WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Scholastic Inc. v. Tonya Parker-Jones/Scholasticnetworks.Com/Schoolasticnetworks.Com

Case No. D2001-0872

 

1. The Parties

The Complainant in this Administrative Proceeding is Scholastic Inc., a corporation organized and existing under the laws of the State of New York, with its principal place of business at 555 Broadway, New York, New York, USA.

The Respondent in this Administrative Proceeding is Tonya Parker-Jones, Scholastic Networks and/or Schoolastic Networks at 2621 Unicornio Street, Carlsbad, California, USA.

 

2. The Domain Names and Registrar

This dispute concerns the domain names <scholasticnetworks.com> and <schoolasticnetworks.com>, hereinafter the Domain Names.

The Registrar with which the Domain Names are registered is:

Name: Network Solutions, Inc.
Address: 505 Huntmar Park Drive, Herndon, VA 20170.

The <scholasticnetworks.com> domain name was registered on or about October 30, 1998, and the domain name <schoolasticnetworks.com> was registered on or about February 2, 2000.

 

3. Procedural History

A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were implemented by ICANN on October 24, 1999, was received by the Center in electronic format on July 10, 2001, and in hardcopy on July 12, 2001. Payment in the required amount to the Center has been made by the Complainant.

On July 13, 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 Names were currently registered with it and that the policy was in effect, and requesting full details of the holder of the Domain Names and advice as to the current status of the Domain Names.

On July 19, 2001, the Administrative Proceeding began.

On August 7, 2001, a request by the Respondent's Authorized Representative for an extension to respond was received by the Center. This was granted until August 10, 2001. A Response was received from the Respondent on August 10, 2001.

On August 31, 2001 the Complainant filed a Supplemental Filing.

On September 4, 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 Respondent's request, the appointment notification informed the parties that the Administrative Panel would comprise of three Panelists, Clive L. Elliott, Professor William R. Cornish and M. Scott Donahey, and advised that the decision should be forwarded to WIPO by September 18, 2001, subsequently extended to October 2, 2001.

On September 27, 2001 a decision was made.

 

4. Factual Background

The Complainant is a global childrenís publishing and media company producing and distributing material for students, teachers and parents.

The Complainant is the owner of more than 100 trademarks registered with the United States Patent and Trademark Office for the SCHOLASTIC trademarks in classes including International Class 9 (computer software and related merchandise), Class 16 (periodicals and printed materials), Class 28 (computer games) and numerous other classes. (A list of federally registered U.S. trademarks owned by the Complainant using the SCHOLASTIC Trademarks was provided). Each of these registrations is said to be valid and in effect.

Since about 1993, the Complainant has used the SCHOLASTIC Trademarks on and in connection with information and services offered through online services. Specifically, in 1992 the Complainant registered the domain name <scholastic.com> with Network Solutions, Inc. Beginning in about 1993, the Complainant maintained an area on America Online accessible by using the keyword "Scholastic", and since 1996, it has also used the SCHOLASTIC Trademarks in connection with its Internet websites outside of America Online, including <www.scholastic.com>.

The Complainant alleges it is among the leading publishers and distributors of books for students, classroom and professional magazines, software and other educational materials and games, including a popular Internet website called <www.scholastic.com>.

Since at least as early as 1922, the Complainant has been using the trademark "SCHOLASTIC" and trademarks featuring "SCHOLASTIC" preceded or followed by another word or words (hereinafter the "SCHOLASTIC Trademarks") in connection with a wide variety of goods and services.

Among its many activities, the Complainant is the publisher of and uses the SCHOLASTIC Trademarks in connection with thousands of books and magazines used by students in primary and secondary schools, numerous magazines directed at teachers and educational professionals, book clubs, book fairs, the production of television series and feature films, and the publication and sale of educational software and multimedia products to school administrators, teachers, parents and students.

The Complainant has recently obtained significant worldwide recognition for its publication of the Harry Potter book series, one of the most successful publications ever.

