WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scholastic Inc. v. 366 Publications
Case No. D2000-1627
1. The Parties
Complainant is Scholastic Inc., a New York corporation located in New York, New York, United States of America.
Respondent is 366 Publications, located in Detroit Michigan, United States of America.
2. The Domain Names and Registrar
The domain names at issue are ("Domain Names"):
The registrar is Network Solutions, Inc., Herndon, Virginia, United Stated of America.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
Complainant submitted its complaint in this proceeding on November 22, 2000. Respondent submitted a response on December 24, 2000, and an amended response on December 29, 2000.
On February 8, 2001, the WIPO Arbitration and Mediation Center appointed a three-member Panel consisting of Mark V.B. Partridge, Frederick M. Abbott and G. Gervaise Davis III.
4. Factual Background
Complainant is a publisher of children's and educational books, software, magazines, games and other related materials. Complainant has used the name and mark SCHOLASTIC since as early as 1922 and is the owner of more than 65 U.S. trademark registrations for the SCHOLASTIC mark. Complainant operates a web site relating to its goods and services at www.scholastic.com. The SCHOLASTIC mark has been the subject of extensive promotion and sales in the United States and abroad for many decades.
Respondent registered the Domain Names in March 2000 and has offered them for sale at Internet domain name auction sites, including GreatDomains.com and Afternic.com. When contacted by Complainant, Respondent offered to sell the Domain Names for $17,699.
The Domain Names have not been used in connection with any active web site.
5. Parties’ Contentions
Complainant contends that the Domain Names are confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Names, and that Respondent has registered and used the Domain Names in bad faith.
Respondent contends that Complainant lacks exclusive rights in the term "scholastic" because it is a generic term, used in many contexts besides that of Complainant's magazines. Respondent also argues that its registration and use of the Domain Names is within the scope of its right to speculate in the sale of domain names.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interest in the domain name; and
(3) that the domain name has been registered and used in bad faith.
A. Confusing Similarity
SCHOLASTIC, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown long-standing, prior statutory and common law rights. The addition of the generic term "online" or the equivalent "o" is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for Complainant's online business. Similarly, the addition of "s" is not sufficiently distinguishing to avoid confusion. Therefore, we find that the Domain Names are confusingly similar to Complainant's mark as required under Paragraph 4(a)(i) of the Policy.
B. Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).
Respondent has not used the Domain Names for a bona fide offering of goods or services and there is no evidence that it intends to do so. Similarly, Respondent is not known by the Domain Names. Finally, Respondent has not made noncommercial or fair use of the Domain Names and there appears to be no other basis on which we could find that Respondent has rights or a legitimate interest in the Domain Names. Therefore, Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.
While we and other ICANN panels have found a legitimate interest in a Respondent holding and using a generic term as a domain, as against a trademark owner also using the same generic term, we cannot agree with Respondent here that its Domain Names are generic, since the form in which they were registered, "onlinescholastic" and "oscholastic" are clearly not generic terms, but ones specifically chosen to indicate use of the word mark on the Internet. This is not a generic use.
Respondent cites Allocation Network Gmbh v. Gregory, D2000-0016 (WIPO
March 24, 2000), to claim that it has the right to speculate in the sale of domain names. That decision held that the Respondent's speculation in the sale of the domain name <allocation.com> involved a legitimate interest where the term was generic, the complainant lacked a prior trademark registration and there was no evidence that Respondent knew or should have known of the Complainant's trademark rights. That case does not apply here, where the Complainant's mark is the subject of long prior, incontestable trademark registrations and has become well-known in the country where Respondent is located.
C. Bad Faith Registration and Use
Under the Policy, bad faith registration and use can be found when the registrant seeks to profit from the sale of a domain name in which it has no legitimate interest. Policy 4(b)(i). We believe that to be the case here.
As noted above, the Domain Names were offered for auction at various sites. When contacted by Complainant, Respondent offered to transfer the Domain Names for $17,699.00, an amount that far exceeds the likely out of pocket expenses incurred by Respondent. Despite its claim to the contrary, Respondent has presented no evidence to show that it was only seeking to recover its actual costs associate with the Domain Names.
Given the long use and well-known character of Complainant's mark, Complainant was the most likely purchaser (if not the only likely purchaser) of the Domain Names. Even though "scholastic" can be used as a generic term, the phrase "online scholastic," and its equivalents, is particularly apt for Complainant's online business, but is not particularly apt for other users. Indeed, in its submission, Respondent admits as much with respect to <oscholastic.com>, by stating: "who else would be interested in that particular domain?"
Accordingly, we find that the Domain Names were registered and used in bad faith in violation of the Policy.
We conclude that the Domain Names, <onlinescholastic.com>, <onlinescholastics.com>, <oscholastic.com> and <oscholastics.com> are confusingly similar to a trademark in which Complainant has rights, that Respondent lacks any right or legitimate interest in the Domain Names, and that the Domain Names were registered and used in bad faith. Therefore, we find in favor of Complainant and grant its request for transfer of the Domain Names.
Mark V. B. Partridge
Frederick M. Abbott
G. Gervaise Davis III
Dated: February 21, 2001