The Complainant is Savvas Learning Co. LLC, United States of America (“United States”), internally represented.
The Respondent is Admin Contact, PrivateName Services Inc., Canada / Zhang Ting Ting, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2021. On July 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2021, 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 31, 2021 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 July 31, 2021.
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 August 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on September 9, 2021. 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 BackgroundThe Complainant is a company based in New Jersey, United States which creates and supplies educational materials and digital learning programs. One of its brands is PRENTICE HALL, which is protected by a number of trade mark registrations, including United States trade mark, registration number 1,332,044, for PRENTICE HALL in class 16, registered on April 23, 1985. The Complainant also owns and operates the domain name
The disputed domain name was registered on April 3, 2021. It does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights, in that it incorporates the Complainant’s PRENTICE HALL mark in full and simply adds the word “answers”. The addition of this word does not create a distinguishable mark, but suggests that that Internet users visiting the Respondent’s website might be taken to an “Answers” page associated with the Complainant’s website. The similarities between the disputed domain name and the Complainant’s mark will cause Internet users who reach the Respondent’s website to mistakenly believe that an affiliation exists between the Complainant and the Respondent.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is intentionally trading on the goodwill of the Complainant by its use of a confusingly similar trade mark. Moreover, the Complainant has not authorized the Respondent to use or register the disputed domain name, nor is it affiliated, connected or associated with the Respondent, nor does it sponsor or endorse the Respondent’s business. The Respondent has no trade mark or other legal rights in the disputed domain name.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Respondent is using the disputed domain name in bad faith in connection with the Complainant’s website, which provides reputable learning solutions. The Respondent is intentionally creating confusion as to the source of the disputed domain name for the purpose of financial gain. It has registered the disputed domain name to misappropriate the wide recognition the Complainant has created in its PRENTICE HALL brand as an established education publisher and provider and is using such recognition to generate interest in, and traffic to, its website in order to benefit commercially from the Complainant’s brand.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsDealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant shall prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 SimilarThe Complainant has provided details of a number of the registered trade marks it owns for PRENTICE HALL, including the registration in respect of which full details have been provided above, which thereby establish its rights in this mark.
As a technical requirement of registration, the Top-Level Domain, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name comprises the Complainant’s PRENTICE HALL mark in its entirety followed by the word “answers”. This additional term does not prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainant’s PRENTICE HALL mark is the dominant component of, and is clearly recognizable within, the disputed domain name and the Panel accordingly finds that it is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
The inactive status of the disputed domain name does not comprise a bona fide offering of goods and services and the first circumstance outlined above is accordingly not fulfilled. The second circumstance set out at paragraph 4(c) of the Policy is equally inapplicable; there is no evidence to indicate that the Respondent has been commonly known by the disputed domain name. Nor is the third circumstance applicable; non-use of the disputed domain name does not equate to a legitimate noncommercial use of it. Furthermore, the characteristics of the disputed domain name are suggestive of some form of affiliation or connection with the Complainant, which prevent its composition from comprising fair use. In this respect, see section 2.5.1 of the WIPO Overview 3.0; “[W]here a domain name consists of a trademark plus an additional term (at the second- or Top-Level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.
The fact that the disputed domain name incorporates the Complainant’s mark followed by the word “answers” suggests that any website to which the disputed domain name might resolve is likely to provide information associated with the Complainant’s courses, thereby creating a particular resonance with the Complainant.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production shifts to the Respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithAs at the date of registration of the disputed domain name in April 2021, the Complainant had registered and had been using its PRENTICE HALL mark for approximately 36 years. The incorporation within the disputed domain name of the Complainant’s mark in combination with a word, “answers” likely to be associated with its goods and services, coupled with the failure of the Respondent to provide any explanation which might provide a bona fide justification for its registration of it, provides a persuasive indication that the Respondent was aware of the Complainant’s PRENTICE HALL mark as at the date of registration of the disputed domain name and that it was registered it in order to take unfair advantage of it. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. See also Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc.,WIPO Case No. D2007-1833. The Panel therefore finds the Respondent’s registration of the disputed domain name to have been in bad faith.
The Complainant’s assertions with respect to the Respondent’s use of the disputed domain name are slightly misdirected in that, the Complainant has not provided any evidence that the disputed domain name has resolved to an active website. However, the Respondent’s non-use of the disputed domain name does not necessarily prevent a finding of bad faith under the doctrine of passive holding. In this respect, see section 3.3 of the WIPO Overview 3.0, which explains that; “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. The factors that are typically considered when applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealment of its identity or its use of false contact details and (iv) the implausibility of any good faith use to which the domain name may be put.
Applying these factors to the current circumstances; (i) the Complainant has not provided evidence as to the repute of its PRENTICE HALL mark but the Panel notes it was first registered approximately 36 years ago and that it is inherently distinctive; (ii) the Respondent has not replied to the Complaint nor provided any evidence of actual or contemplated good faith use of the disputed domain name; (iii) the Respondent has sought to conceal its identity through use of a privacy service; and, (iv) it is impossible to think of any good faith use to which the disputed domain name could be put.
Exactly why the Respondent has chosen to register the disputed domain name is unclear.
However, it is not necessary to ascribe a specific motive to it in circumstances where the facts support a finding that the Respondent’s passive holding amounts to bad faith use of the disputed domain name.
Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
7. DecisionFor 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
Antony Gold
Sole Panelist
Date: September 23, 2021
1 As outlined at section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. The Panel has accordingly visited the Complainant’s website and has also established that the disputed domain name does not resolve to an active website.