The Respondent Tonya Parker-Jones is the founder and President of Schoolastic Networks. Ms. Parker-Jones states she has fourteen years of experience in the financial aid/business office management, operations, and is an active participant of national, state and accrediting associations. Ms. Parker-Jones indicates that she has responded to over 100 program reviews conducted by state, accrediting and Federal agencies. Prior to her role as Vice President, Ms. Parker-Jones was the Lead Quality Assurance Specialist for a nationwide school chain. Her development and implementation of a comprehensive audit tool was designed to limit the scope of liability, identify systemic weaknesses, and provide follow-up training in areas necessary to operate efficiently and in compliance.

The Respondent states that its team of highly knowledgeable educators has many years of experience in developing, evaluating curriculum, instructor evaluations, mentoring, staff development and grant writing.

The Respondent notes that the domain name <scholasticnetworks.com> has been used in connection with its website since shortly after its registration on October 30, 1998, and the domain name <schoolasticnetworks.com> has been used in connection with the same website since shortly after its registration on or about February 2, 2000.

The Complainant first became aware of the Respondentís domain name, <scholasticnetworks.com>, in November of 1998, at which time it informed the Respondent that the use of said domain name infringed upon Scholasticís rights.

Thereafter, the Respondent retained counsel, and through that counsel agreed to change her trade name from Scholastic Networks to Parker-Jones Educational Consultants, with the provision that she be allowed to use the phrase "formerly known as Scholastic Networks" until December 31, 1999.

In July 2000, nearly six months after the expiration of that "phase-out" period, the Complainant became aware that Respondent was continuing to use the domain name <scholasticnetworks.com> and to identify her company as Scholastic Networks. The Complainant immediately demanded that Respondent comply with her previous agreement. Neither the Respondent nor her counsel responded to that demand, despite the Complainant's repeated attempts to contact them.

The Complainant then became aware in February 2001 that the Respondent had registered the domain name <schoolasticnetworks.com> and had begun identifying her business as Schoolastic Networks.

In February 2001, the Complainant demanded that Respondent cease and desist from using the domain name <scholasticnetworks.com> and <schoolasticnetworks.com>, and that she comply with her previous agreement, but the Respondent did not respond.

 

5. Partiesí Contentions

A. Complainant

The Complainant has expended millions of dollars to promote its SCHOLASTIC Trademarks and the goods and services which bear the SCHOLASTIC Trademarks. As a result of these expenditures and efforts, it asserts that it possesses proprietary rights in the SCHOLASTIC Trademarks and the public has come to strongly associate the goods and services provided by the Complainant with the SCHOLASTIC Trademarks.

It is noted that the <scholasticnetworks.com> domain name was registered with Network Solutions, Inc. in October 1998, six years after Scholastic registered the <scholastic.com> domain name, and over seventy-five years after Scholastic began using the SCHOLASTIC Trademarks. The <schoolasticnetworks.com> domain name was registered in February 2000, eight years after the Complainant began using the SCHOLASTIC Trademarks, and over seventy-five years after the Complainant began using the SCHOLASTIC Trademarks.

The Complainant asserts it has continuously, exclusively and extensively used the SCHOLASTIC Trademarks in connection with the promotion and sale of products and services throughout the United States and other countries.

It is submitted that in the Internet world, the suffix "Network" means a system that transmits information between users, or any arrangement of elements that are interconnected. Accordingly it is submitted that by putting these two terms together, the domain name <scholasticnetworks.com> suggests an information system operated or endorsed by the Complainant. Consumers who are highly familiar with Scholastic and its products are likely to be confused and will think that <scholasticnetworks.com> is a website associated with Scholastic and its goods and services. The same is true of the domain name <schoolasticnetworks.com>, as the addition of an "o" does nothing to alleviate any confusion.

The Complainant says this confusion is exacerbated by the Respondentís operation of a website that can be reached by typing in either the domain name <scholasticnetworks.com> or <schoolasticnetworks.com>. Among other things, that website offers consumers access to educational software, a service also provided by Scholastic through its website.

