The Complainant is Pearson Education, Inc. of the United States of America, represented by Kilpatrick Stockton LLP, United States of America.
The Respondents are CTP Internacional of Panama; Private Registration at Directi Internet Solutions Pvt. Ltd.; and <scottforesmanandcompany.com>.
The disputed domain name <scottforesmanandcompany.com> was originally registered, at the time of the Complaint, with DomainCannon.Com LLC. It is now registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2009. On February 27, 2009 (with a follow-up on March 3, 2009), the Center transmitted by email to DomainCannon.com LLC a request for registrar verification in connection with the disputed domain name. On March 3, 2009, DomainCannon.com LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 3, 2009.
Prior to the appointment of the administrative panel, the Center found out that the registration of the disputed domain name had been transferred from DomainCannon.com LLC (“DomainCannon”) to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (“Directi”), and that the registrant of record had changed. Noting that such transfers may be in violation of paragraph 8 of the UDRP, the Center sought clarification from DomainCannon on April 6, 2009. On April 9, 2009, DomainCannon responded as follows: “We are looking into the matter. It appears that the domain name should have remained at DomainCannon.com as we are not affiliated with Directi.”
There being no definite response from DomainCannon, the Center sent an email on April 17, 2009, to Directi seeking clarification as to changes in registrar and registrant information and details. On April 20, 2009, the Center received an email from DomainCannon, viz: “The transfer of the domain name was the result of an inadvertent error by our server software, which allowed the domain to be transferred from DomainCannon.com to Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com. We apologize for the error and are working to ensure that locked domains are not transferred in the future.”
On April 21, 2009, the Center sent separate emails to DomainCannon and Directi, seeking an indication whether the disputed domain name would be returned to DomainCannon, and that the same would remain locked during the pending UDRP proceedings.
Both registrars did not respond. Thus, on April 24, 2009, the Center sent a request for registrar verification to Directi who, via an email received on the same day, confirmed that it is the registrar for the disputed domain name, and that the registrant for such is “Private Registration.”
On April 27, 2009, the Center wrote to the parties, informing them: (1) of the change in registrar and registrant information, and (2) that the Center will proceed with the panel appointment process.
On April 29, 2009, Directi sent an email, as follows: “We can only confirm that on March 25, 2009 a Transfer was placed by the following Customer, as there was no Lock on <scottforesmanandcompany.com>:
Name Private Registration
Username (Email Address) firstname.lastname@example.org
Company Private Registration
Address1 box 0834-2411
City Panama City
Tel No. +345.9390137
The Transfer was approved via a Form of authorisation (FOA) that was sent via FAX to Registrar Directi Internet Solutions Pvt. Ltd. This domain name was part of 17,000+ domain names that were transferred in by the same Customer.”
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 30, 2009. 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.
The facts about the Complainant are taken from the Complaint. The Complainant is in the business of educational programs and materials world wide, ranging from school to adult education. The Complainant's businesses and brands include Scott Foresman, Prentice Hall, Longman, Addison Wesley, Allyn & Bacon, Benjamin Cummings, PASeries, ELLis, Celebration Press, PEMSolutions, SuccessMaker, and Family Education Network. The Complainant's other primary operations include the Financial Times Group and the Penguin Group. The Scott Foresman imprint traces back to 1896.
The Complainant owns trademarks registered at the United States Patent and Trademark Office (USPTO) for education-related trademarks including:
No. 1,997,483, for SCOTT FORESMAN
(registered August 27, 1996, first use in commerce, December 31, 1981)
No. 2,493,266, for SISTEMA DE FONETICA SCOTT FORESMAN
(September 25, 2001)
No. 2,496,871, for SISTEMA DE FONETICA SCOTT FORESMAN
(October 9, 2001)
No. 2,494,859, for SCOTT FORESMAN PHONICS SYSTEM
(October 9, 2001)
No. 2,592,123, for SISTEMA DE FONETICA SCOTT FORESMAN
(July 9, 2001)
There is no information about the Respondent except that provided in the registration details of the disputed domain name.
The disputed domain name appears to have been registered on June 10, 2008.
The Complainant has submitted documentary evidence in support of its claim that it is the owner of the trademark SCOTT FORESMAN and that Addison Wesley Educational Publishers Inc., (a related company) is the owner of the other trademarks listed in section 4 above.
The Complainant contends that its trademark of 112 years standing is famous and that the company contributes to the training of about 100 million people worldwide.
