WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Follett Higher Education Group, Inc. v. Adesta.com Corporation
Case No. D2001-0386
1. The Parties
The Complainant in this proceeding is Follett Higher Education Group, Inc., an Illinois corporation having its principal place of business at Oak Brook, Illinois, USA.
The Respondent is Adesta.com Corporation, an Indiana corporation with its address recorded as Indianapolis, Indiana, USA.
2. The Domain Name and Registrar
This dispute concerns the domain name identified below:
<efollets.com> ("Domain Name").
The registrar with whom the Domain Name is registered is:
Network Solutions, Inc., Herndon, Virginia, USA.
The Domain Name was registered on October 9, 1999.
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by ICANN on August 26, 1999, and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), approved by ICANN on October 24, 1999, was received by the Center in electronic format on March 16, 2001, and in hardcopy on March 20, 2001. Payment in the required amount to the Center has been made by the Complainant.
On March 21, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the Complaint from the Complainant, that the Domain Name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.
On April 4, 2001, the administrative proceeding began.
On April 23, 2001, a Response was received by e-mail and in hard copy on April 30, 2001.
On May 16, 2001, notification of appointment of an Administrative Panel and projected decision date ("the Appointment Notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request for a single-member panel, the Appointment Notification informed the parties that the Administrative Panel would be comprised of one Panelist, Clive Elliott, and advised that the decision should be forwarded to WIPO by May 29, 2001.
On May 29, 2001, a decision was made.
4. Factual Background
Follett Higher Education Group, Inc. is a corporation organized under the laws of the State of Illinois ("Follett"), incorporated on April 14, 1966. Follett is a wholly owned subsidiary of Follett Corporation, a privately held business owned by members of the Follett family. Follett Corporation was incorporated in the State of Illinois on December 12, 1957.
Combined, Follett, its parent company, and its parent company’s divisions have been using the name "Follett" for approximately one hundred years to indicate the source or origin of its retail and wholesale services in textbooks and related educational materials and services. Copies of Certificates of Registration or Notices of Allowance issued by the United States Patent and Trademark Office for the following marks: FOLLETT LIBRARY RESOURCES; FOLLETT EDUCATIONAL SERVICES, FOLLETT HIGHER EDUCATION GROUP, INC., and FOLLETT SOFTWARE COMPANY have been provided.
The Respondent is a small two-year-old Internet-related business. It has five business divisions:
Retail Sales: It began in 1999, first as retailer of goods and services on the Internet.
Systems Integration: It provides e-commerce services to companies in the US and India.
Software Services: It develops proprietary solutions for customer relationship management and desktop management, and other commercials uses.
Jobsite and HR management product: It operates a jobsite and offers HR management products and services to state and local governments as well non-governmental entities. Training Services: The Respondent also provides Information Technology training services.
The Respondent, until last year, was a Microsoft Certified Solutions Provider. A month or two ago this year, the Respondent became an IBM Partner (PartnerWorld – Developer). The Respondent, this year, also became a VUE testing centre.
5. Parties’ Contentions
The Complainant says that Follett has been using the service mark EFOLLETT since as early as January 2, 1999 to describe the source or origin of its online college textbook retail and information services in the field of higher education provided by means of a global computer network. Evidence of the Patent and Trademark Office’s approval of the registration for EFOLLETT has been provided.
Follett says that it operates over six hundred retail college bookstores throughout the United States and Canada.
In addition, the Complainant, in order to redirect any customers who may enter an incorrect Uniform Resource Locator address, has registered many variations on <efollett.com> as domain names with Network Solutions, including <efollett.net>, <efollett.org>, <efolett.com>, <efollette.com>, <efolet.com> and <efollet.com>.
The Complaint states that it has invested millions of dollars in national television campaigns and other promotional activities to market <efollett.com>, and the mark has become very well known throughout the USA and in parts of Canada.
It is asserted that the Respondent is in the business of providing Web-based support technology and support services through its Web site located at www.adesta.com, including such products and services as SUPPORTPAL.COM, ADESTA LIVE and ADESTA MALL.
The Complainant states that it has never licensed or otherwise permitted the Respondent to use any of its trademarks or to register the domain name <efollets.com>, nor does the Respondent have any relationship with the Complainant.
The Complainant alleges the Respondent does not offer any goods or services under the trade name or service mark EFOLLETT or FOLLETT, or any similar mark, on www.adesta.com or any other Web site.
The Complainant claims the Respondent has no conceivable interest in the name <efollets.com> or Follett or any variation thereof other than to prevent the Complainant from reflecting the service mark in a corresponding domain name.
It is stated that, to the Complainant’s knowledge, the Respondent’s registration of <efollets.com> does not resolve to, and has never resolved to, a Web site or other on-line presence.
The Complainant alleges the Respondent has engaged in a pattern of abusive domain name registration. It is noted that the Respondent has registered and continues to hold the domain name <iupuibooks.com>. "IUPUI" is the acronym for and trademark of Indiana University-Purdue University Indianapolis. It is also pointed out that the Respondent has registered and continues to hold the domain name <purduebooks.com>. The trademark PURDUE UNIVERSITY is registered with the United States Patent and Trademark Office.
It is submitted that the Respondent is not commonly known by either the mark IUPUIBOOKS or PURDUEBOOKS, nor is the Respondent making or has the Respondent made any use of these domain names. The Respondent is not in the book selling or related business and has no conceivable reason for registering "book" related marks other than to prevent their rightful owners from registering the same.
The Complainant says that the Respondent’s place of business is located in the same city, Indianapolis, Indiana, United States, as both Indiana University–Purdue University Indianapolis, Indiana University, and a Follett brick and mortar bookstore that serves both Universities’ students.