B. Respondent

The Respondent claims to have registered the Domain Names in good faith. It is said they were registered because they were:

- descriptive of the Respondentís business;
- easy to remember;
- not subject to any monopoly of trademark rights; and
- generic (in the case of <scholasticnetworks.com>) and fanciful (in the case of <schoolasticnetworks.com>).

The Respondent says a search of the United States Patent and Trademarks Office revealed that there are several companies who own registered trademarks for the word SCHOLASTIC in the United States.

Nevertheless, the Respondent claims that in this case, the facts are distinguishable in terms of confusing similarity. In particular, the Respondentís use of the word, "NETWORKS", following the word, SCHOLASTIC, indicates a Network relating to scholastics, or school. This is submitted to be much different than merely adding the word, ONLINE.

The Respondent also claims the domain name, <schoolasticnetworks.com> is a fanciful and made up name for which the Complainant has no trademark rights whatsoever. The Respondent submits that such a fanciful name cannot reasonably be considered to be confusingly similar to the Complainantís marks. "SCHOOLASTIC" (plus NETWORKS) is asserted to not be a misspelling, but a coined word.

Furthermore, it is submitted that the word SCHOLASTIC, itself, is generic. The Websterís New Twentieth Century Dictionary, Second Edition, 1979, defines the word, SCHOLASTIC:

- of schools, colleges, universities, students, teachers, and studies; educational; academic.
- of or characteristic of medieval schoolmen or their methods;
- pedantic, dogmatic, formal, etc.
- of secondary schools; as, scholastic football games
- a schoolman
- a person who is devoted to logical subtleties and quibblings; a pedant
- a person who favors scholasticism

The Respondent claims that where a domain name is generic, the first person to register it in good faith is entitled to the domain name. Pursuant to CRS Technology Corporation v. CondeNet (Concierge.com), NAF, Case No: FA#0002000093547:

"Here, there appears to be no evidence of the conduct referred to as "cybersquatting". The domain name holder, the Respondent, has not registered the domain name and is not using the domain name without reasonable cause. There is no evidence of use of the registered trademark nor is there evidence of confusion.

ÖEven though the trademark and the name are all but identical, the Panel has determined that the first person or entity to register the domain name should prevail in circumstances such as these where the domain name is a generic word, here indicating a provider of services, and where that word is widely used as a trade or service mark, although almost always in connection with modifiers or qualifiers."

The Respondent relies on the proposition that generic and descriptive words and phrases will generally not be transferred to a Complainant just because a Complainant has a registered trademark. Pursuant to Coming Attractions v.ComingAttractions.com, NAF, Case No. FA0003000094341, Judgment: May 11, 2000.

"The term "coming attractions" is a generic term in the field of entertainment and its widespread use predated Complainantís trademark registration. Thus, Respondent had the right to register the subject domain name, comingattractions.com and the domain registration is a fair use of a generic term that was available for registration in the form of the subject domain name without disparagement of, or impact upon, Complainantís trademark rights."

It is submitted that even had the Respondent registered <scholastic.com> itself (the word "Scholastic" being absolutely generic), the Complainant would not be entitled to its transfer absent a finding of Ďno legitimate interestí and Ďbad faithí.

It is said that hundreds of the Respondentís clients have come to know it through its email addresses and websites and it is commonly known as both SCHOLASTIC NETWORKS and SCHOOLASTIC NETWORKS.

Finally it is asserted that Respondent has complied with the agreement by ceasing to operate as Scholastic Networks, but has adopted the made-up and fanciful name, Schoolastic Networks. The Respondent says it did not require the consent of Complainant to effect this change. Furthermore, it says it was never agreed that the Respondent would hand over its registered domain names.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The Domain Names are identical or confusingly similar to the trademark; and
- The Respondent has no right or legitimate interest in respect of the Domain Names; and
- The Domain Names have been registered and are 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 Names Identical to or Confusingly Similar

We must first determine whether the domain name at issue is identical or confusingly similar to a mark in which Complainant has rights. The Respondent contends that it registered the Domain Names in good faith, this being so because they were, inter alia:

- descriptive of the Respondentís business;
- easy to remember;
- not subject to any monopoly of trademark rights; and
- generic and fanciful.

