WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pearson Education, Inc. v. Herahadi Nugraha
Case No. D2010-2145
1. The Parties
The Complainant is Pearson Education, Inc. of Upper Saddle River, New Jersey, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Herahadi Nugraha of Ngawi, East Java, Indonesia.
2. The Domain Names and Registrar
The disputed domain names <poptropica-games.com> and <poptropica-games.info> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2010. On December 13, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On December 13, 2010, GoDaddy.com, Inc. 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 December 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2011. The Respondent sent two email communications on December 21 and 23, 2010, but did not submit any formal Response.
The Center appointed Joseph Dalby as the sole panelist in this matter on January 20, 2011. 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 is a corporation organized and existing under the laws of the United States (“U.S.”) with a principal place of business in New Jersey. It is a supplier of educational publishing, providing scientifically research-based print and digital programs to students. It declares that virtually all students in America learn from one of the Complainant's programs at some point in their educational career.
The Complainant owns the registered POPTROPICA trademark (U.S.Trademark Registration No. 3599286, dated March 31, 2009) for use in connection with entertainment and educational services. Poptropica is a multiplayer online game targeted at children between the ages of 6 and 15. The Complainant declares that its proprietary website <poptropica.com> has over 75 million registered users.
The Respondent is purportedly an individual with postal address in Ngawi, East Java, Indonesia. Otherwise, no further information has been provided to the Panel.
The disputed domain name <poptropica-games.com> was registered to the Respondent on August 19, 2010. The disputed domain name <poptropica-games.info> was registered to the Respondent on August 12, 2010.
The Panel observes that the Respondent has operated websites at the disputed domain names that offer games that directly compete with those offered at the Complainant's website at “www. poptropica.com”.
5. Parties’ Contentions
The Complainant firstly contends that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. In evidence, the Complainant refers to its registered trademark. Evidence of registration of both proprietary domain names and trademark has been produced by the Complainant.
The Complainant avers that the disputed domain names are confusingly similar to its trademark and its domains names, since the disputed domain names incorporate the Complainant’s trademark in its entirety. It adds that even though the disputed domain names also incorporate an additional, generic word, namely “games”, is of no import, and that therefore confusing similarity may be presumed. The Panel observes that the Respondent operates websites at the Domain Names that offer games that directly compete with those offered at the Complainant's proprietary website. Finally, it submits that Complainant's trademark has a notoriety and unique character such that there can be no doubt that consumers will reasonably believe that the disputed domain names are related to the Complainant, although no evidence is offered in support of this submission.
Secondly, the Complainant contends that the Respondent has no legitimate interests in the disputed domain names. It states in evidence that the Complainant has not licensed its trademark to the Respondent, and there is no relationship between the parties by which the Respondent could own or use any domain name incorporating the Complainant's trademark. Moreover, nothing in the records, including the WhoIs information, suggests that the Respondent is known by the disputed domain names.
Further, the Complainant avers that the disputed domain names are being used solely for commercial gain. It submits that when an Internet user clicks on any of the hypertext links they are taken to pages prominently featuring third party advertisements.
Thirdly, and finally, the Complainant contends that the disputed domain names have been registered and are being used in bad faith. It avers that the disputed domain names were registered long after the Complainant’s mark has attained its fame, and registered for commercial gain and to profit from the resulting consumer confusion in respect of goods and services that compete directly with the Complainant. In evidence the Complainant has produced copies of printed screenshots that indicate that the disputed domain names have been used to host a website containing hypertext links concerned with goods and services. Such commercial benefit, the Complainant observes, constitutes bad faith registration and use, and can only have been done to capitalize on the Complainant's hard earned and valuable goodwill.
The Respondent did not submit a formal Response but sent email communications indicating that the disputed domain names are composed of common words: namely, “pop”, “tropical”, and “games”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has proven that it has rights to an established and valid trademark. Other than the addition of a generic term, the disputed domain names are identical to the trademark relied upon. The additional term does not materially alter the character and substance of the disputed domain names such as to distinguish them from the trademark or to render them any less identical or confusingly similar. Accordingly, the Panel finds that the disputed domain names are identical or confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Taking the Complaint in its entirety, the Panel finds based on the current record that the Complainant has satisfactorily demonstrated a prima facie case that the Respondent has no rights to or legitimate interests in the disputed domain names.
The Respondent's evidence, albeit informal, consists of the constituent words making up the disputed domain names being common words (although it is noted that in actual fact the one of the words used in the disputed domain name is “tropica” and not “tropical”.)
There is a question as to whether this evidence, given that it was provided informally, is admissible. However, the Panel does not find it necessary to examine the issue. Even if this evidence was admissible, the Panel would conclude that common words from the lexicon of a language do not confer on any person an automatic right or legitimate interest to exploit them commercially other than permitted by statute and subject to the competing rights and exceptions that are provided by law. Further, whilst the Panel would recognize that one exception in the use of common words is to use them without restriction for noncommercial purposes, this is not the case here.
Indeed the Panel would postulate that where a combination of common words is used, their juxtaposition to each other and combined message may negate or render irrelevant any individual commonality in the character and meaning of the words. In fact there is prima facie evidence that the Respondent has used a combination of common words that renders them unique or at least rare, as opposed to common. The fact is “pop”, “tropica”, and “games”, particularly the first two, are in that sequence, not in the Panel's opinion clearly part of the common lexicon of the English language
Thus in default of the Respondent adducing any evidence to rebut this contention, the Complainant has adequately proved this element.
C. Registered and Used in Bad Faith
It is noted that none of the scenarios in paragraph 4(b) of the Policy are made out or relied upon.
Given the circumstances of this case, the Panel finds that the Respondent has failed to adduce any evidence of rights or legitimate interests in the disputed domain names is suggestive of bad faith. The Panel finds that the trademark relied upon is sufficiently distinctive and well-known and that the registration of a similar name as a domain name in this case bolsters a finding of bad faith. The fact that the Respondent has demonstratively used the domain names in connection with competing goods and services raises a prima facie case that the Respondent must have been aware of the Complainant’s established reputation and the notoriety of the trademark relied upon, and which case has not been discounted or rebutted by the Respondent. Accordingly, it is reasonable to infer that the Respondent must have been aware of the Complainant’s trademark both at the initial point of registering the disputed domain names and subsequently.
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 names <poptropica-games.com> and <poptropica-games.info> be transferred to the Complainant.
Dated: February 2, 2011