WIPO Domain Name Decision DCC2021-0013 for successmaker.cc

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Savvas Learning Company, LLC v. Interspace Interspace, Interspace Case No. DCC2021-0013 1. The Parties

The Complainant is Savvas Learning Company, LLC, United States of America (“United States”), internally represented.

The Respondent is Interspace Interspace, Interspace, Malta. 2. The Domain Name and Registrar

The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2021. On November 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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 November 15, 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 November 15, 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 November 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on December 15, 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 Background

The Complainant provides education and learning solutions and, according to its website, is present in 125 countries, serving more than 40 million students.

It is the owner of the United States trademark registration No. 1,859,063 for SUCCESSMAKER, registered on October 18, 1994, and subsequently renewed, in class 09 (Exhibit 3 to the Complaint), used in the United States and other jurisdictions in conjunction with commercial printed material and computer programs.

The disputed domain name was registered on October 22, 2018, and is presently used in connection with a webpage offering similar services to the Complainant’s business. 5. Parties’ Contentions A. Complainant

Under the Complainant’s view, the disputed domain name incorporates in its entirety, the Complainant’s SUCCESSMAKER trademark, thus creating a high likelihood of confusion. In addition to that, the Complainant further contends that the webpage that resolves from the disputed domain name offers competing services, seeking to profit from the Complainant’s reputation as an established education publisher and provider.

Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that it has not authorized the Respondent to use or register the disputed domain name; not being the Respondent affiliated, connected or associated with the Complainant, who also does not sponsor nor endorse the Respondent’s business. In addition to that, the Complainant asserts that the Respondent has no trademark or legitimate rights, has not and is not commonly known by the disputed domain name, thus leading to the conclusion that the disputed domain name is currently being used by the Respondent in bad faith.

As to the registration and use of the disputed domain name in bad faith, the Complainant argues that the Respondent is intentionally creating confusion as to the source of the disputed domain name purely for the purpose of commercial gain, having undoubtedly registered the disputed domain name to misappropriate the wide recognition the Complainant has in the SUCCESSMAKER trademark as an established education publisher and provider. It is further evident, under the Complainant’s view, that the purpose of the Respondent’s registration of the disputed domain name is to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered trademark as to the source, sponsorship, affiliation, or endorsement of its website. B. Respondent

The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar

The Complainant has established rights over the SUCCESSMAKER trademark.

The disputed domain name identically reproduces the Complainant’s SUCCESSMAKER trademark in its entirety. 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 the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.

In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent which does not hold any trademark rights over the term “success maker”. Further, there is no evidence on record showing that the Respondent is commonly known by the disputed domain name.

Also according to the evidence submitted by the Complainant, the use made of the disputed domain name, which is identical to the Complainant’s SUCCESSMAKER trademark, in connection with a webpage offering educational services that are identical to those of the Complainant suggests at least an affiliation with the Complainant which in fact does not exist. Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name in these circumstances.

In other words the nature of the disputed domain name carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1).

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the Complainant’s prior registered SUCCESSMAKER trademark in its entirety in the disputed domain name, the disputed domain name furthermore being almost identical to the Complainant’s domain name , as well as the use of the disputed domain name in connection with a webpage offering educational services, which are of the same nature as those of the Complainant, which creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof.

Moreover, the lack of the Respondent’s reply to the warning letter sent by the Complainant prior to this procedure (Exhibit 2 to the Complaint) and the apparently false contact details provided in WhoIs information relating to the disputed domain name, which did not allow the delivery of the Written Notice by courier to the underlying registrant are further indications of the Respondent’s bad faith.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name. 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 disputed domain name be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: December 29, 2021

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