Prior Panel decisions have determined that the addition of minor or non-distinctive elements does not alter the determination that the domain name adopted is identical or confusingly similar to the trademark in which a Complainant has rights. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (trademark = FITNESS WAREHOUSE; domain name = <efitnesswarehouse.com>); InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069 (trademark = INFOSPACE; domain name = <wwwinfospaces.com>); Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627 (trademark = SCHOLASTIC; domain names = <onlinescholastic.com>, <onlinescholastics.com>, <oscholastic.com>, and <oscholastics.com>). In each of the above cases the domain names were found confusingly similar to or identical to Complainant's trademark which did not include the additional elements.

The Respondent contends however that Complainant has no rights to the name since the Complainant claims rights in and has registered a generic term. However, the Respondent has produced no evidence that such term is generic.

Similar arguments were made and rejected in a like case involving the Complainant. In a unanimous decision Scholastic Inc. v. Applied Software Solutions, Inc., WIPO Case No. D2000-1629 the Panel stated:

"Perhaps by "generic" Respondent intends to suggest that the term SCHOLASTIC is merely descriptive. If so, prior Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN Case No. D2000-0047. It is the Panel's belief that Respondent has not met its burden.

Respondent has failed to produce any evidence, beyond a mere assertion, that the trademark at issue is or has become merely descriptive. The dictionary definition "of or pertaining to schools, scholars or education" given by Respondent is for the adjectival form of the word. Ö

Even had Respondent shown that Complainant's mark embodied a descriptive term, Complainant could show that the mark has acquired a secondary meaning by having been used for so long and so exclusively by one merchant with reference to the particular article that in that trade and to the particular branch of the purchasing public, the word or phrase has come to mean that the article was the product of the merchant in question. Broadway Trading, LLC v. Gene Weissman, ICANN Case No. FA 94310."

The Complainant submits that in the Internet world, the suffix "Network" means a system that transmits information between users, or any arrangement of elements that are interconnected and that putting these two terms together, the domain name <scholasticnetworks.com> suggests an information system operated or endorsed by the Complainant. We find merit in this contention, given the views we express in the next paragraph.

In the majorityís view the Complainant has shown it has rights in the SCHOLASTIC Trademarks. The Complainant is the owner of more than 100 trademarks registered with the United States Patent and Trademark Office for the SCHOLASTIC trademarks. Since 1922, it has been using the trademark "SCHOLASTIC" and trademarks featuring "SCHOLASTIC" preceded or followed by another word or words. The Respondentís contention that the word is generic cannot be accepted on the basis of its own unsupported assertions. Its contention that the word is descriptive has more merit but even so, on the basis of the above authority we are prepared to accept that the word might be capable of acquiring secondary significance through extensive use. There is evidence of such extensive and longstanding use, which is not countered, by evidence of meaningful descriptive use of the term by others.

On balance, the majority is of the view that the Complainant has done enough under this ground. Accordingly, it is found that the Domain Names are confusingly similar to the mark in which Complainant has rights.

No Right or Legitimate Interest

The Respondent claims to have rights or legitimate interests in respect of the Domain Names. It is said that hundreds of the Respondentís clients have come to know it through its email addresses and websites and it is commonly known as both SCHOLASTIC NETWORKS and SCHOOLASTIC NETWORKS. Finally it is asserted that Respondent has complied with the agreement by ceasing to operate as Scholastic Networks, but has adopted the made-up and fanciful name, Schoolastic Networks. In the majorityís view the marks Scholastic Networks and Schoolastic Networks are confusingly similar to each other.

While it is not our task to decide whether an agreement was reached to cease use of the term Scholastic Networks or a name similar to it the Respondent does not deny such agreement. In our view it is appropriate to take into account the fact that the Respondent was prepared to relinquish the name Scholastic Networks and did do so, even though on a conditional basis.