The Complainant contends that the disputed domain name is virtually identical or confusingly similar to its SCOTT FORESMAN trademarks. The Respondent has paired the Complainant's exact and complete trademark with “and company”. It is contended, with citations of previous WIPO UDRP decisions that the addition of words to a trademark used in a domain name does not detract from confusingly similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never been commonly known by the disputed domain name. The Respondent has never to the Complainant's knowledge conducted a legitimate business under the name “Scott Foresman and Company.” The Respondent is not making legitimate non-commercial or fair use of the disputed domain name, but is using it to attract visitors in order to generate pay-per-click income. Accordingly, the Respondent can have no right or legitimate interest in the disputed domain name.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent has attempted to attract, for commercial gain, Internet users who, being familiar with the well-known SCOTT FORESMAN trademarks, would be confused as to the source, sponsorship or endorsement of the Respondent's websites or of the products or services offered thereon. There is likely to be initial-interest confusion, whereby a junior user adopts a senior user's mark to gain attention in a crowded field in the hope of attracting “a first look.” It is contended that such confusion is actionable under U.S. trademark law.
The Respondent's bad faith is further evident from the content of the infringing website which provides links to competitors of the Complainant that sell products such as school books. The Respondent's intention is to profit from an unauthorized association with the Complainant's trademark by using it to increase traffic to the Respondent's website.
It is contended that the Respondent's bad faith use of the disputed domain name is aggravated by the fact that it has ignored a cease and desist letter sent to it on July 24, 2008.
By way of remedy the Complainant requests the transfer of the disputed domain name <scottforesmanandcompany.com>.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel notes with considerable concern that between March 3, 2009 when DomainCannon verified the registration, and April 6, 2009, the disputed domain name was transferred to a different registrar and that the name and contact details of the registrant had changed to those of a privacy service.
The Policy is an agreement between the registrar and the domain name holder or registrant. Paragraph 8 of the Policy, “Transfers During a Dispute”, states in summary that the registrant may not transfer the domain name registration to another holder, or to another registrar, during a pending administrative proceeding brought pursuant to paragraph 4 of the Policy (as is the present proceeding). On receipt of the notification of the dispute, the registrar (DomainCannon) should have locked the disputed domain name to prevent any such transfer. In its verification email of March 3, 2009, DomainCannon said, “(7) The domain name, <scottforesmanandcompany.com> is in the process of being placed on Registrar lock, and will remain so during the course of these proceedings”.
There has been no definitive reply from either DomainCannon or Directi to the Center's enquiry as to whether the disputed domain name would be returned to DomainCannon. As related in section 3 above, it is a fact (as of the date of reference to the Panel) that the disputed domain name is registered with Directi under the name Private Registration.
Paragraph 2 of the Rules states that “it shall be the Provider's [WIPO's] responsibility to employ reasonably available means calculated to achieve actual notice to Respondent”, and specifies measures that should be taken, which essentially are to contact such addresses as are supplied by the registrar or are provided in the Complaint. The Complainant is required by paragraph 3(b)(v) of the Rules to provide all contact information “known to Complainant”. It may further be noted that the ICANN Registrar Accreditation Agreement (2001) at paragraph 22.214.171.124 requires that “The Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them”.
The dispute service Provider is not required to act as an enquiry agent. The Panel is satisfied that the Center fulfils all its obligations if it notifies the Complaint to the contact details provided in the registrar's verification, which routinely includes confirmation by the registrar, as requested by the Center, that the domain name is being locked.
As the Honorable Sir Ian Barker QC has said, “If the place of service does not happen to be the Respondent's address as advised to the Registrar, then the Respondent has only him or herself to blame in that circumstance. As a final precaution in favor of a Respondent, the WIPO Panel is under an independent duty, after perusing the file, to be satisfied that there was proper service.” (Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703).
The Panel is satisfied that the Center notified the Respondent CTP Internacional at the address on file as provided by DomainCannon, and additionally, the Respondent Private Registration at Directi was put on notice of the proceedings by being copied in all case-related communications after the latter came to light. It is noted that the words in paragraph 2 of the Rules, “calculated to achieve actual notice”, do not demand proof of service. It is also observed that the new registration details in Panama appear to be misleading, with unconvincing post code and telephone number. The Panel is satisfied that the Center has exercised the utmost care and has fulfilled its obligations under paragraph 2 of the Rules.
