name and website after the Complainant became well established. The Complainant infers bad faith by a direct competitor. The Complainant attaches a Sistrix Google rankings report showing that the Complainant’s website has been the first result in Google search for the search terms “UK Essays” and “UKEssay” since 2007, with the exception of a short period in 2013. The Complainant argues that the design of the Respondent’s website, especially in the plain “order” buttons and footers, aims at emulating the Complainant’s website and contributing to confusion in offering a directly competing service in the same market, with a nearly identical Domain Name to the domain name and marks long used by the Complainant. B. Respondent The Respondent argues the Complainant’s trademark is weak and can coexist with the Domain Name without confusion. According to the Respondent, “UK” and “essays” are generic terms that the Respondent used legitimately for a relevant and bona fide commercial offering, as shown by archived screenshots of the website associated with the Domain Name, which does not have an overall similar design and style to the Complainant’s website. The Respondent denies bad faith and points to these differences in the Parties’ websites: “Disputed domain name website serves as a marketplace for the customers to find a proper writer to complete academic paper based on the writer’s expertise, ranking, etc. Moreover, it offers a bidding facility. The writers set the prices, and the customer may choose the most affordable one. Thus, the website is an intermediary between the customers and the writers. Indeed, the Complainant does not provide customers with the option to select a writer who will perform an order.” The Respondent seeks a ruling of Reverse Domain Name Hijacking, observing that the Complainant filed the UDRP Complaint shortly after obtaining a second United Kingdom trademark registration more closely resembling the Domain Name, suggesting this was done to support the UDRP Complaint and for the Domain Name’s value for search engine optimization. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the 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 domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Domain Name is identical to the Complainant’s registered UKESSAY mark and differs by one letter from its registered UKESSAYS mark. The record is sufficient to establish the probability of common law protection as well for these and similar marks, although this finding is not necessary for purposes of this element of the Complaint, given the registered marks. The generic top-level domain name (“gTLD”) “.com” “is viewed as a standard registration requirement” and as such is disregarded under the first element of the Policy. Id., section 1.11.2. The Panel concludes, therefore, that the first element of the Complaint has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following: (i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent implicitly relies on paragraph 4(c)(i), as it appears that the Domain Name has been used since 2017 for an “academic writing” website aimed at the United Kingdom market, and thus relevant to the dictionary sense of the component terms “UK” and “essay”. The Respondent does not claim any relevant trademark or trade names of its own, but it is true, as the Respondent says, that the Domain Name is descriptive of the services it offers. The available evidence indicates that the Respondent has indeed been offering a commercial service using the Domain Name since 2017, before the current dispute arose. This would ground a claim of legitimate interest, unless the evidence also demonstrated that the Domain Name was more likely than not selected for its trademark value (seeking to attract consumers based on an intent to draw on the reputation of the Complainant’s mark), rather than for its generic value (relevant to its dictionary sense). Because the facts on that point overlap, they are better addressed in the next section, on bad faith. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” By 2017, when it appears that the Respondent acquired the Domain Name and commenced using it for a business that directly competes with the Complainant, the Complainant was already well established in that business online, aimed at United Kingdom university students. The Complainant was doing business through the domain name The Respondent registered the singular form of the name, simply omitting the final “s”, as the Domain Name, and then mounted direct competition for the United Kingdom market for “ghost written” university papers. It is not plausible, on the clear evidence of record, that the Respondent was unaware of the Complainant, and the Respondent does not allege that. The Parties’ websites have dissimilar logos and overall styles, but their offerings are very similar, and indeed, competitive; there would inevitably be confusion with such nearly identical names. It is not likely that the confusion was unintentional. The Panel finds, based on the totality of the circumstances, that it is more probable that the Respondent selected the Domain Name to exploit consumer familiarity with the Complainant’s mark than for its plain dictionary sense. The Panel finds bad faith within the meaning of the Policy, paragraph 4(b)(iv) and concludes that the Complainant has established the third element of the Complaint. On the same facts, the Panel finds that the Respondent has also failed to demonstrate a legitimate interest in the Domain Name for its “generic” value and concludes that the Complainant also prevails on the second element of the Complaint. 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 W. Scott Blackmer
Sole Panelist
Date: March 25, 2020
Full & Egal Universal Law Academy