The Complainant states that it has notified the Respondent on several occasions of the Complainant’s rights in the EFOLLETT and FOLLETT marks, including via letters sent on November 4, 1999 and March 21, 2000, and an email sent on November 30, 2000. It also states that it has offered more than once to pay the Respondent’s out-of-pocket costs incurred in transferring the Domain Name to the Complainant, but the Respondent has repeatedly declined or not responded to such offers.
The Complainant refers to the WIPO Administrative Panel Decisions, Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003, decided on February 18, 2000, and Ferrovial Agromán, S.A. and Grupo Ferrovial, S.A. v. InmoSoria, Case No. D2001-0019, decided on March 4, 2001. In both cases, the Panel concluded that a registrant’s passive holding of a domain name for no purpose other than to prevent a trademark owner’s use of a registration supported a finding of bad faith.
The Respondent states that it registered this Domain Name in October 1999 with the intention of using it for legitimate commercial purposes. It says it is not in the business of buying and selling/renting domain names and has never sold/rented or offered for rent/sale any of its domain names.
The Respondent claims that it had plans to use the Domain Name for its Affiliate Program and Banner Ad Management business. The Respondent says it did not use the Domain Name in its original plans partly due to threats of legal action against it by a number of interested parties including the Complainant. It notes that the Complainant was one of the rare interested parties who threatened the Respondent and its principals with threats of civil, as well as criminal prosecution.
The Respondent claims the Domain Name is not identical to FOLLETT, but accepts that it may be somewhat similar. It does not have a double "t"; the name has an "s" while the trademark of the Complainant does not have "s". It is argued that the industry for which the domain name was intended is dramatically different from that of the Respondent (different customer target and a very different product).
The Respondent claims that the Complainant has registered <efollet.com> and is NOT using it. This domain name is one error away from its trademark related domain name. The domain name (in dispute) is two errors away from the Complainant's trademark domain name. It is argued that the probability of mis-typing one word is low and the probability of mis-typing two words and replacing them with letters to reach the Domain Name in dispute is exponentially lower.
Respondent says that it did not intend to use the domain name to attract the Complainant's customers for re-direction to its retail sites. The original purpose was related to banner advertising and affiliate programs; any visitor who accidentally visited the site would immediately recognise that the site was not a bookstore. The Respondent claims the likelihood of anyone mis-typing the URL and visiting the site of the Respondent is none to minimal because the possibility of making two mistakes simultaneously while at the same time entering the exact letters that are part of the Respondent’s URL is none to minimal.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
- the domain name is identical or confusingly similar to the trade mark; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Domain Name Identical or Confusingly Similar
The evidence establishes that the Complainant has used and registered a number of trade marks, the core component of these trade marks being the word Follett. It was also apparent that the Complainant has been using the service mark EFOLLETT since January 1999 to describe its range of online college text book retailing information services.
While the Complainant's mark does not have any obvious meaning other than possibly as a surname, the Respondent has not disputed that the Complainant has trade mark rights in its name/mark.
While the Panel apprehends that Follett may be a surname, this is no more than supposition and the evidence on the record establishes that the word has trade mark significance.
The essential question is whether FOLLETT and its online variant EFOLLETT is capable of acquiring trade mark rights and whether the Domain Name is identical or confusingly similar thereto.
As the Respondent notes the Domain Name is not identical in that it does not contain a double "t" and has added to it an "s". Nevertheless these changes are seen as relatively insubstantial and it is found that the Domain Name is confusingly similar. That is, in relation to a trade mark in which the Complainant has rights.
No Rights or Legitimate Interests
The Respondent's argument is premised on the basis that the Complainant has sought to register as domain names a number of variants of its trade mark. The Respondent argues that this indicates that the Complainant has chosen the domain names it sees as relevant and it should not be able to monopolise all variants of its trade mark. The Respondent then suggests that because the Complainant did not choose the Domain Name that the said Domain Name is by definition sufficiently different and the conduct justifiable. In the Panel's view this argument is misconceived.
The question has to be asked whether the Respondent is able to establish a right to use a name or trade mark when the proprietor had used that or a similar trade mark/name for in excess of 100 years.
The Respondent is based in the USA and even if it has substantial business interests in India, it is hard to conceive that the Respondent was entirely unaware of the Complainant's business and its trade mark. Indeed the Respondent does not deny such knowledge.
It is also noteworthy that the Respondent does not seek to explain why it chose the Domain Name, apart from its monopoly argument as indicated above.
None of these arguments or observations are sufficient to establish a right or legitimate interest in using and registering a domain name which is confusingly similar.
Accordingly it is found that this ground is made out.
Domain Name Registered and Being Used in Bad Faith
The evidence is that the Domain Name is not being and has not been used by the Respondent. The Respondent's explanation for this is that the Complainant's threats have dissuaded it from doing so. The Domain Name was registered after the Complainant had had many years use of FOLLETT and some months prior use of EFOLLETT. Given the Respondent's residence in the USA and the fact that the Complainant's principal reputation resides in that country, this suggests that such registration was in bad faith, particularly in light of the comments made above.
As noted above, the Complainant relies on two WIPO Administrative Panel Decisions, Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003, and Ferrovial Agromán, S.A. and Grupo Ferrovial, S.A. v. InmoSoria, Case No. D2001-0019. In both cases, the Panel concluded that a registrant’s passive holding of a domain name for no purpose other than to prevent a trademark owner’s use of a registration supported a finding of bad faith. In the Panel’s view, the application of similar principles is appropriate in the present case.
In view of the above, this ground is made out.
In conclusion, it is found that the Complainant has satisfied the three limbs of the requirements of paragraph 4(a) of the Policy and accordingly is entitled to relief.
In view of the above, the Domain Name should be transferred to the Complainant.
Clive L Elliott
Dated: May 29, 2001