The Panel respects the extended discussion by the learned Panelist Matthew S. Harris in Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886, concerning matters of the identification of the respondent. That Panelist has discussed the option of bringing proceedings against the domain name itself in certain difficult circumstances, in a manner possibly parallel to court proceedings brought in rem. As an additional safeguard the disputed domain name is cited as a Respondent.
The Complainant is required to prove that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. The Complainant has produced satisfactory documentary evidence of its rights in the trademark SCOTT FORESMAN. The disputed domain name is <scottforesmanandcompany>, which reads naturally as “Scott Foresman and Company”. The Complainant's antecedent company in 1896 was known as Scott, Foresman and Company. The Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark in that the component “scottforesman” is identical to the Complainant's name (and trademark) and the additional “andcompany” is a descriptive term that, in the particular circumstances, adds to the confusing similarity by making the disputed domain name look like an authentic company name. The gTLD identifier “.com” is of no practical significance. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
The Complainant must prove that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has stated a prima facie case to the effect that it has no connection with the Respondent and has never permitted it to use the Complainant's trademark. The Complainant anticipates any showing by the Respondent under the terms of paragraph 4(c) of the Policy or otherwise, whereby the Respondent might claim rights or legitimate interests, by stating that to the best of its knowledge the Respondent has never been commonly known by a name similar to the disputed domain name. Furthermore the commercial use to which the disputed domain name has been put, because it trades on the Complainant's fame, is not bona fide, and because it is commercial, is not a fair or non-commercial use.
The Respondent has not availed itself of the opportunity to refute the Complainant's prima facie case in the terms of paragraph 4(c) of the Policy or otherwise, and the Panel cannot see any evidence that the Respondent could have rights or legitimate interests in the disputed domain name. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The above four circumstances are not exclusive and bad faith may be found by the Panel alternatively.
The use to which the disputed domain name has been put is evident from the screen print of the corresponding website made by the Complainant on February 9, 2009. The website is recognisable for being in a category commonly met with on the Internet and in connection with disputes under the UDRP, that is to say, a minimal or token website intended to constitute an Internet presence, also offering forward links to other websites. The latter activity, the provision of links to other websites, taking into account that some are in the sphere of educational books, is unlikely to be a philanthropic gesture. On the balance of probabilities it is more likely to be a manifestation of the well-known pay-per-click business. In this, the website owner, i.e., the Respondent offers links to other websites, many of which may have arranged to pay a commission for each visitor so referred. The referring website may thereby generate a revenue stream. The operation commonly may be part of a wider picture in which the domain name is for sale, overtly or covertly, and the pay-per-click website promotes its existence, generates revenue in the interim, and enables the owner to quote, as a selling feature, the number of visitors it has attracted.
The pay-per-click business model is not necessarily illegitimate and is widely used to subsidise authentic sources of public information, or as a stand-alone business to generate revenue. It is not legitimate however, if another's trademark is featured in the URL without authorisation as a means of attracting visitors. In the present case, on the balance of probabilities, the Respondent is found to have used the Complainant's trademark to attract visitors. It is further found, on the evidence of the screenprint of the website, that there would be a likelihood of at least some visitors being confused initially into thinking that the website may have the endorsement of the Complainant and owner of the trademark SCOTT FORESMAN, which it does not. The Panel notes that the disputed domain name currently resolves to the same website. The Panel finds the disputed domain name to have been registered and used in bad faith and finds for the Complainant in the terms of paragraph 4(a)(iii) of the Policy.
The Complainant sent a cease and desist letter dated July 24, 2008 to the Respondent. No reply has been received. The Panel finds the Respondent's conduct in failing to reply to the Respondent's cease and desist letter to be a compounding factor in bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
The Panel is gravely concerned about the problems of registrant identification related in Section 3 above, and respectfully draws to the attention of ICANN that:
1. It was possible for the registrant, after the registrar had verified the registration details to the Center, to transfer the registration to a different registrar and with different registrant details, contrary to the provisions of paragraph 8 of the UDRP.
2. DomainCannon evidently failed to apply a lock after stating that it would, and failed to notify the Center that it had not done so.
3. In reply to questions from the Center to the registrars enquiring as to the reversal of the registration from Directi back to DomainCannon, there were platitudes but no indication of satisfactory action.
4. According to Directi, 17,000+ domain names were transferred in the same operation. It may reasonably be concluded that neither the registrant nor the concerned registrars are naive in matters relating to the transfer of domain names and that a determined attempt may have been made by someone to obstruct or delay the workings of the UDRP for temporary or permanent pecuniary advantage.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <scottforesmanandcompany.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: May 11, 2009