The question is whether having agreed to relinquish the name Scholastic Networks the use and registration of Schoolastic Networks could be seen as legitimate and allowable. Having found that it itself is confusingly similar to Scholastic Networks we are not inclined to make this finding.

In our view the following comments are apposite:

"[W]here 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," then Respondent can have no right or legitimate interest in respect of an identical or confusingly similar domain name." Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627.

Domain Names Registered and Being Used in Bad Faith

In view of the above comments and findings we find that this ground is made out.

 

7. Decision

For all of the foregoing reasons, the majority of the Panel decides that the Domain Names are confusingly similar to the marks in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the Domain Names, and that the Domain Names have been registered and are being used in bad faith.

Accordingly, the majority view is that the Domain Names should be transferred to the Complainant.

 


 

Clive L. Elliott
Presiding Panelist

M. Scott Donahey
Panelist

Dated: September 27, 2001


 

DISSENTING OPINION

This case involves a type of controversy which is inherently difficult to resolve under the Policy. As the summary of facts and contentions given in the Majority Opinion makes clear, it concerns on the one hand a Complainant which has a long and well-established business name, supported by the registration of numerous trade marks, and, on the other, a Respondent with a much more modest, but apparently genuine, business. The Complainant publishes hard-copy books and electronic materials and has recently extended its coverage from school publications to the juvenile market more generally; the Respondent provides a recruitment and business management service to schools. The Complainant's mark and name is "Scholastic", while the Respondent has been called "Scholastic Networks" (now slightly altered to "Schoolastic Networks"); and it is these latter appellations which are the essence of the domain names at issue. Accordingly we are not here considering that common situation where the Registrant of the domain name is not operating, and is not about to set up, any real business and is therefore likely to be seen as a cyber-pirate. Instead, the case concerns a business which is stated by the Respondent to have been in operation under the name "Scholastic Networks" for three years before the name was incorporated into the first domain name in dispute.

The Policy is a rapid and economical procedure designed to accept claims where the assertions in the Complaint receive no convincing answer in the Response. Unlike the majority of the Panel, I am not persuaded here that a sufficiently clear case has been made out. I agree with the majority that the Complainant has a very well-established reputation in "Scholastic" as a mark for the products and associated services which it supplies. It remains true that the word also has a descriptive meaning in relation to publishing. When therefore it is placed with another word, as in "Scholastic Networks", it is necessary to consider whether the public are sufficiently likely to be confused; the more so, when, as here, the Respondent is using her composite mark for a business which is not the same as the Complainant's enterprise, even though it is fairly proximate.

Much turns on the significance of "networks" as the addition. The Complainant asserts that it will in all likelihood be taken as related to computer operations; but it must not be forgotten that it now has widespread use in management jargon to suggest interrelationships of many kinds. In the minds of some, the domain names may kindle association with the Complainant, but I am not convinced that this will amount to association which causes confusion about trade source. I regard the added word as different in effect from the prefixes, "e", "o" and "online" which were found confusing in Scholastic Inc. v. Applied Sofware, WIPO Case No. D2000-1629 and Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627. This conclusion must apply a fortiori to <schoolasticnetworks.com>.

As to the registration of <scholasticnetworks>, I am not persuaded that, at the time when it was applied for, the Respondent had no legitimate interest to defend. Her business, by her account, had been running for a substantial period and she obtained a domain name which in effect consisted of her trading name. She denies that the registration was made in bad faith and it is inherently likely that her motivation was to enhance the name by which her business was known to clients and others. Under the UDNDRP, Paragraph 4(a)(iii), it is necessary to show that bad faith was present at registration as well as in subsequent use and that, in my view, has not been made out in relation to this trade name. The Respondent's subsequent conduct over the settlement agreement with the Complainant may leave her open to allegations of breach of contract (a matter over which this Panel has no jurisdiction), but I am not prepared to infer from it that she was acting in bad faith at an earlier time before she was faced with the Complainant's objections.

Accordingly I am not able to join in the majority's decision to order transfer of the domain names in issue to the Complainant.

 


 

Professor William R. Cornish
Panelist

Dated: September 27, 2001