The Complainant is Ryzac, Inc, United States of America, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Sana Saeed, Pakistan.
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 29, 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 August 3, 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 amended Complaint on August 5, 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 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. On August 3, 2021 and August 5, 2021 sent email communications to the Center but did not submit any formal response. On September 1, 2021, the Center informed the Parties that it will proceed to panel appointment.
The Center appointed Luca Barbero as the sole panelist in this matter on September 6, 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 was established in 2011 and specializes in supplying online educational services. The Complainant operates a platform, named CODECADEMY, that teaches users how to code computer languages.
Such platform has around 50 million users and is published at the domain name
The Complainant is the owner of the United States trademark registration No. 4385511 for CODECADEMY (word mark), filed on September 6, 2012 and registered on August 13, 2013, in international class 41, as per trademark certificate submitted as Annex F to the Complaint.
The disputed domain name
The Complainant contends that disputed domain name
The Complainant underlines that, when a search is conducted on “google.com” for “codecademy”, all results relate to the Complainant’s own online platform and services; and when a search is conducted for
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that it has not authorized or licensed the Respondent to use its trademark CODECADEMY, and that the Respondent is not an authorized provider of the Complainant’s platform or services.
The Complainant also submits that the Respondent is not commonly known by the disputed domain name and that, considering the use the Respondent has made of the disputed domain name, to redirect users to a website providing an almost identical service to that of the Complainant, the Respondent’s actions neither constitute a bona fide offering of goods or services nor do they constitute a legitimate non-commercial or fair use of the disputed domain name.
With reference to the circumstances evidencing bad faith, the Complainant highlights that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark.
The Complainant emphasizes that, as it first adopted and used the trademark CODECADEMY in 2011, long before the Respondent registered the disputed domain name in 2019, by providing extremely similar services under an identical trademark, the Respondent has attempted to obtain commercial gain from consumers’ confusion and association between the disputed domain name and the Complainant’s domain name
The Respondent did not submit any formal Response.
In an informal email communication sent to the Center on August 5, 2021, the Respondent stated that it was not aware of the Complainant’s trademark and mentioned its availability to transfer the disputed domain name to the Complainant for the amount of USD 1,000.
6. Discussion and FindingsAccording to 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.”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has established rights over the trademark CODECADEMY based on the trademark registration cited under section 4 above and the related trademark certificate submitted as Annex F to the Complaint.
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In the case at hand, the Complainant’s trademark CODECADEMY is entirely reproduced in the disputed domain name, with the mere addition of the Top-Level Domain “.net”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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 Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.
Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Sana Saeed, might be commonly known by the disputed domain name.
As mentioned above, the disputed domain name has been pointed to a website promoting purported educational services very similar to the ones provided by the Complainant under the nearly identical domain name
In view of the above-described use of the disputed domain name, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
Furthermore, the disputed domain name which is identical to the Complainant’s trademark carry a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
The Panel finds that the Respondent’s registration of the disputed domain name, identical to the Complainant’s prior registered trademark CODECADEMY and to the Complainant’s domain name
In view of the above, the Panel finds that, in all likelihood, the Respondent was well aware of the Complainant’s trademark and had such trademark in mind when it registered the disputed domain name.
The Panel also notes that, in view of the use of the disputed domain name to divert users to the website described above, promoting services competing with those of the Complainant, the Respondent intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the services provided therein, according to paragraph 4(b)(iv) of the Policy.
Further, the Panel notes that the Respondent offers to sell the disputed domain name to the Complainant for USD 1,000, which also suggests bad faith.
Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.
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
Luca Barbero
Sole Panelist
Date: September 20, 2021